Ex Parte Rydlewicz

Patent Trial and Appeal Board

May 6, 2016

11744571 (P.T.A.B. May. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111744,571 0510412007 RONI RYDLEWICZ
1109 7590 05/10/2016
DAVID A, EINHORN
BAKER & HOSTETLER, LLP
45 ROCKEFELLER PLAZA
NEW YORK, NY 10111
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DE1708 9067
EXAMINER
LAVINDER, JACK W
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
05/10/2016 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):
IPGNY@BAKERLA W.COM
DEINHORN@BAKERLA W.COM
Patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONI RYDLEWICZ
Appeal2013-002215
Application 11/744,571
Technology Center 3600
Before JENNIFER D. BAHR, WILLIAM A. CAPP and
AMANDA F. WIEKER, Administrative Patent Judges
CAPP, Administrative Patent Judge
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 4---6 as unpatentable under 35 U.S.C. § 103(a) over
Siebenberg (US D469,379 S, iss. Jan. 28, 2003) and De Castro '989 (US
D51 l,989 S, iss. Nov. 29, 2005), and claims 7, 8, and 10 over Siebenberg,
De Castro '989, and De Castro '409 (US D521,409 S, iss. May 23, 2006). 1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 A rejection of all pending claims under 35 U.S.C. § 112, first paragraph, is
obviated by an after final amendment that was entered by the Examiner. See
Advisory Action dated June 27, 2012; Ans. 6. Claims 11 and 12 are
cancelled, obviating a rejection thereof under 35 U.S.C. § 103(a). See
Appeal Br. 2.
Appeal2013-002215
Application 11/744,571
THE INVENTION
Appellant's invention is a cut diamond. Spec. 1. Claim 1, reproduced
below with paragraph indentation added, is illustrative of the subject matter
on appeal.
1. A hexagonal shaped diamond, adapted to display a
hearts and arrows pattern when exposed to light comparable to
the hearts and arrows pattern in a round diamond, having
only six main crown facets of substantially equal size
symmetrically arranged relative to one another surrounding a
table facet with each main crown facet having parallel edges
symmetrically aligned to the parallel edges of a main crown facet
located opposite thereto,
six main pavilion facets polished in alignment with the main
crown facets,
six equal size girdle facets separating the pavilion facets from
the main crown facets, and further comprising
twelve crown star facets arranged about the table and
an equal number of twelve crown half facets polished in an
arrangement relative to the crown star facets such that there are
tvvo crovvn star facets and tvvo crovvn half facets polished on each
main crown facet with one of each of said two crown star facets
and one of each of said two crown half facets on each main crown
facet forming an edge on one side of a main crown facet which
is in alignment and intersects the other at a common point and
with the other one of each of the two crown star facets and the
other one of each of the two crown half facets forming an edge
on the opposite side of the main crown facet which is in
alignment and intersects the other at a common point and
wherein said diamond further comprises a total of twelve
pavilion half facets of triangular geometry with two of the
pavilion half facets formed on each main pavilion facet in a
symmetrical arrangement and wherein the six equal size girdle
facets are polished to form an angle of 60° relative to the girdle
facet on each adjacent side thereof.
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Appeal2013-002215
Application 11/744,571
OPil-JION
Unpatentability of Claims 1 and 4-6
Claim 1
The Examiner finds that Siebenberg discloses the claimed invention
except for a common edge formed by a crown star and a crown half facet on
the side of the main crown facet or, more simply put, Siebenberg does not
disclose twelve crown star facets. Final Action 5. The Examiner relies on
De Castro '989 as disclosing the claimed crown faceting arrangement albeit
on a differently shaped stone. Id. at 6. The Examiner furnishes an annotated
figure from De Castro '989 to demonstrate the presence of the claimed
crown faceting arrangement. Id. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to add crown star facets to Siebenberg's gemstone as
taught by De Castro '989. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to produce a desired
aesthetically pleasing effect. Id.
Appellant traverses the Examiner's rejection by arguing, among other
things, that Siebenberg has 24 pavilion half facets, whereas claim 1 is
limited to a "total of twelve pavilion half facets." Appeal Br. 6; Claims
App., Claim 1.
In response, the Examiner states that the claim is open-ended and,
therefore, does not restrict the pavilion of the claimed gemstone to only
twelve pavilion half facets. Ans. 8. We disagree.
Claim 1 contains a limitation that reads as follows: "wherein said
diamond further comprises a total of twelve pavilion half-facets of triangular
geometry with two of the pavilion half facets formed on each main pavilion
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Appeal2013-002215
Application 11/744,571
facet in a symmetrical arrangement." Claims App., Claim 1. Ordinarily, the
transition "term 'comprising' is well understood to mean 'including but not
limited to."' See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
(Fed. Cir. 2007). This language is open-ended, in that it signifies that the
claims do not exclude the presence of other elements in addition to those
explicitly recited. See id. However, in the instant case, the claim is
expressly limited by the phrase "a total of twelve pavilion half facets."
Claims App., claim 1. Thus, although the term "comprising" signifies that
claim 1 does not exclude the presence of other elements, in addition to the
total of twelve pavilion half facets, the limitation "a total of twelve" restricts
the number of pavilion half facets in the claimed gemstone to no more than
twelve. The Examiner's broad application of the general rule dealing with
open-ended "comprising" transitions as signifying that the pavilion of the
claimed gemstone is not restricted to only twelve pavilion half facets
effectively reads the limitation "a total of twelve" out of the claim. The
Examiner's claim construction runs counter to the fundamental canon of
claim construction that meaning should be given to all of a claim's terms.
Dell Inc. v. Acceleron, LLC, --- F.3d ----, 2016 WL 1019075, at *5 (Fed. Cir.
March 15, 2016).
The Examiner's rejection does not provide any reasoning or rationale
as to why it would have been obvious to modify the prior art to create a
gemstone in accordance with claim 1 that contains a total of only twelve
pavilion half facets of triangular geometry. Under the circumstances, the
Examiner's finding that Siebenberg's disclosure of a gemstone with 24
pavilion half facets satisfies the limitation in claim 1 directed to a "total of
twelve pavilion half facets" constitutes reversible error.
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Appeal2013-002215
Application 11/744,571
Accordingly, we do not sustain the Examiner's unpatentability
rejection of claim 1.
Claims 4-6
Claims 4---6 depend, directly or indirectly, from claim 1. Claims App.
The Examiner's rejection of these claims suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reason expressed above in connection with claim 1, we do not sustain
the rejection of claims 4---6.
Unpatentability of Claims 7, 8, and 10
over Siebenberg, De Castro '989, and De Castro '409
Claims 7, 8, and 10 depend, directly or indirectly, from claim 1.
Claims App. The Examiner's rejection of these claims suffers from the
same infirmity that was identified above with respect to claim 1. Such
deficiency is not cured by the Examiner's reliance on De Castro '409 as an
additional prior art reference in combination with Siebenberg and
De Castro '989.
Thus, for essentially the same reason expressed above in connection
with claim 1, we do not sustain the rejection of claims 7, 8, and 10.
DECISION
The decision of the Examiner to reject claims 1, 4--8, and 10 is
reversed.
REVERSED
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