Ex Parte Froehlich et al

Patent Trial and Appeal Board

Aug 10, 2017

13411892 (P.T.A.B. Aug. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/411,892 03/05/2012 Maik Froehlich 20120360A 9660
29673 7590 08/14/2017
STEVENS & SHOWALTER LLP
7019 CORPORATE WAY
DAYTON, OH 45459-4238
EXAMINER
LAVENDER, JACK W
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
08/14/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAIK FROEHLICH, KARLHEINZ EDER,
GUENTHER BLASBICHLER, and MARKUS SAUER
Appeal 2016-005432
Application 13/411,892
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005432
Application 13/411,892
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of
claims 43—60. Final Act. 1. Claims 1—42 have been cancelled. App. Br. 12.
We have jurisdiction under 35 U.S.C. § 6(b).
Representative Claims
Representative claims 43 and 55 under appeal read as follows
(emphasis, formatting, and brackets added):
43. An artificial gemstone with a chaton cut comprising:
[A.] a crown having a flat table and tapering facets, said tapering
facets adjoining said flat table all the way around said table and
being inclined relative to the table;
[i.] said tapering facets of said crown extending as far as
a girdle of the gemstone at which the gemstone has the largest
transverse dimension, wherein said tapering facets of said
crown include a first set of crown facets each adjoining said flat
table with a tapered end of each of said first set of crown facets
and a second set of crown facets each adjoining said flat table
along a broad side of each of said second set of crown facets;
[ii.] said first set of crown facets being inclined with
respect to the girdle plane at an angle between 40.5° and 42.5°;
[iii.] said second set of crown facets being inclined with
respect to the girdle plane at an angle between 33.5° and 35.5°;
[B.] a pavilion of facets, terminating at a point, adjoining said girdle
from below the girdle and having only:
[i.] a tip,
[ii.] a first set of pavilion facets each extending from said
tip toward said girdle, and
[iii.] a second set of pavilion facets each adjoining said
girdle along a broad side; and
[C.] wherein said gemstone is made of glass.
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55. Artificial Gemstone according to claim 43, wherein the
angle between the girdle plane and facets of said pavilion that have a
point that is arranged in the direction of the girdle is between 35.0°
and 37.0°.
Rejections
The Examiner rejected claims 43—54 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Applicant’s Admitted Prior Art
(APA) and Katz et al. (US 2005/0050921 Al; pub. March 10, 2005).1
The Examiner rejected claims 55—60 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of AAPA, Katz, and Bamminger
et al. (US 6,422,039 B2; issued July 23, 2002).2
Appellants ’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 43 under
35 U.S.C. § 103(a) because:
The gemstone 1 according to the invention shown in Fig. 3B,
however, has a special geometrical arrangement of the different
facets of the crown angle in particular, and the light return is
significantly improved as the majority of the rays are reflected in
the region of the pavilion 3 so that virtually all of the lightrays
13 that enter the crown 2 are reflected back to the observer.
App. Br. 3 (emphases added).
1 Separate patentability is not argued for claims 44—54. Except for our
ultimate decision, these claims are not discussed further herein.
2 Separate patentability is not argued for claims 56—60. Except for our
ultimate decision, these claims are not discussed further herein.
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Application 13/411,892
2. Further, Appellants contend the Examiner erred in rejecting claim
43 under 35 U.S.C. § 103(a) because:
See also the Declaration of Dr. Winter3: sections 10 — 19
establish the superior qualities of the gemstone made of glass
according to claim 43 and Fig. 3B of the specification. Refer
also to Figs. 1 — 4d accompanying the Declaration.
App. Br. 4.
[I]t is not the case that a diamond cut faceting arrangement
would work the same to improve brilliance and scintillation for
a gemstone made of glass as claimed. The evidence of record
clearly supports Appellant’s position in this respect.
An artificial gemstone made of glass has a refractive index
between 1.5 and 1.6 (Declaration of Dr. Winter, s. 7). Diamonds
have an index of refraction of 2.42 (Declaration of Dr. Winter,
s. 6). Section 7 of the Declaration further establishes that one of
ordinary skill in the art immediately recognizes that the cut
disclosed in Katz is related to the optimization of the brilliance
of a diamond, and therefore not applicable for improving the
appearance of a gemstone made of glass, which has a much lower
index of refraction, between 1.5 and 1.6.
App. Br. 5.
3. Appellants also contend the Examiner erred in rejecting claim 43
under 35 U.S.C. § 103(a) because:
The Office does point to statements in Katz that seem to
suggest that its cut is suitable for gemstones other than diamonds.
E.g., on page 6 of the Final Office Action, the Office cites
paragraphs 40 and 41 of Katz: “The present invention may utilize
any precious or semi-precious stones such as diamonds, rubies,
or any other conventionally known precious or semi-precious
stones.” However, this gratuitous statement toward the end of
Katz’s specification says nothing about an expectation of
improvement in brilliance and scintillation for other stones, just
that they may be cut like Katz’s diamond. One of ordinary skill
in the art however recognizes that the index of refraction has a
3 Declaration of Dr. Michael Winter dated January 8, 2014.
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Application 13/411,892
large effect, and that what may be suitable angles for the diamond
of Katz may not be suitable for the AAPA given this large
difference. For this reason, there is no proper motivation from
Katz to attempt a modification of the AAPA.
App. Br. 5 (emphases added).
There is nothing to suggest that Katz’s cut is better for an
artificial gemstone made of glass. Indeed, note Figs. 4a - 4d of
the Declaration of Dr. Winter: Figs. 4a and 4b compare a
diamond cut according to a chaton of the prior art (4a) and a
diamond cut according to claim 43 (4b) while Figs. 4c and 4d
compare an artificial gemstone made of glass.
App. Br. 5—6.
4. Appellants also contend the Examiner erred in rejecting claim 43
under 35 U.S.C. § 103(a) because:
[SJection 10 of Dr. Winter’s Declaration establishes that the
pavilion facets of a gemstone according to claim 43 provides for
significantly better fire and light return values, as can also be
seen from figs. 1-3 accompanying the Declaration.
The primary reference, of course, is the AAPA, whose
pavilion does not include lower girdle facets such as facets 32 of
Katz. However, as established by the Declaration, the fact of
the lower girdle facets 32 affects the brilliance of the gemstone,
and an alteration cannot be predicted. Thus, whether Katz is the
primary reference, or is used as a teaching reference, the
teachings of Katz relate to a diamond where the pavilion in fact
does have the lower girdle facets 32 in addition to facets 34 and
facets 40. As established by the Declaration of Dr. Winter, this
has an effect on the optical properties, and so it would not be
obvious to one of ordinary skill in the art that the angular ranges
that are disclosed as applicable to the diamond of Katz would be
applicable to an artificial gemstone made of glass having a
different pavilion structure as claimed in claim 43.
App. Br. 6—7 (emphases added).
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5. Appellants contend that the Examiner erred in rejecting claim 43
under 35 U.S.C. § 103(a) because:
The Office’s further argument that one would cut the glass
gemstone of the AAPA to imitate the real diamond gemstone of
Katz to offer the consumer ‘the identical looking real and
expensive cut diamond at a fraction of the cost of the real
diamond gemstone’ also would require, to be identical, the
substitution of the pavilion of Katz. But if the pavilion of Katz
is substituted, then the limitations of claim 43 with respect to
the pavilion are not met.
The Office argues on page 7 of the Final Office Action that
Katz has the identical claimed pavilion faceting arrangement as
in claim 43. However, this is clearly incorrect: Katz has pavilion
facets 32, comer facets 34 and bezel star facets 42 or 62. The
pavilion of claim 43 has only the tip, the first set of facets and
the second set of facets. The faceting arrangement is different
and cannot be assumed to produce the same amount of brilliance.
Indeed, this is readily seen by looking at the Office’s comparison
set forth on page 9 of the Final Office Action. See also the
Declaration of Dr. Winter, s. 9.
App. Br. 7 (emphases added).
6. Appellants contend the Examiner erred in rejecting claim 43 under
35 U.S.C. § 103(a) because:
[Ejven if it could be argued that the Office has established a
prima facie case of obviousness, such is rebutted by the evidence
of record, in particular the Declaration of Dr. Winter.
Section 10: “the pavilion of facets of a gemstone according
to amended claim 43 provides for significantly better fire-
and light-retum values as can be seen by enclosed figures
1 to 3;”
Sections 11 — 15 discussing gemstones including
gemstones according to claim 43; and
Sections 17—19 comparing, through Figs. 4a — 4d, light
intensity for a diamond and for an artificial gemstone
made of glass.
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The evidence of record, including the Declaration of Dr. Winter,
and further including the figures accompanying the Declaration
and Fig. 4 of the original application, establish the superiority of
the artificial gemstone made of glass according to claim 43, the
criticality of the angle ranges for the first and second sets of
crown facets, and the superior light return and fire of the artificial
gemstone made of glass according to claim 43.
App. Br. 7 (emphases added).
7. Appellants contend the Examiner erred in rejecting claim 55 under
35 U.S.C. § 103(a) because:
The pavilion facets of the gemstone according to claim 43
provide for significantly better fire and light values, as can be
seen from Figs. 1-3 attached to the Declaration of Dr. Winter,
also refer to section 10. Noting section 11 of the Declaration, it
may be seen that figure 1 shows values of fire and light return for
gemstones. The combination of a high value of light return and
a high value of fire is highly desirable for gemstones. A light
return of 0.12% or more and fire of 52% or more is considered
high for gemstones made of glass. All dots in Fig. 1 attached to
the Declaration having a light return or 0.12% or more and fire
of 52% or more have a blue or magenta color. See sections 12-
14 of the Declaration. The evidence from the Declaration and
accompanying drawings by Dr. Winter establishes the
superiority of the claimed ranges set forth in new claims 55 and
56 as well as 58-59. As such, the Declaration by Dr. Winter
clearly establishes the unexpectedly superior characteristics of
the pavilion facet claim ranges of claims 55-56 and 58-59 and
further rebuts any prima facie of obviousness.
App. Br. 10 (emphases added).
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Issues on Appeal
Did the Examiner err in rejecting claims 43 and 55 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellants’ above contention 1, we disagree. Contrary to
Appellants’ argument that according to the invention shown in Figure 3B the
light return is significantly improved by a special geometrical arrangement
of the different facets of the crown angle in particular (App. Br. 3),
Appellants’ description of Figure 3B actually states “[o]n account of the
special geometrical arrangement of the different facets and of the crown
angle [alpha] and pavilion angle [beta], the light return is significantly
improved, since the majority of the rays are totally reflected in the region of
the pavilion 3, so that virtually all the light rays 13 entering the crown 2 are
reflected back to the observer” (Spec. 5:26—30, emphasis added).
Appellants’ claim 43 is silent as to any limitation on the value of the
pavilion angles, which Appellants’ Specification states are part of the special
arrangement to significantly improve the light return. Appellants’ argument
is premised on the crown angles alone providing the significant
improvement. We are not persuaded by Appellants’ argument.
As to Appellants’ above contention 2, we disagree. The Declaration
of Dr. Winter is not commensurate with the scope of the claim language of
claim 43. Dr. Winter’s Declaration at sections 10-19 repeatedly discusses
the improved fire and light return improvements that result from a first set of
pavilion facet angle values between 35.0° and 37.0° and a second set of
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pavilion facet angle values between 39.5° and 41.5°. The Declaration is has
these pavilion facet angle values at its foundation. However, these pavilion
facet angle values are not claimed in claim 43. Therefore, we are not
persuaded by Appellants’ argument. See In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) (“Even assuming that the results were unexpected, Harris
needed to show results covering the scope of the claimed range.
Alternatively, Harris needed to narrow the claims.”); and In re Grasselli,
713 F.2d 731, 743 (Fed. Cir. 1983) (“With respect to appellants’ broad
claims to a catalyst with ‘an alkali metal,’ the experiments detailed in
Friedrich III, being limited to sodium only, are not commensurate in scope,
and are, therefore, insufficient to rebut the prima facie case.”).
As to Appellants’ above contention 3, we disagree. The Declaration
of Dr. Winter (sections 6 and 7) points out diamond has an index of
refraction of 2.42, and glass has an index of refraction between 1.5 and 1.6.
The Declaration then goes on to conclude (section 19) “one of ordinary skill
in the art such as myself knowing the diamond shapes and their optical
characteristics would not have known that a glass gemstone could provide
the desired optical improvement.” Contrary to being “gratuitous” (App.
Br. 5), as argued by Appellants, Katz et al. provide an explicit suggestion
that their “invention may utilize any precious or semiprecious stones such as
diamonds, rubies or any other conventionally known precious or semi­
precious stones.” Katz 41 (emphasis added). Further, it is well-known there
is a broad range of index of refraction for precious or semi-precious stones
(e.g., ruby at 1.762—1.778)4 including some stones with an index of
4 https://www.gemsociety.org/article/table-refractive-index-double-
refraction-gems/.
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Application 13/411,892
refraction comparable to glass (e.g., emerald at 1.565—1.602).5 We agree
with the Examiner that upon reading this portion of Katz one skilled in the
art would be motivated to use the superior faceting arrangement disclosed in
Katz on non-diamond materials with an index of reflection different than
that of diamond, such as glass.
As to Appellants’ above contentions 4 and 6, we disagree for the same
reasons as discussed for contention 2. The Declaration of Dr. Winter is not
commensurate with the scope of the claim language of claim 43.
As to Appellants’ above contention 5, we disagree. Appellants are
attacking Katz singly for lacking a teaching (“pavilion faceting arrangement
as in claim 43” (App. Br. 7))) that the Examiner relied on a combination of
references to show. Particularly, the Examiner relies on Applicant’s
Admitted Prior Art (figure 3a) for the pavilion limitation. Final Act. 3^4. It
is well established that one cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants argue a finding the
Examiner never made. This form of argument is unavailing to show
Examiner error.6
5 https://www.gemsociety.org/article/table-refractive-index-double-
refraction-gems/.
6 Appellants point out (App. Br. 7) that in response to Appellants’ arguments
and the Declaration, “[t]he Office argues on page 7 of the Final Office
Action that Katz has the identical claimed pavilion faceting arrangement as
in claim 43.” However, this Examiner’s response is not relevant as Katz was
not used for this limitation in the rejection and the Declaration is not
commensurate in scope with claim 43.
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As to Appellants’ above contention 7, we disagree. Unlike the
gemstone according to claim 43, which claim is silent as to any limitation on
the value of the pavilion angles, the gemstone according to claim 55 recites
facets of said pavilion having an angle between 35.0° and 37.0°. While the
Declaration by Dr. Winter addresses improved glass gemstone performance
of these claimed pavilion angles as compared to the analogous pavilion
angles in Katz, we are unpersuaded by Appellants assertion that “the
Declaration by Dr. Winter clearly establishes the unexpectedly superior
characteristics of the pavilion facet claim ranges of claim[] 55.” App.
Br. 10.
The Declaration by Dr. Winter is silent as to the Bamminger
reference, which the Examiner relies on as to claim 55 to disclose “a
pavilion of [a] gemstone having an angle between the facets with a point and
the girdle to be between 32-36 degrees.” Final Act. 4. Additionally,
Bamminger at column 3, lines 3—6, explicitly states:
With those angles, particularly in the case of a gemstone of
ground glass with a refractive index of between 1.50 and 1.65,
the reflection characteristic is good and radiates widely.
Contrary to Appellants’ assertion that pavilion facet range of 35.0° and 37.0°
provides “unexpectedly superior characteristics” (App. Br. 10, emphasis
added), this portion of Bamminger discloses that for a glass gemstone a
pavilion facet range of between 32.0° and 36.0° provides good reflection
characteristics.
Finally, Appellants do not contend that combining the prior art would
be “uniquely challenging or difficult for one of ordinary skill in the art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 43—60 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 43—60 are not patentable.
DECISION
The Examiner’s rejections of claims 43—60 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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