Ex Parte Gutierrez

Patent Trial and Appeal BoardNov 5, 2012

11420174 (P.T.A.B. Nov. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RAFAEL GUTIERREZ ____________ Appeal 2010-010357 Application 11/420,174 Technology Center 3600 ____________ Before WILLIAM V. SAINDON, BRADFORD E. KILE, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010357 Application 11/420,174 - 2 - STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-8, 10, 15-22 and 24-26 as unpatentable under 35 U.S.C. § 103(a) over Afuku (US 6,023,947, issued Feb. 15, 2000) and Slowinski (US 5,072,601, issued Dec. 17, 1991). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s invention relates to gemstone setting. Spec. 1, para [001]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A gemstone setting arrangement comprising: a gemstone having an obverse face, a girdle portion, a culet, and a pavilion portion, said obverse face being generally planar and defining a table plane; a setting having a girdle retaining portion and a culet seating portion, the girdle retaining portion engaging said gemstone proximal said girdle portion relative to said culet, said culet of said gemstone being seated in said culet seating portion; said culet seating portion comprising an obverse face portion and an edge, said edge defining a gemstone abutting portion; said gemstone including a groove in said pavilion portion, said groove being proximal said culet relative to said girdle portion, said groove having a setting abutting portion, said setting abutting portion engaging said gemstone abutting portion of said culet seating portion wherein said pavilion portion is generally circular in cross section between said groove in said pavilion portion and said girdle portion; wherein said table plane is unobstructed when observed from a top plan view; and, whereby said gemstone is inhibited from moving with respect to said setting. Appeal 2010-010357 Application 11/420,174 - 3 - ANALYSIS Claims 1, 2, 6-8, 10, 15-18, and 20-22 The Examiner finds that Afuku discloses a gemstone arrangement with all of the features claimed by Appellant except that Afuku does not expressly incorporate a groove in the pavilion portion of the gemstone. Ans. 4. In addition, inasmuch as Afuku fails to disclose any groove, it also necessarily fails to disclose a groove proximal to the culet that engages a seating. Id. The Examiner also acknowledges that Afuku lacks an unobstructed top plan view of the table plane. Id. The Examiner finds, however, that Afuku discloses a prior art claw-type gemstone setting that does not obstruct the top plan view of the table plane. Ans. 5, citing Afuku, col 1, ll. 27-31, figs 4A and 4B. Using Slowinski as a secondary reference, the Examiner finds that the prior art discloses a groove in the pavilion portion of a gemstone. Ans. 5. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Afuku with a pavilion groove as in Slowinski. Ans. 5. According to the Examiner, one would have been motivated to make such a combination because it would help secure the gemstone in a setting. Id. Appellant accuses the Examiner of picking and choosing prior art elements in hindsight. App. Br. 7. Appellant argues that Afuku does not provide an unobstructed view of the table of the gemstone from a top plan view. App. Br. 15-16. Appellant acknowledges that Slowinski discloses grooves, but notes that the jewels depicted in Slowinski’s figures are rectangular in cross-section and that Slowinski’s grooves are in matched pairs on the respective opposite sides of the rectangular cross-section. App. Appeal 2010-010357 Application 11/420,174 - 4 - Br. 12. Appellant argues that Slowinski only discloses grooves that are arrayed in matched pairs. Id. Appellant also argues that Slowinski’s grooves are provided about the girdle of the jewel instead of proximal the culet as claimed by Appellant. App. Br. 13. Appellant asserts that Slowinski’s device would not securely hold a gemstone if the grooves were not provided in pairs and/or were located about the culet. Id. At the outset, we reject Appellant’s argument concerning the unobstructed view of the table. Appellant’s statement that Afuku’s engagement of the table is “critical” constitutes mere unsubstantiated attorney argument which is no substitute for competent evidence. See Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005). Moreover, and contrary to Appellant’s position, Figure 4B of Afuku shows that it was known in the prior art to construct a claw setting with an unobstructed view of the table. Appellant has not persuaded us that the setting depicted in Figures 4A and 4B of Afuku could not be modified with a groove in the pavilion to secure the gemstone in the setting. A groove would provide an obvious advantage of additional security. With respect to the location of the groove, during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the instant case, we construe the term “proximal said culet relative to said girdle portion” to mean that the groove is closer to the culet than it is to the girdle or, in other words, the groove is located beyond the mid-point of a line extending from the girdle to the culet. Appeal 2010-010357 Application 11/420,174 - 5 - The issue before us then is whether the Examiner correctly concluded that a person of ordinary skill in the art would have had reason to modify Afuku with a groove and corresponding setting abutment that is located proximal to the culet relative to the girdle. In this case, the Examiner reached the correct conclusion. We reject Appellant’s argument that Slowinski may only be read for teaching the use of grooves in pairs located proximal to the girdle. A reference may be read for all that it teaches, including uses beyond its primary purpose. In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-421 (2007). Slowinski teaches the use of grooves in a gemstone mated with corresponding structure in a setting to secure the gemstone in place. Here, the Examiner merely relied on Slowinski to show the prevalence in the art of using grooves as one means in which to secure a gemstone. Ans. 11. Slowinski “must be read not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Having established that the use of grooves was known in the art, the Examiner could then properly rely on a conclusion of obviousness from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference. See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). The prior art, as a whole, teaches that gemstones can be secured with a variety of claw, channel, and notch features at multiple points of attachment. Afuku, fig. 1B; Slowinski, col. 1, ll 43-50. For example, Afuku shows that it was known to secure a gemstone using two points of attachment, the first point of attachment being a channel or claw feature at or Appeal 2010-010357 Application 11/420,174 - 6 - near the girdle and the second point of attachment being a support seat near the culet. See Afuku, figs.1B & 4B. The Appellant’s invention merely modifies the attachment between the culet support seat and the pavilion with a ledge in the support seat mated to a corresponding groove in the pavilion. The Supreme Court has admonished lower courts that a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). “Common sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420. Thus, the subject matter of claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference. Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983). Combining known features of claw prongs, channels, and notches to secure a gemstone involves simple mechanical technique that requires no more than the exercise of common sense by a person of ordinary skill in the art. See Wyers v. Master Lock Co., 616 F.3d 1231, 1241-42 (Fed. Cir. 2010), quoting KSR, 550 U.S. at 421. Relocating a notch from a position proximal to a girdle to proximal a culet portion of a setting and then using a claw prong or channel as a second point of attachment to secure a gemstone requires nothing more than common sense by a person of ordinary skill in the art. In view of all the above, we sustain the Examiner’s rejection of claim 1. Appellant argues claims 1, 2, 6-8, 10, 15-18, 21 and 22 as a group. Appellant does not argue claim 20. Consequently, claims 2, 6-8, 10, 15-18, Appeal 2010-010357 Application 11/420,174 - 7 - and 20-22 fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3 and 19 Claim 3 depends from claim 1 and adds the following limitation: said setting abutting portion comprising a wall having a generally planar wall surface, said wall surface of said setting abutting portion generally defining a plane that is approximately normal with respect to said table plane. App.Br., Clms. App’x. Claim 19 depends from claim 17 and adds a substantially similar limitation. Id. Appellant argues that claims 3 and 19 are not obvious, because they require that the groove has a wall that is approximately normal to the table plane of the gemstone. App. Br. 14. The Examiner finds that Afuku discloses the dependent limitations of claim 3 and 19 at pages 6-7 and 10, respectively, of the Answer. However, the Examiner previously admitted that Afuku lacks a groove. Ans. 4. Inasmuch as Afuku lacks a groove altogether, it necessarily follows that it cannot also have a groove with a wall that is approximately normal to the table plane. Ans. 6-7. Under the circumstances, the Examiner’s rejection is not adequately supported by the existing record and, accordingly, we do not sustain the Examiner’s rejection of claims 3 and 19. Claims 4 and 5 Claim 4 depends from claim 1 and adds the following limitation: said groove having a terminal obverse point, said terminal obverse point being disposed at a distance along said pavilion portion that is greater than 75% of the distance between said girdle portion and said culet. Appeal 2010-010357 Application 11/420,174 - 8 - App.Br., Clms. App’x. Similarly, claim 5 places the groove greater than 85% from the girdle. Id. Appellant argues that neither Afuku nor Slowinski teach or suggest placing a groove more than 75% or 85% respectively of the distance between the girdle and the culet. App. Br. 14. The Examiner, in rejecting claim 1, finds that it would have been obvious to locate the groove of Slowinski in the pavilion portion of Afuku at or about feature 9 in Figure 1B of Afuku. Ans. 5. Support feature 9 is located toward the culet end of the gemstone, as depicted in Afuku Figure 1B. See also e.g., Afuku, col. 3, ll. 18-20 (“a support seat 9 for supporting, the region near a culet 20, which is the head point of the lower conical section 19”). In this light, we agree with the Examiner’s conclusion of obviousness because it is clear that merely determining the placement of the groove at a particular point between the girdle and the culet to support the culet end of the gemstone is something that falls within the ambit of ordinary creativity of the person of ordinary skill in the art. See KSR, 550 U.S. at 421. Accordingly, we sustain the Examiner’s rejection of claims 4 and 5. Claims 24-26 Appellants argue claims 24 through 26 as a group. App. Br. 14-15. We select claim 24 as the representative claim of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claim 24 depends from claim 1 and adds a limitation that the shape of the pavilion portion of the gemstone opposite the groove is convex. App.Br., Clms. App’x. Appellant argues that Afuku lacks a groove and that Slowinski has opposing lateral grooves that teach the use of grooves in pairs. App. Br. 15. Appellant argues that, if only one groove was used in Slowinski, then the diamond would not be secured in the setting. Id. Appeal 2010-010357 Application 11/420,174 - 9 - We do not find Appellant’s argument persuasive for the same reasons discussed above with respect to claim 1. Appellant cannot establish non- obviousness by attacking Slowinski individually where the rejection is based on the teachings of a combination of references. See Merck, at 1097. Modifying Afuku with a single groove in the pavilion would naturally result in the side of the gemstone opposite the groove being convex in shape. Appellant’s Specification admits that cutting notches into gemstones and providing tabs that engage the notches was previously known in the art as a means of setting a gemstone. Spec. 2, para. [003]. A person of ordinary skill in the art, having decided to use a single notch or groove in a gemstone wall, would find it obvious to further secure the gemstone with an opposing claw prong, channel or similar structure, as depicted near the girdle in Afuku at Figures 1B and 4B, and would otherwise know that notches or grooves did not necessarily have to be employed in an opposing, paired configuration. Accordingly, we sustain the Examiner’s rejection of claims 24-26. DECISION The decision of the Examiner to reject claims 1, 2, 4-8, 10, 15-18, 20- 22 and 24-26 is affirmed. The decision of the Examiner to reject claims 3 and 19 is reversed. 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-IN-PART mls