Ex Parte Rydlewicz

Patent Trial and Appeal BoardMay 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. Â§ 134 of the final rejection of claims 1 and 4---6 as unpatentable under 35 U.S.C. Â§ 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. Â§ 6(b). We REVERSE. 1 A rejection of all pending claims under 35 U.S.C. Â§ 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. Â§ 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 60Â° relative to the girdle facet on each adjacent side thereof. 2 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 3 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. 4 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 5