H.K. Designs Inc.

Patent Trials and Appeals Board

Jun 9, 2021

2021000160 (P.T.A.B. Jun. 9, 2021)

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.
16/243,984 01/09/2019 Hasmukh H. Dholakiya P/6473-52 (CONT) 8057
2352 7590 06/09/2021
OSTROLENK FABER LLP
845 THIRD AVENUE
8TH FLOOR
NEW YORK, NY 10022
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/09/2021 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HASMUKH H. DHOLAKIYA
____________

Appeal 2021-000160
Application 16/243,984
Technology Center 3600
____________

Before NINA L. MEDLOCK, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–5, 7, and 9–18, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as H. K.
Designs Inc. Appeal Br. 1.
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Application 16/243,984

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CLAIMED INVENTION
Appellant’s claimed invention relates to selling pieces of jewelry that
include gemstones. Spec. ¶ 2. Appellant purports that its system
“improve[s] upon the experience of buying and owning a piece of jewelry by
including the true source of the gemstone that is set in the piece of jewelry
and the story behind the formation of the gemstone and the manufacture of
the piece.” Id. ¶ 6.
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below with bracketed matter added, is illustrative of the claimed subject
matter:
1. A method of tracking and associating personal and
historical information regarding a piece of jewelry including a
polished diamond, the method comprising:
[a] receiving a rough diamond having rough diamond
data associated therewith, wherein said rough diamond data
includes at least country of origin and weight information of said
rough diamond;
[b] assigning a diamond identification code to the
rough diamond;
[c] capturing an image of the rough diamond;
[d] saving the image of the rough diamond, the rough
diamond data and the diamond identification code in a
computing system;
[e] cutting and polishing the rough diamond by a
specific craftsmen to create a polished diamond and associated
specific craftsmen data, wherein the specific craftsmen data
includes at least location, date and name information pertaining
to said specific craftsmen;
[f] inscribing the diamond identification code on the
polished diamond;
[g] capturing an image of the polished diamond,
including at least the diamond identification code and an image
of the polished diamond;
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[h] saving the image of the polished diamond and the
specific craftsmen data in a computing system and associating
the image of the polished diamond and the specific craftsmen
data with the diamond identification code in the computing
system
[i] designing a setting for the polished diamond by a
design craftsmen and engraving at least the diamond
identification code, a diamond weight of the polished diamond
and a metal identification of the setting on a surface of a ring
setting to provide a completed data set for a diamond ring
associated with a completed diamond setting including the
polished diamond and the setting and forming said piece of
jewelry;
[j] capturing an image of the completed diamond
setting;
[k] storing the design craftsmen data and the image of
the completed diamond setting in a computing system and
enabling an ultimate owner of the piece of jewelry to access the
design craftsmen data and the image of the completed diamond
setting;
[l] providing an informational booklet, wherein the
informational booklet contains a rough diamond page, a diamond
mapping page, a diamond cutting and polishing page, a diamond
grading page, a completed set diamond image page and a card
holder slot for holding an information card; and
[m] wherein the information card contains information
including one or more of the diamond identification code, a
quantity, a shape, a weight, a clarity, a color, a cut, measurements
of, history of formation and processing of the diamond, a history
of design and fabrication of the setting, conflict free certification
and a history of manufacture of the piece of jewelry.

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REJECTIONS2
Claims 1–5, 7, 9–13 and 14–183 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Neogi (US 2003/0120613 A1, pub. June 26,
2003), Lapa (US 2009/0234754 A1, pub. Sept. 17, 2009), Yoshizawa (US
5,899,503 B1, iss. May 4, 1999), and Marmershteyn (US 2006/0173738 A1,
pub. Aug. 3, 2006).4
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Neogi, Lapa, Yoshizawa, Marmershteyn and Yeko (US 2010/0121769
A1, pub. May 13, 2010).
ANALYSIS
Claim 1 and Dependent Claims 2–5, 7, 9–13, and 14–18
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Neogi, Lapa, Yoshizawa, and Marmershteyn fails to disclose
or suggest “specific craftsmen data,” as recited by limitations [e] and [h] of
independent claim 1. Appeal Br. 4–5. Instead, we agree with, and adopt,

2 The Examiner withdrew a provisional rejection of claims 1–5, 7, 9–18 on
the ground of non-statutory double patenting. Ans. 13.
3 The Examiner improperly omitted dependent claim 7 from being included
under this rejection (see Final Act. 20) and inadvertently listed claim 13
under this rejection (Final Act. 13–23).
4 The Examiner raises an issue regarding benefit of priority. See Final 2–3.
According to Appellant, the Examiner’s “objections/rejection has been
mooted by the Amendment filed by Applicant on November 6, 2019, which
clarified that the present application is a continuation of U.S. Patent
Application No. 15/631,601, filed June 23, 2017.” Appeal Br. 3. The
Examiner does not address this issue in the Examiner’s Answer.
Notwithstanding the Examiner’s position, we note that each of the relied
upon references antedates any potential earliest effective filing date.
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the Examiner’s findings and rationales as our own. See Final 13–18;
Ans. 13–17. We add the following discussion for emphasis.
Neogi is directed to a “system for marking, identifying, tracking
and/or customizing gemstones and other objects using digital identifiers or
markings.” Neogi ¶ 14. Neogi describes that gemstones are marked with “a
digital identifier such as a bar-code or matrix” (id. ¶ 36), and that a matrix
can be encoded with “many different types of data, e.g., text, music, video,
audio, color or grayscale photographs, user specific information, or other
data representable in digital form.” Id. ¶ 44. Neogi discloses that “[t]he
tracking system tracks the history of objects such as gemstones, from, for
example, a mine, a point of extraction, or an unprocessed stage to
distributors, government agencies, cutters, customers, and other parties.” Id.
¶ 39. In this regard, Neogi discloses that “a complete transaction history or
chain of custody from the mine to different parties is stored in [International
Central Database System (ICDS)] 1520.” Id. ¶ 137.
Lapa is directed to a “system for gemstone evaluation and gemology
teaching in an internet environment.” Lapa ¶ 2. Lapa discloses that “digital
camera 80 is positioned within the apparatus in order to capture an image of
diamond 60 along the axis 76.” Id. ¶ 39. Lapa shows “screenshots that
represent the process that a rough diamond undergoes before becoming an
ideal cut diamond.” Id. ¶ 75, Figs. 8A–8C. Lapa discloses that “gemstone
look-up module 90 is instructed to look up a previously generated record for
the identified diamond and to display the record” (id. ¶ 83), and that “[t]hese
records display information relating to the origin and manufacturing of the
cut diamond, the origin of the rough diamond, and the manufacturer of the
cut diamond.” Id.
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Yoshizawa is directed to “a gem certificate, a gem grading report and
a guarantee for jewelry, and further relates to a method of guaranteeing
jewelry.” Yoshizawa, 1:8–10. Yoshizawa provides “an identification data
or an evaluation data based upon the examination of a precious stone and a
precious metal used in jewelry, including an appearance data on the jewelry
having at least two or more pictures or figures.” Id. at 2:25–30. Yoshizawa
describes the gem certificate as including “a name and a signature 12 of a
gemologist (or examiner), a designer (or manufacturer) or the like.” Id.
at 3:10–13. Yoshizawa discloses
it is also appropriate that a jewelry craftsman who actually took
the charge of the manufacturing and processing the jewelry, the
name of the jewelry manufacturing company, the jewelry sales
company or the like are written with the name of the designer in
the gem certificate 2, the gem grading report 21, and the
guarantee 31, which makes clearer the distribution and the
relationship of the protecting right of the jewelry.
Id. at 4:40–48.
Marmershteyn is directed to a system for “marketing diamonds that
originate from the same rough diamond.” Marmershteyn ¶ 1.
Marmershteyn describes “taking a photograph of the single rough diamond
prior to cutting the rough diamond into smaller diamonds.” Id. ¶ 8. In
Marmershteyn, “a single rough diamond is cut into at least two smaller
diamonds” and the diamonds “are polished according to techniques well
known in the art.” Id. ¶ 15. Marmershteyn also discloses “including
documentation with the set” (id. ¶ 7) and that the photograph of the rough
diamond “can be included in the documentation booklet.” Id. ¶ 18.
Appellant argues that “[i]n Neogi, the diamond craftsman is defined
as the cutter 1555 which is a business entity and not a human being.”
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Appeal Br. 4. According to Appellant, “[t]he aim of the invention is to
connect the piece of jewelry, not only to impersonal and inanimate objects or
business entities, but also to specifically identified human beings, to known
designers.” Id. However, we are not persuaded by Appellant’s argument
that the cutter disclosed in Neogi is necessarily limited to a business entity
and not a human being. Neogi describes various parties, i.e. a person or a
group, included in the transaction history or chain of custody. See, e.g.,
Neogi ¶ 39 (“The tracking system tracks the history of objects such as
gemstones, from, for example, a mine, a point of extraction, or an
unprocessed stage to distributors, government agencies, cutters, customers,
and other parties.”); see also id. ¶¶ 123, 137. Even assuming arguendo that
the cutter is a business entity, it would not preclude cutter information
included in the chain of custody of Neogi from including the name or
identifier of the cutter, i.e. “name information pertaining to” a specific
craftsman, as in limitation [e] of claim 1.
Appellant asserts that “[t]he camera system described in
paragraph [0039] of Lapa is for storing an image of a polished diamond, not
of a rough diamond.” Appeal Br. 4. However, as the Examiner points out,
Lapa teaches “the ability to capture and store images of diamonds including
rough and polished diamonds” and “a moving image presentation . . . that
shows a first rough ready to be cut.” Ans. 15 (citing Lapa ¶¶ 39, 75). In
rejecting claim 1, the Examiner finds that Neogi discloses “marking,
identifying, tracking and/or customizing gemstones and other objects using
digital identifiers or markings” which may indicate data such as a
photograph. Final Act. 13–14 (citing Neogi ¶ 14). We note that Neogi
describes “[a] matrix in a gemstone can be encoded with or serve as an
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external reference to many types of data” including “color or grayscale
photographs” and images and videos in MPEG or JPEG formats. Neogi
¶ 44. Neogi discloses that “matrix data may be applied to both rough (i.e.,
uncut or unpolished) diamonds as extracted from a mine, as well as cut and
polished diamonds processed by a diamond cutter.” Id. ¶ 87. The Examiner
also points out that “Marmershteyn teaches providing an informational
booklet wherein the informational booklet contains a rough diamond page.”
Final. Act. 17 (citing Marmershteyn ¶ 16). We note that Marmershteyn
discloses that “a photograph is taken of a single rough diamond prior to the
cutting of the single rough diamond” and that “the photograph of the rough
diamond can be . . . included in the documentation booklet.” Marmershteyn
¶ 18. Thus, one of ordinary skill would recognize the combination of Neogi,
Lapa, Yoshizawa, and Marmershteyn teaches capturing an image of the
rough diamond and saving the image of the rough diamond, as required by
limitations [c] and [d] of independent claim 1.
Appellant further argues that “one of ordinary skill in the art would
deem the gemologist to be, not a specific person, but rather a signature of
authentication of the piece, by a business entity, for example, a piece
designed by Tiffany, rather than a specific human being.” Appeal Br. 5. We
disagree and note that a gemologist is one alternative in providing “a name
and a signature 12 of a gemologist (or examiner), a designer (or
manufacturer) or the like.” Yoshizawa, 3:10–13. Instead, we agree with the
Examiner that Yoshizawa discloses “a jewelry craftsman who actually took
the charge of the manufacturing and processing the jewelry, the name of the
jewelry manufacturing company, the jewelry sales company or the like are
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written with the name of the designer” in the gem certificate, grading report,
and guarantee. Ans. 17 (citing Yoshizawa at 4:40–5:5) (emphasis omitted).
Appellant acknowledges that Marmershteyn describes a booklet, but
asserts “the context is specifically relative to ‘his and hers, matching stones
that are cut from the same rough diamond’ and not to the context of the
present invention.” We note that the system of Marmershteyn “can be used
for marketing of loose diamonds,” and that “a consumer may buy diamonds
or diamond jewelry marketed according to this invention for purely
individual use.” Marmershteyn ¶¶ 28, 31. The context is that of marketing.
Cf. Spec. ¶¶ 2, 6. Appellant has presented no persuasive argument or
technical reasoning to demonstrate that the Examiner’s finding is
unreasonable or unsupported.
Appellant last provides a summary of claim 1, in general, and asserts
without explaining that “[t]he combination of the four references . . . do[es]
not disclose all of the features of the invention and certainly not the overall
methodology of the invention as set forth in independent claim 1.” Appeal
Br. 5. However, Appellant’s summary and conclusory assertion do not rise
to the level of a substantive argument for patentability. Cf. In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Therefore, in the absence of any specific, technical argument as
to why the combination of Neogi, Lapa, Yoshizawa, and Marmershteyn fails
to disclose or suggest the subject matter of claim 1, Appellant’s argument
fails to demonstrate Examiner error.
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In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
rejections of claims 2–5, 7, and 9–18, which depend from independent claim
1, because Appellant has not argued the separate patentability of these
claims.

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9–12,
14–18
103(a) Neogi, Lapa,
Yoshikawa,
Marmershteyn
1–5, 7, 9–
12, 14–18

13 103(a) Neogi, Lapa,
Yoshikawa,
Marmershteyn,
Yeko
13
Overall
Outcome
1–5, 7, 9–
18

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).

AFFIRMED