Ex Parte Patel

Board of Patent Appeals and Interferences

Jun 11, 2012

10490542 (B.P.A.I. Jun. 11, 2012)

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.
10/490,542 03/23/2004 Arvindbhai L. Patel CHKAC.00003 8936
22858 7590 06/11/2012
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
06/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARVINDBHAI L. PATEL
____________________

Appeal 2010-002807
Application 10/490,542
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002807
Application 10/490,542
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STATEMENT OF THE CASE
Arvindbhai L. Patel (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 104-111. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 104, reproduced below, is illustrative of the claimed subject
matter.
104. An apparatus for examining and marking a raw diamond,
comprising:
(a) a die for holding the raw diamond;
(b) a first servo motor for moving said die vertically;
(c) a second servo motor for rotating said die axially;
(d) a laser scanner that maps the surface coordinates of
the raw diamond as the die is rotated through 360 degrees by
said second servo motor and progressively moved vertically by
said first servo motor after each rotation;
(e) a computer that controls the movement of the first and
second servo motors and produces a three-dimensional image
of said raw diamond based on the surface coordinates mapped
by the laser scanner;
(f) a software program in said computer that calculates
the mass and weight of the diamond and calculates a best fit cut
that maximizes the size of a cut diamond within the constraints
of the mass and the volume of the raw diamond as determined
by the laser scanner; and
(g) a marking device controlled by said computer that
marks cutting points on the surface of the raw diamond
according to said calculated best fit cut.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Koffron
Senanayake
US 4,601,415
US 5,190,024
Jul. 22, 1986
Mar. 2, 1993
Appeal 2010-002807
Application 10/490,542
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Aggarwal US 6,020,954 Feb. 1, 2000
Rejections
The Examiner rejected claims 104-111 under 35 U.S.C. § 103(a) as
being unpatentable over Aggarwal and Senanayake.
The Examiner rejected claim 109 under 35 U.S.C. § 103(a) as
unpatentable over Aggarwal, Senanayake, and Koffron.
OPINION
Both of the Examiner’s rejections are grounded in part on the
Examiner’s determination that it would have been obvious “to use a marking
system, as taught by Senanayake in the Aggarwal system because this
ensures recording of the gemstone parameters.” Ans. 5.
Appellant correctly points out that Aggarwal’s apparatus is used after
the gemstone “has been cut and is ready to be graded.” Br. 6; see Aggarwal,
col. 3, ll. 29-40, 51-53, 62-64; col. 4, ll. 8-9, 20-22 (explaining that the
objects of Aggarwal’s apparatus and method include assessing/grading the
cut, weight, color, clarity, fluorescence, brilliance and scintillation, and
reflectance of a gemstone).
Appellant also correctly points out that Senanayake discloses an
apparatus for marking and cutting diamonds. Br. 6; see Senanayake, col. 3,
l. 27 – col. 5, l. 25 (describing working a rough tetrahedron diamond).
Senanayake’s apparatus includes a marking pen 329 having a marking point
330 for describing on the diamond the line that defines the maximum
diameter of a round diamond that can be cut from that particular rough
diamond. Senanayake, col. 3, ll. 48-56, 62-66; col. 4, ll. 28-31, 36-42. In
one embodiment of Senanayake’s apparatus and method, after marking, the
pen 329 is removed and replaced by a sawing device, while, in another
embodiment, a laser is used instead of a pen so that the cutting starting point
Appeal 2010-002807
Application 10/490,542
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determination and the cutting itself can be done as a single operation.
Senanayake, col. 4, ll. 46-51.
We agree with Appellant that there would not have been any apparent
reason for a person of ordinary skill in the art to provide a marking device as
taught by Senanayake as part of Aggarwal’s apparatus for grading a cut
diamond. Br. 7. The Examiner correctly points out that the recitation of an
intended use in an apparatus claim does not patentably distinguish the
claimed subject matter from the prior art unless it results in a structural
difference between the claimed subject matter and the prior art. Ans. 9-10.
See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.”). Once the Examiner establishes a
reasonable basis that the product is inherently capable of the claimed use, the
burden shifts to the applicant to show that the prior art structure does not
inherently possess the functionally claimed limitations of the claimed
product. Id. at 1478. While the Examiner may be correct that Aggarwal is
fully capable of being used to grade a raw (rough) diamond (Ans. 12), the
Examiner has not articulated any reason why a person of ordinary skill in the
art would have been prompted to use Aggarwal’s grading apparatus for
grading a rough diamond and marking that rough diamond for cutting, so as
to render obvious the use of a marking system as taught by Senanayake in
Aggarwal’s apparatus.
Aggarwal’s apparatus maps the cut gemstone and uses the mapping to
appraise the value of the gemstone (by grading the cut, weight, color, clarity,
fluorescence, brilliance and scintillation, and reflectance) and to uniquely
identify the gemstone. Col. 1, ll. 10-12; col. 15, ll. 50-67. The quantified
properties as determined by Aggarwal’s imaging apparatus are stored in a
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Application 10/490,542
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database (not on the gemstone itself) and can be used to authenticate a
gemstone whose properties have been stored in the database. Col. 4, ll. 31-
54; col. 16, ll. 15-31. The Examiner has not explained, and it is not
apparent, why a person of ordinary skill in the art would have been
concerned with recording gemstone parameters, as determined by
Aggarwal’s imaging and grading system, by marking cutting points on the
surface of the raw diamond, as called for in claim 104. See Br. 13, claim
104 (requiring a marking device that marks the cutting points on the surface
of the raw diamond according to a calculated best fit cut that maximizes the
diamond size within the constraints of a calculated mass and weight of the
diamond as determined by the laser scanner). Thus, the Examiner’s
articulated reason for the combination (i.e., to ensure recording of the
gemstone parameters) lacks rational underpinnings.
For the above reasons, we reverse the rejection of claim 104 and its
dependent claims 105-111 as unpatentable over Aggarwal and Senanayake.
In rejecting claim 9 as unpatentable over Aggarwal, Senanayake, and
Koffron, the Examiner does not rely on Koffron for any teaching that would
cure the deficiency in the combination of Aggarwal and Senanayake. Thus,
we also reverse the rejection of claim 109 on this alternative ground.
DECISION
The Examiner’s decision rejecting claims 104-111 is reversed.
REVERSED

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