Ex Parte Strnad et alDownload PDFPatent Trial and Appeal BoardSep 14, 201612449079 (P.T.A.B. Sep. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/449,079 7590 Y oshihiko Kodama c/o Vivid Jewelers 27217 Wolf Road FILING DATE 09/15/2010 09/15/2016 Bay Village, OH 44140 FIRST NAMED INVENTOR Leonard J. Strnad III 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. VividP0150us 3267 EXAMINER MORGAN, EMILY M ART UNIT PAPER NUMBER 3677 MAILDATE DELIVERY MODE 09/15/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte LEONARD J. STRNAD III and YOSHIHIKO KODAMA Appeal2014-007755 Application 12/449,079 Technology Center 3600 Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and SEAN P. O'HANLON, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Leonard J. Strnad III and Yoshihiko Kodama ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 21-26, 28-31, 38, and 39 under 35 U.S.C. § 102(b) as anticipated by Kawabuchi (US 2005/0166635 Al, pub. Aug. 4, 2005).2 The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 The Appeal Brief identifies Appellants and their respective companies (Vivid Jewelers, Trinity Love International, and Diamond Cutters in Western New York) as the real parties in interest. Appeal Br. 2. 2 Claim 27 is canceled, so we need not review the rejections of claim 27 as indefinite and as anticipated by Kawabuchi. Reply to Final Office Action (filed Mar. 18, 2014), 2 & 9 (cancelling claim 27); Adv. Act. (mailed Mar. 26, 2014) (entering after-final amendment). Appeal2014-007755 Application 12/449,079 CLAIMED SUBJECT MATTER Claims 21 and 38 are independent. Claim 21 illustrates the subject matter on appeal, and it recites: 21. A circular-cut gemstone comprising: a girdle having a top edge and a lower edge; a crown extending from the girdle's top edge at a crown angle less than that [of] an ideal-cut-diamond crown angle so that a substantial portion of light entering one side of the crown exits an opposite side of the crown; and a pavilion extending downward from the girdle's bottom edge and having a pavilion angle the same as an ideal-cut- diamond. Appeal Br. 13 (Claims App.). ANALYSIS Claims 21, 22, 25, 26, 28-31, 38, and 39 In rejecting claim 21, the Examiner finds Kawabuchi' s Figure 1 B discloses a circular cut gemstone comprising a girdle, a crown extending from the girdle's top edge at a crown angle, and a pavilion extending from the girdle's bottom edge at a pavilion angle. Final Act. 3. The Examiner determines an ideal-cut-diamond crown angle is 34.5°, and an ideal-cut- diamond pavilion angle is 40.75°. Id. at 7; see also Spec. i-f 5; and Appeal Br. 3. The Examiner finds Kawabuchi' s Figure 22 discloses combining a crown angle within the range of about 17 .5-26.0° with a pavilion angle of 40.75°, and notes the entire range of about 17.5-26.0° is less than 34.5°. Final Act. 3--4, 7-8. Appellants argue "Kawabuchi does not disclose a specific example wherein the pavilion angle is 40.75° and the crown angle is less than 34.5°." 2 Appeal2014-007755 Application 12/449,079 Appeal Br. 4; see also id. at 6-8 (providing extensive discussion of Kawabuchi disclosure). Appellants contend Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006), controls here, because Kawabuchi's Figure 22 "may disclose a range of pavilion angles, but it does not disclose 'specific examples"' of pavilion angles. Id. at 5 (emphasis added). Appellants acknowledge the Kawabuchi disclosure of a 40.75° pavilion angle in a "conventional ideal cut diamond," but note such a diamond has a crown angle of 34.5°, outside of the claimed range of less than 34.5°. Id. at 6; see Kawabuchi i-fi-f 13, 119. Appellants also contend the claimed crown angle range of less than 34.5° "overlap[ s] only a small portion" of the range of about 17 .5-26.0° illustrated in Kawabuchi's Figure 22. Appeal Br. 4 (annotating Kawabuchi' s Figure 22 to illustrate the overlap). According to Appellants, Kawabuchi' s range of crown angles fails to disclose the claimed range of crown angles with "sufficient specificity" to constitute anticipation. Id. at 8 (citing MPEP § 2131.03 andAtofina, 441 F.3d at 999). Appellants note, in Atofina, the court considered a claimed temperature range of 330°C to 450°C, and a prior art reference disclosing a temperature range of 100°C to 500°C. Id. at 8. Appellants further note, despite the claimed range in Atofina occupying more than a quarter of the prior art range, the court still found "given the considerable difference between the claimed range and the range in the prior art, no reasonable fact finder could conclude that the prior art describes the claimed range with sufficient specificity to anticipate this limitation of the claim." Id. at 8-9 (quoting Atofina, 441 F.3d at 999). Appellants analogize the overlap presented here-a claimed range of less 3 Appeal2014-007755 Application 12/449,079 than 34.5°, and a prior art disclosure range of about 17.5°-26.0°-as being "certainly much less" than the overlap presented in Atofina. Id. at 9. The Examiner responds that Kawabuchi discloses the specifically claimed pavilion angle of 40.75° as a "common" pavilion angle. Final Act. 7-8. 3 The Examiner finds Kawabuchi's Figure 22 discloses, for such a common pavilion angle, a crown angle range of about 17 .5-26.0°, which is less than 34.5°. Id.; Ans. 3. Concerning the Atofina decision, the Examiner notes Kawabuchi's disclosed crown angle range (about 17.5-26.0°) falls entirely within the limitation of claim 21 (less than 34.5°), so the prior art "is not outside of the range" as it was inAtofina. Id. at 5. We agree with the Examiner that Kawabuchi anticipates claim 21, including a pavilion angle of 40.75° (i.e., the same as an ideal-cut-diamond pavilion angle) in combination with a crown angle of less than 34.5° (i.e., less than an ideal-cut-diamond crown angle). First, considering the pavilion angle, Kawabuchi' s Figure 22 discloses a pavilion angle range of 37.5--41.0°, which includes the claimed 40.75°. Kawabuchi, Fig. 22, i-fi-f 151-156. That disclosure, taken in isolation from the rest of Kawabuchi' s disclosure, would invoke Atofina' s discussion of the circumstances under which a prior art disclosure of a genus (37.5--41.0°) is necessarily a disclosure of every species that is a member of the genus (40.75°). See Atofina, 441 F.3d at 998-99. 3 The Examiner cites Kawabuchi' s paragraph 11 in support of this finding. Final Act. 8. That paragraph does not discuss pavilion angles. We understand, as Appellants did, that the Examiner meant to refer to the 40.75° pavilion angle of a Tolkowsky "ideal cut" diamond. Kawabuchi i-fi-f 13, 119; see Appeal Br. 6. 4 Appeal2014-007755 Application 12/449,079 However, Kawabuchi's disclosure is not limited to Figure 22. Kawabuchi also discloses a prior art "ideal cut" diamond proposed by Tolkowsky, having a pavilion angle of 40.75° and a crown angle of 34.5°. Kawabuchi i-f 13. Kawabuchi then goes on to discuss its inventive diamond having a pavilion angle between 37.5° and 41°, with a corresponding crown angle in specified ranges which all fall below the ideal cut diamond's crown angle of 34.5°. Id. i-fi-125-29, 151-156 & Fig. 22. Kawabuchi further compares the light reflecting performance of its inventive diamond with Tolkowsky's ideal cut diamond, in several ways. Id. i-f 119 & Figs. 3-9, ,-r 124 & Figs. 10-13, ,-r 148 & Figs. 19-20, ,-r 151 & Fig. 21. These comparisons include determining "the amount of effective visual-perceptible reflection rays" with pavilion angles of 40° and 41 °, such that "preferable results can be obtained if the pavilion angle (p) is not larger than 41 degrees." Id. i-fi-1151, 154 & Fig. 21. From that disclosure, a person of ordinary skill in the art would appreciate the significance of the ideal cut diamond's pavilion angle of 40.75°, and further appreciate that Kawabuchi discloses a pavilion angle of 40.75° as a species within its overall inventive range of 37.5--41°. The disclosure of a pavilion angle of 40.75°, albeit in connection with the ideal cut diamond having a crown angle of 34.5°, distinguishes the present case from Atofina. This is particularly so given the heavy focus of Kawabuchi on comparing the light reflecting performance of its inventive diamond with Tolkowsky's ideal cut diamond, and nonetheless choosing a range for its inventive diamond that includes the pavilion angle of Tolkowsky' s ideal cut diamond. The prior art reference at issue in Atofina disclosed only a temperature range, and did not disclose any specific temperature within that 5 Appeal2014-007755 Application 12/449,079 range. See Atojzna, 441 F.3d at 1000 ("The disclosure is only that of a range, not a specific temperature in that range.") Comparing the claimed crown angle being less than 34.5° (with a pavilion angle of 40.75°) with Kawabuchi's disclosure of a crown angle range of about 17.5-26.0° (with a pavilion angle of 40.75°) also does not invoke Atofina. The decision in Atofina concerned two different disclosures in the prior art reference: a broader temperature range of 100-500°C, and a narrower "preferred" temperature range of 150-350°C. Atofina, 441 F.3d at 999. The prior art's broader temperature range entirely encompassed the claimed temperature range of 330-450°C, while the prior art's narrower temperature range slightly overlapped the claimed temperature range. Id. at 999-1000. Neither situation is presented here, where the prior art range of about 17 .5-26.0° is entirely encompassed within the claimed range of less than 34.5°-that is, this case is the opposite of that presented by the broader prior art temperature range at issue in Atofina. 4 There is no "considerable difference" or "slight[] overlap[]" between Kawabuchi's disclosed range and the claimed range, as there was in Atofina. Id. The present case is more akin to other decisions where the prior art disclosure was entirely encompassed by the claimed range, and which hold the claim to be anticipated. See, e.g., Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 781 (Fed. Cir. 1985) (finding a prior art disclosure of a titanium base alloy containing 0.25% Mo and 0.74% Ni to anticipate a claim reciting 0.2- 0.4% Mo and 0.6--0.9% Ni). 4 Indeed, Kawabuchi' s Figure 22 indicates that, regardless of what pavilion angle within the critical range of 37.5--41.0° is chosen, the crown angle is always less than 34.5°. 6 Appeal2014-007755 Application 12/449,079 For the foregoing reasons, we sustain the rejection of claim 21 and its dependent claims 22, 25, 26, and 28-31 as anticipated by Kawabuchi. Appellants present the same arguments for the patentability of independent claim 38 and its dependent claim 39 (Appeal Br. 3-11; Reply Br. 2-5), so we likewise sustain the rejection of those claims as anticipated by Kawabuchi. Claims 23 and 24 Appellants present additional argument for the patentability of dependent claims 23 and 24 over Kawabuchi. Appeal Br. 11. Claim 23 indirectly depends from independent claim 21 to specify the crown angle is less than 23 °, and claim 24 depends from claim 23 to specify the crown angle is less than 19°. Id. at 13 (Claims App.). Appellants contend Kawabuchi does not disclose a specific example with a pavilion angle of 40.75° and a crown angle within the narrower ranges of dependent claims 23 and 24, and no showing has been made of "sufficient specificity." Id. at 11. The Examiner finds Figure 22 of Kawabuchi discloses a "range of known crown angles for a pavilion angle of 40.75 degrees is from roughly 17-25 degrees." Final Act. 5. As discussed above, the decision in Atofina concerned a prior art reference disclosing "a preferred temperature range of 150 to 3 50°C that slightly overlap[ped]" the claimed temperature range of 330 to 450°C. Atofina, 441 F.3d at 999-1000. The court stated: [T]hat slightly overlapping range is not disclosed as such, i.e., as a species of the claimed generic range of 330 to 450°C. Moreover, the disclosure of a range of 150 to 350°C does not constitute a specific disclosure of the endpoints of that range, i.e., 7 Appeal2014-007755 Application 12/449,079 150°C and 350°C, as [the patent challenger] asserts. The disclosure is only that of a range, not a specific temperature in that range, and the disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points. Thus, [the prior art reference] does not disclose a specific embodiment of the claimed temperature range. Id. at 1000. That reasoning controls here, where Kawabuchi's disclosure of a crown angle of about 17.5-26.0° slightly overlaps the claimed crown angles of less than 23° (claim 23) or less than 19° (claim 24). In this regard, the claimed crown angle ranges extend down almost to 0°. See Appeal Br. 13 (parent claim 22 recites that the crown "extends upward" from girdle). Thus, we do not sustain the rejection of claims 23 and 24 as anticipated by Kawabuchi. DECISION The Examiner's decision to reject claims 21-26, 28-31, 38, and 39 as anticipated by Kawabuchi is affirmed as to claims 21, 22, 25, 26, 28-31, 38, and 39, and reversed as to claims 23 and 24. 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-IN-PART 8 Copy with citationCopy as parenthetical citation