Ex Parte Gore

Board of Patent Appeals and Interferences

Jul 20, 2011

10947693 (B.P.A.I. Jul. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID R. GORE
____________

Appeal 2010-004285
Application 10/947,693
Technology Center 2800
____________

Before DENISE M. POTHIER, GREGORY J. GONSALVES, and
ERIC B. CHEN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 14, 15, and 18-21. Claims 1-13, 16, 17, and 22-24 have
been canceled. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellant’s invention relates to a timepiece hidden from plain view
when the timepiece is deactivated. See generally Spec. ¶ 0001. Claim 14 is
reproduced below with the key disputed limitations emphasized:
14. A jewelry ring with hidden timepiece comprising:
a substantially circular member;
a decorative housing coupled with the substantially circular
member, the decorative housing supporting a timekeeping piece
having at least one activation [component], the housing defining a
cavity with at least one window;
at least one transparent colored stone overlaying the at least one
window, the at least one transparent colored stone is rigidly affixed to
the housing, the at least one transparent colored stone is selected
from the group comprising an authentic gemstone, a synthetic
gemstone, and an imitation gemstone;
at least one decorative colored stone, the at least one decorative
colored stone comprising the activation component and being selected
from a group comprising an authentic gemstone, a synthetic
gemstone, and an imitation gemstone;
a timekeeping piece having a display that portrays various data
when illuminated in an active state through activation of the at least
one activation component, wherein the display is located beneath the
at least one transparent colored stone overlaying the at least one
window, the timekeeping piece is supported by the housing, and the at
least one transparent colored stone obstructs the display from plain
view when the display is in an inactive state, so that the timepiece has
the appearance of an ornamental ring with no timekeeping function;
wherein the data of the display is visible through the at least one
window and the at least one transparent colored stone, when the
display is in the active state; and
wherein said substantially circular member is adapted to receive a
first human finger therethrough such that a second human finger on
the same hand may engage said activation component.

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The Examiner relies on the following as evidence of unpatentability:
Bergey US 3,672,155 June 27, 1972
van der Lely US 4,117,662 Oct. 3, 1978
Lazaretnik US 2005/0185517 A1 Aug. 25, 2005
(filed Apr. 8, 2004)

THE REJECTIONS
1. The Examiner rejected claims 14, 15, and 19-21 under 35 U.S.C.
§ 103(a) as unpatentable over Bergey, van der Lely, and Lazaretnik.
Ans. 3-5.
1

2. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Bergey, van der Lely, and Lazaretnik, and Appellant’s
Admitted Prior Art (AAPA). Ans. 6.

THE OBVIOUSNESS REJECTION OVER BERGEY,
VAN DER LELY, AND LAZARETNIK

Regarding representative independent claim 14, the Examiner finds
that Bergey discloses all recited limitations, except for (1) the substantially
circular member adapted to receive a first human finger and (2) the
decorative colored stone comprising the activation component recitations.
Ans. 3-4. The Examiner relies on van der Lely to teach the substantially
circular member limitations and Lazaretnik to teach the decorative stone
comprising the activation component limitations. Ans. 4-5.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed September
8, 2009; (2) the Examiner’s Answer mailed January 6, 2010; and (3) the
Reply Brief filed January 19, 2010.
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Appellant argues Bergey maintains the appearance of a watch in both
the active and inactive state and fails to disclose a transparent colored stone
overlaying a timepiece’s display such that the stone obstructs the display
from view in the inactive state and has the appearance of an ornamental ring
with no timekeeping function. App. Br. 6-7; Reply Br. 3-4. Appellant also
contends that Bergey’s filter is not a gemstone as understood by an
ordinarily skilled artisan. App. Br. 7. Appellant further asserts that van der
Lely and Lazaretnik do not cure these purported deficiencies. App. Br. 8.

ISSUES
Under § 103, has the Examiner erred in rejecting claim 14 by finding
that Bergey, van der Lely, and Lazaretnik collectively would have taught or
suggested:
(1) at least one transparent colored stone selected from the group
comprising an authentic gemstone, a synthetic gemstone, and an imitation
gemstone; and
(2) the at least one transparent colored stone obstructs the display
from plan view when the display is in an inactive state, so that the timepiece
has an ornamental ring appearance with no timekeeping function?

FINDINGS OF FACT (FF)
1. Appellant states the colored transparent stone is arranged over the
timepiece’s cavity housing to disguise the timepiece as purely decorative
jewelry. The stone may include at least one piece of an authentic, synthetic
and/or imitation gemstone, such as a ruby, emerald, sapphire, or a
combination. Spec. ¶ 0019.
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2. We adopt the Examiner’s findings as our own. See Ans. 3-7.
3. Bergey states and shows in Figure 1A “no time indication is
visible through window 16 and this is a normal condition . . . .” Bergey, col.
3, ll. 66-68. When the wearer presses pushbutton 18, the correct time is
displayed through window 16 as indicated at 20. Bergey, col. 3, l. 69 – col.
4, l. 2; Figs. 1A-B.
4. Bergey discloses filter 38 screens out much of the light that might
otherwise get through window 16. The filter may be formed of any suitable
material, including plastic, transparent colored glass, or ruby material having
sufficient hardness that it will not scratch. Bergey, col. 4, ll. 34-52; Fig. 3.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative claim 14 which calls for, in pertinent,
a transparent colored stone that obstructs the display from view in the
inactive state so that the timepiece has an ornamental ring appearance with
no timekeeping function. We agree with the Examiner that Bergey’s
disclosed filter (e.g., 38) covers the timekeeping piece’s display and
performs a filtering or obstructing function. See FF 2-4. This is further
evidenced by Bergey, when stating the filter screens out light and that “no
time indication is visible through window 16” until a user depresses a
button. See FF 3-4. Bergey thus discloses a filter obstructing the
timekeeping display such that Bergey’s timepiece has an ornamental
appearance with no timekeeping function.
Moreover, the Examiner correctly notes (see FF 2 (referring to Ans. 6-
7)) that the filter can be made from ruby material. FF 4. Ruby is one
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example of a transparent colored stone used by Appellant to cover the
timepiece’s cavity and disguise the timepiece as purely decorative jewelry.
See FF 1. Appellant discusses examples of some filter materials in Bergey
(see App. Br. 7 (discussing red colored plastic)) but fails to address how the
disclosed ruby material cannot be the recited transparent colored stone. We
therefore concur with the Examiner that Bergey teaches a transparent
colored stone that obstructs the display from plain view when the display is
in an inactive state, so that the timepiece has an ornamental appearance with
no timekeeping function.
The Examiner admits (see FF 2 (referring to Ans. 3-4)) Bergey does
not disclose the timepiece as a substantially circular member (e.g., a ring)
and thus that the timepiece has an ornamental ring appearance as claim 14
recites. The Examiner relies on van der Lely for this feature (see id.), and
van der Lely also teaches the timepiece as either a wrist or ring mounted
watch. See van der Lely, Abstract. Thus, when combining van der Lely’s
teaching with Bergey, the combination predictably yields no more than a
timepiece that has an ornamental ring appearance with no timekeeping
function when in an inactive state. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
As to whether Bergey’s filter is the recited gemstone, we refer to our
above discussion related to the disclosed ruby material. See FF 4.
Additionally, Appellant admits a ruby is a gemstone – whether the ruby is
authentic, synthetic, or imitation as required by claim 14. See FF 1. Also,
Appellant’s argument that the gemstone must have a faceted appearance (see
App. Br. 7) is not commensurate in scope with claim 14. That is, Appellant
has not defined or sufficiently demonstrated that an ordinarily skilled artisan
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would have understood the recited gemstone requires facets. See id; see also
generally Specification.
For the foregoing reasons, the Examiner has not erred under § 103 in
rejecting independent claim 14 and claims 15 and 19-21 not separately
argued with particularity (see App. Br. 6-8).

THE OBVIOUSNESS REJECTION OVER BERGEY, VAN DER LELY,
LAZARETNIK, AND AAPA

The Examiner finds that Bergey, van der Lely, Lazaretnik, and AAPA
teach all the limitations in claim 18. Ans. 5-6. Appellant refers to the
previous arguments of claim 14. App. Br. 8. The issues before us, then, are
the same as those in connection with claim 14, and we find the Examiner has
not erred for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 14, 15, and 18-21 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 14, 15, and 18-21 is
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)(1)(iv).

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AFFIRMED

ELD