Ex Parte Brookshire

Board of Patent Appeals and Interferences

Apr 16, 2009

10613281 (B.P.A.I. Apr. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL DAVID BROOKSHIRE
____________

Appeal 2009-0457
Application 10/613,281
Technology Center 3600
____________

Decided:1 April 16, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and,
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0457
Application 10/613,281

STATEMENT OF THE CASE
Michael David Brookshire (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s decision rejecting claims 25-44. Claims
1-24 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is an arrangement of facets on a
naturally occurring gemstone designed to enhance brilliance and
scintillation. Spec. 1:4-5. Claim 25, reproduced below, is representative of
the subject matter on appeal.

25. A naturally occurring precious gemstone,
comprising:
a pavilion having a plurality of facets
extending from a common point radially to a girdle
region around a circumference of the naturally
occurring precious gemstone; and
a crown meeting the pavilion in the girdle
region, wherein the girdle region extends no
further than the widest circumference of the crown
and the pavilion extends no further than the widest
circumference of the girdle region, the crown
being a symmetrical hemisphere formed from a
plurality of rows of facets with an equal number of
facets in each row, the plurality of rows of facets
extending continuously from the girdle region to
the top point of the crown of the naturally
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occurring precious gemstone, each row of facets
being cut with respect to a reference line tangential
to the top point of the crown, a first row of facets
being cut about 15 degrees, a second row of facets
being cut about 19 degrees, a third row of facets
being cut about 25 degrees, a fourth row of facets
being cut about 30 degrees, a fifth row of facets
being cut about 34 degrees, a sixth row of facets
being cut about 38 degrees, a seventh row of facets
being cut about 46 degrees, an eighth row of facets
being cut about 56 degrees, a ninth row of facets
being cut about 65 degrees, a tenth row of facets
being cut about 75 degrees, and an eleventh row of
facets being cut about 90 degrees.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Meyer US 250,378 Dec. 6, 1881
Schenk (hereinafter “Schenk ‘938”) US D35,938 Jun. 10, 1902
Schenk (hereinafter “Schenk ‘724”) US D43,724 Mar. 18, 1913
Vargas, Glenn & Martha, “Diagrams for Faceting,” Vol. II, Desert
Printing Co. Indio, CA (1983) (hereinafter, “Diagrams for
Faceting”).2
Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 25-44 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant
regards as the invention.

2 While the Answer recites the date of this publication as 1986, the copyright
date is 1983, and the second printing was in 1986. This error does not
change the status of the reference as prior art.
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2. The Examiner rejected claims 25-44 under 35 U.S.C. § 103(a) as
unpatentable over “Diagrams for Faceting”, Meyer, Schenk ’938
and Schenk ’724.

ISSUES
The Examiner found the phrase “naturally occurring precious
gemstone” is indefinite under 35 U.S.C. § 112, second paragraph, because a
gemstone is a stone that has been altered by human hands, and does not
naturally occur. Ans. 3.
Appellant contends that the claim is not indefinite because the phrase
in question is intended to convey that the gemstone originates from natural
sources, and because a person of ordinary skill in the art would understand
that the subject matter of the claimed invention is directed to the
modification of naturally occurring gemstones into a precious state as recited
in the claims. Reply Br. 2-5.
The first issue before us is:
Has Appellant shown that the Examiner erred in determining that the
phrase “naturally occurring precious gemstone” renders the claims so
indefinite that a person of ordinary skill in the art would not understand what
is being claimed?
The Examiner found that claims 25-44 were unpatentable over
“Diagrams for Faceting,” Meyer, Schenk ‘724, and Schenk ‘938. Ans. 4-5.
In particular, the Examiner found that “Diagrams for Faceting” discloses
faceting designs for use on precious naturally occurring stones including the
“Mogul Cut” which has eight rows of crown facets cut at varying angles, but
it does not disclose a crown in the shape of a symmetrical hemisphere or
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eleven rows of crown facets. Id. The Examiner points to Meyer, Schenk
‘724, and Schenk ‘938 as examples of patents disclosing a crown in the
shape of a symmetrical hemisphere with rows of facets cut at varying angles
along the outside of the surface of the hemisphere. Id. The Examiner
determined that it would have been an obvious design choice to cut eleven
rows of crown facets and to make the crown in the shape of a symmetrical
hemisphere with pavilion facets as claimed “in order to produce an
aesthetically pleasing gemstone.” Ans. 4-5.
Appellant contends: 1) Meyer, Schenk ‘724, and Schenk ‘938 do not
teach or suggest a crown in the form of a symmetrical hemisphere with a
plurality of rows of facets with an equal number of facets in each row
extending continuously from the girdle to the top point of the crown, and 2)
none of the prior art references, taken singularly or in combination, teach or
suggest the facet angles recited in the claim. App. Br. 10-13.
The second issue before us is:
Has Appellant shown that the Examiner erred in rejecting claims 25-
44 because either 1) Meyer, Schenk ‘724, and Schenk ‘938 do not teach or
suggest a crown in the form of a symmetrical hemisphere with a plurality of
rows of facets with an equal number of facets in each row extending
continuously from the girdle to the top point of the crown, or 2) none of the
prior art references teach or suggest the facet angles recited in the claim?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
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1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification does not provide a lexicographical
definition for a “naturally occurring precious gemstone,” nor is
a definition provided for any of the terms within that phrase.
Spec. passim.
2. The Specification consistently refers to the invention as
enhancement of a gemstone.
a. The “invention relates to methods for cutting gemstones.”
Spec. 1:4-5.
b. “The invention relates in general to cut gemstones and
methods for producing the same.” Spec. 4:1-2.
c. “The invention generally involves faceted gemstones, and
methods for cutting such gemstones.” Spec. 8:1-2.
d. “[T]he aesthetic appeal of a gemstone is often enhanced
through polishing and/or cutting.” Spec. 1:9.
e. “Essentially, the gem cutter’s craft involves cutting a stone
at different angles.” Spec. 1:11-12.
3. The Specification does not refer to the subject matter of the
invention as being a naturally occurring gemstone. Spec.
passim.
4. The ordinary and customary meaning of the term “gemstone” is
“a mineral or petrified material that when cut and polished can
be used in jewelry.” Webster’s Third New International
Dictionary, Unabridged (1961).
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5. Appellant’s Specification does not provide a lexicographical
definition for a “hemisphere.” Spec. passim.
6. The ordinary and customary meaning of the term “hemisphere”
is “either of two half spheres formed by a plane through a
sphere's center.” Webster’s Third New International
Dictionary, Unabridged (1961).
7. Meyer discloses an imitation precious stone representing a
jewel that is used as an ornament, comprised of a raised or
stone part, A, which may be any desired shape, and a
surrounding flange, B. Meyer, ll. 4-8, 57-63, 93-99; Figs. 1-6.
8. Meyer discloses an embodiment with a flat bottom and a
convex top in the shape of a symmetrical hemisphere with
facets arranged in rows from the surrounding flange B to the
top of the stone part A. Meyer, ll. 41-43, 63-65; Fig. 5.
9. “Diagrams for Faceting” discloses a variety of faceting designs,
including a “Mogul Cut” that has a plurality of facets in rows
from the girdle to the table (top point of the crown), with the
same number of facets in each row (16 facets in each of rows B,
M, M′, m, and s). “Diagrams for Faceting,” page 9, col. 2,
Figure at top right.
10. The problem solved by Appellant was to further enhance
brilliance (shine) and scintillation (flash/sparkle) of a gemstone
through faceting. Spec. 3:16-20; see also definitions of
brilliance and scintillation at 2:4-6.
11. Appellant does not recite any unexpected results, nor any
quantitative measurement of increased brilliance or
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scintillation. Spec. passim; App. Br. passim; Reply Br. passim.
12. While Appellant describes a preferred angle for each row of
facets, Appellant does not describe enhancement of brilliance or
scintillation as associated with those particular angles. Spec.
passim; see also description of angles at Spec. 9:5 to 10:9.
13. Appellant does not describe the specified angles of each row of
facets in the crown as critical.3 Spec. passim; see also
description of angles at Spec. 9:5 to 10:9.

PRINCIPLES OF LAW
112, second paragraph
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
Appellant’s Burden
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

3 The angle of the pavilion is described as critical, but not the angles of rows
in the crown. Spec. 5:1.
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Attacking references individually
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413
(CCPA 1981).
Obviousness
“A prima facie case of obviousness may be made when the only
difference from the prior art is a difference in the range or value of a
particular variable. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).” In re Kumar, 418 F.3d
1361 (Fed. Cir. 2005). “Where the difference between the claimed invention
and the prior art is some range or other variable within the claims … , the
[patentee] must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results.” In re
Woodruff, 919 F.2d at 1578.
Proof of Unexpected Results
“An applicant cannot prove unexpected results with attorney argument
and bare statements without objective evidentiary support.” CFMT, Inc. v.
Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In
re Lindner, 457 F.2d 506, 508 (CCPA 1972)); In re Geisler, 116 F.3d 1465
(Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness”); and In re Soni,
54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled that unexpected results
must be established by factual evidence. Mere argument or conclusory
statements ... [do] not suffice.”) (quoting In re De Blauwe, 736 F.2d 699,
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705 (Fed. Cir. 1984)). “During prosecution, an applicant may submit
objective factual evidence to the PTO in the form of patents, technical
literature, and declarations under 37 C.F.R. § 1.132 … submitting expert
testimony and, at times, test data.” CFMT, 349 F.3d at 1342.

ANALYSIS
Rejection of claims 25-44 under 35 U.S.C. § 112, second paragraph
The preambles of independent claims 25, 32, and 38 contain the
phrase “naturally occurring precious gemstone.”4
The claim indicates that the “naturally occurring precious gemstone”
is comprised of a pavilion and a crown with a specified number and
arrangement of facets. The Specification does not define the phrase
“naturally occurring precious gemstone,” or any of the terms within the
phrase (Fact 1); however, the Specification consistently refers to the subject
matter of the invention as enhancements to a gemstone, and does not refer to
the subject matter of the invention as a naturally occurring gemstone (Facts
2-3). The ordinary meaning of “gemstone” is consistent with its usage in the
claim, Appellant’s Specification, and Appellant’s argument. In particular,
the ordinary meaning of the term “gemstone” is “a mineral or petrified
material that when cut and polished can be used in jewelry” (Fact 4), a direct
contradiction of the Examiner’s finding that a gemstone cannot occur in
nature.

4 The phrase is also contained in the body of the claim, but the rejection is
only directed to use of the phrase in the preamble. Ans. 3.

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A person of ordinary skill in the art, when reading claims 25, 32, and
38 in light of the Specification, would understand that what is claimed is a
modification, as specified, of a naturally occurring gemstone into a precious
state. As such, claims 25, 32, and 38 are not indefinite, and the Examiner’s
decision rejecting these claims under the second paragraph of 35 U.S.C.
§ 112 must be reversed. The Examiner’s decision to reject claims 26-31, 33-
27, and 39-44 must also be reversed by virtue of their dependence on claims
25, 32, and 38, respectively.

Rejection of claims 25-44 under 35 U.S.C. § 103(a) as unpatentable over
“Diagrams for Faceting”, Meyer, Schenk ’938, and Schenk ’724
Claim 25
Appellant argues claims 25-31 as a group. App. Br. 13. As such, we
select claim 25 as the representative claim, and claims 26-31 stand or fall
with claim 25. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Appellant makes four arguments against the Examiner’s rejection.
First, Appellant contends and the Examiner does not contest that “Diagrams
for Faceting” does not disclose a crown in the form of a symmetrical
hemisphere. App. Br. 12; Ans. 4.
Second, Appellant contends that Schenk ‘938, Schenk ‘724, and
Meyer also fail to teach or suggest a crown in the form of a symmetrical
hemisphere. App. Br. 12-13.
Appellant does not provide a lexicographical definition of
“symmetrical hemisphere” (Fact 5). The ordinary and common meaning of
the term “hemisphere” is “either of two half spheres formed by a plane
through a sphere's center” (Fact 6). Claim 25, taken in context, means that
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the shape of the crown must be a symmetrical half sphere. Meyer discloses
an imitation precious stone used as an ornament that may be any desired
shape, and includes an embodiment with a flat bottom and a convex top
portion that is a symmetrical half sphere (Facts 7, 8).
Third, Appellant further argues that Schenk ‘938, Schenk ‘724, and
Meyer fail to disclose a plurality of rows of facets with an equal number of
facets in each row, wherein the plurality of rows of facets extend
continuously from the girdle region to a top point of the crown. App. Br.
12-13. The Examiner, however, found this claimed feature in the “Diagrams
for Faceting” reference. Ans. 4. We agree that “Diagrams for Faceting”
discloses a “Mogul Cut” having a plurality of facets in rows from the girdle
to the point of the crown, with the same number of facets in each row (Fact
9). Appellant fails to properly rebut the Examiner’s rejection based on the
combined teachings of the references, and unconvincingly makes individual
attacks on the references.
Fourth, Appellant contends that none of the references teaches or
suggests the specific facet angles of the crown recited in the claim. App. Br.
13. The difference between the claim, and the prior art, is the value of a
particular variable, namely, the angle of each row of facets. In particular,
“Diagrams for Faceting” discloses rows of facets cut at different angles, but
it does disclose the specific angles as claimed (Fact 9). Given this, the
Examiner has set forth a prima facie case of obviousness, and to rebut this
showing, Appellant must show that the particular range is critical, generally
by showing the claimed range achieves unexpected results. In re Woodruff,
919 F.2d at 1578.
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Appellant contends that the claimed cuts “provide the necessary light
penetration and reflection to maximize the brilliance and scintillation of the
gemstone.” App. Br. 13. Appellant’s statement is attorney argument
without objective evidentiary support and does not prove unexpected results.
CFMT, Inc. v. Yieldup International Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003). Nor is there adequate evidentiary support in the Specification, which
states only that the Appellant sought to enhance brilliance and sparkle and
does not recite any unexpected results (Fact 10, 11). Further, Appellant has
not tied the enhanced brilliance and scintillation to the angle of the rows of
facets in the crown (Fact 12). Additionally, the Specification does not refer
to the angles of the rows of facets as critical (Fact 13), and the angles are
claimed as approximations without a specified tolerance range (i.e. “about”).
Appellant has not proven the angles of the rows of facets in the crown
produce unexpected results or are otherwise critical to the invention.
Appellant has failed to demonstrate the Examiner erred in the
rejection of claim 25. Claims 26-31 fall with claim 25.
Claim 32
The Appellant argues claims 32-37 as a group. App. Br. 16. As such,
we select claim 32 as the representative claim, and claims 33-37 stand or fall
with claim 32. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Independent claim 32 is like claim 25, but does not contain the
limitation that the crown is a symmetrical hemisphere.
Appellant argues that none of the references teach or suggest: 1) a
crown formed from a plurality of rows of facets with an equal number of
facets in each row extending continuously from the girdle region to a top
point of the crown, and 2) the specific facet angles recited. App. Br. 15. For
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the reasons set forth in the analysis of claim 25, supra, Appellant has failed
to demonstrate the Examiner erred in the rejection of claim 32. Claims 33-
37 fall with claim 32.
Claim 38
The Appellant argues claims 38-44 as a group. App. Br. 18. As such,
we select claim 38 as the representative claim, and claims 39-44 stand or fall
with claim 38. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Independent claim 38 is similar to claim 25, and contains the
symmetrical hemisphere limitation, but does not recite the specific angle of
each row of facets.
As we noted supra, it is uncontested that the “Diagrams for Faceting”
reference does not teach a symmetrical hemisphere. App. Br. 17; Ans. 4.
Appellant contends that Schenk ‘938, Schenk ‘724, and Meyer do not
teach or suggest a crown in the form of a symmetrical hemisphere and do
not teach a plurality of rows of facets with an equal number of facets in each
row extending continuously from the girdle region to a top portion of the
crown. App. Br. 18. For the same reasons as presented in the analysis of
claim 25 supra, Appellant has not demonstrated the Examiner erred. Claims
39-44 fall with claim 38.
CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 25-44
because the phrase “naturally occurring precious gemstone” is not indefinite,
as a person of ordinary skill in the art would understand what is being
claimed in light of the Specification.
Appellant has failed to show that the Examiner erred in rejecting
claims 25-44 because Meyer teaches a crown in the form of a symmetrical
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hemisphere, and because Appellant has not proven the angles of the rows of
facets in the crown produce unexpected results or are otherwise critical to
the invention.
DECISION
We reverse the Examiner’s decision to reject claims 25-44 as
indefinite under 35 U.S.C. § 112, second paragraph. We affirm the
Examiner's decision to reject claims 25-44 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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