Ex Parte Wcislo et alDownload PDFPatent Trial and Appeal BoardJan 13, 201712801508 (P.T.A.B. Jan. 13, 2017) Copy Citation 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. 12/801,508 06/11/2010 Adam Wcislo 2390 7590 Adam Wcislo 499A Kingscourt Drive Waterloo, ON N2K 2X9 CANADA EXAMINER MORGAN, EMILY M ART UNIT PAPER NUMBER 3677 MAIL DATE DELIVERY MODE 01/17/2017 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 ADAM WCISLO and ZOFIA ANNA SAWKIEWICZ Appeal 2017-000445 Application 12/801,508 Technology Center 3600 Before JENNIFER D. BAHR, LINDA E. HORNER, and BRANDON J. WARNER, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Adam Wcislo and Zofia Anna Sawkiewicz (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 7 and 42^46. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2017-000445 Application 12/801,508 THE CLAIMED SUBJECT MATTER Claim 7, reproduced below, is illustrative of the claimed subject matter. 7. A jewelry item comprising a rigid base with a refractive index between 1.440 to 3.220, having a shape including a side surface, a top surface and/or a flat bottom, a groove for a setting cut around of said top surface and/or said flat bottom of the rigid base, and into said side surface of the rigid base having a shape, the groove is positioned at a distance and angle relative to said top surface and/or said flat bottom depending on the rigid base shape, the angle ranges from 0-15 degrees as decided for a best combined effect of the rigid base, a light, and said setting; and said setting comprising at least one a metal insert having a shape, said metal insert is inserted into said groove and connected together to form said setting; wherein the rigid base function is to rigidly hold said setting in the groove. REJECTIONS1 I. Claims 7 and 42-46 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. II. Claim 7 stands rejected under 35 U.S.C. § 102(b) as anticipated by Braunwart (US 2008/0104994 Al, pub. May 8, 2008). III. Claim 42 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Braunwart and Meyer (US 250,378, iss. Dec. 6, 1881).2 IV. Claims 43 46 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Braunwart. 1 The Examiner withdrew a rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Braunwart. See Ans. 2. 2 Although the Examiner does not include Meyer in the statement of the rejection, the Examiner relies on Meyer in the detailed explanation of the rejection of claim 42. See Final Act. 7. 2 Appeal 2017-000445 Application 12/801,508 DISCUSSION Rejection I—Indefiniteness Claim 7 “[Tjhe rigid base function is to rigidly hold the setting in the groove ” The Examiner determines that the language “wherein the rigid base function is to rigidly hold the setting in the groove” in claim 7 renders this claim, and its dependent claims, indefinite “since the ‘rigid base’ is a gemstone” and “[t]he ‘function’ of the ‘rigid base’ is to be decorative.” Final Act. 3. The Examiner clarifies that “the only function of a gemstone in jewelry is to be decorative.” Ans. 3. Appellants argue, and we agree, that the above language does not render claim 7 indefinite. See Appeal Br. 12— 13. The Examiner’s premise that the only function of a gemstone is to be decorative is unfounded, and we see no reason why a gemstone could not also perform other functions, in addition to being decorative, in jewelry. The Examiner does not adequately explain why the scope of the claim language at issue is unclear. A person of ordinary skill in the art would understand that the rigid base having a groove, as claimed, is a structural element that holds a setting. “[A] rigid base . . . having a shape including a side surface, a top surface and/or a flat bottom ” The Examiner determines that the language “a side surface, a top surface and/or a flat bottom” renders claim 7 indefinite because the language “is now not restricting the claimed ‘rigid base’ to any particular shape.” Final Act. 4. We do not agree with this determination because the issue raised by the Examiner with respect to the claim language is one of breadth, but not indefmiteness. We understand the rigid base to include at least one of a side surface, a top surface, and a flat bottom. Although a myriad of 3 Appeal 2017-000445 Application 12/801,508 shapes could satisfy this broad limitation, a broad claim is not necessarily indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, All F.2d 786, 788 (CCPA 1970. “[A]s decided for a best combined effect of the rigid base, a light, and said setting ” Claim 7 recites, in relevant part, “the groove is positioned at a distance and angle relative to said top surface and/or said flat bottom . . ., the angle ranges from 0-15 degrees as decided for a best combined effect of the rigid base, a light, and said setting.” Appeal Br. 38, Claims App. The Examiner determines that the language “as decided for a best combined effect” renders the claim indefinite. Final Act. 4. The Examiner explains that “[i]t is unclear what specifically is being decided, who is deciding it[,] and how the best combined effect is decided.” Ans. 2. We agree with the Examiner that the limitation in question renders the scope of the claim indefinite. Claim 7 is indefinite because the Specification provides no objective definition identifying a standard for determining when a particular groove angle provides the “best combined effect” of the rigid base, setting, and light. See Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 1348—56 (Fed. Cir. 2005) (holding that the claim language “aesthetically pleasing” was indefinite because it was “completely dependent on a person’s subjective opinion”). According to the Specification, the angle for the gemstone groove “should be from 0 to 15 degrees ... to provide the gemstone with the best effect wherein a light bouncing to the gemstone is going through the stone from its side surface and shooting through the face of the gemstone.” Spec. 5. However, the Specification does not provide an 4 Appeal 2017-000445 Application 12/801,508 objective definition identifying a standard or criteria for determining whether a particular groove angle provides “a best combined effect of the rigid base, a light, and said setting.” As such, any combined effect of light with the rigid base and setting is not defined by an objective standard, but, rather, appears to be dependent upon the perceptions of a person viewing the jewelry item in light. To the extent that this is the case, “best combined effect,” as recited in the claim, “does not just include a subjective element, it is completely dependent on a person’s subjective opinion.” See Datamize, 417 F.3d at 1350. In other words, the combined effect of the rigid base, light, and setting that is “best” to one person may not be “best” to another person. In the absence of an objective standard in the Specification for determining whether a particular groove angle provides a “best combined effect of the rigid base, a light, and said setting,” the metes and bounds of the claim would not be discernible to a person having ordinary skill in the art. Accordingly, we sustain the rejection of claim 7 under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 42—46 Each of claims 42 46 depends directly from claim 7 and recites “wherein said metal insert is formed as” one of a sheet, rope, chain, tube, and mesh. Appeal Br. 38—39, Claims App. In the rejection, the Examiner explains that claim 7 recites “a metal insert having a shape,” whereas “[cjlaims 42-46 alter the ‘form’” of the metal insert. Final Act. 4. Appellants do not contest the indefiniteness rejection of claims 42— 46. See Appeal Br. 12—13 (Appellants arguing only the indefiniteness rejection of claim 7). Consequently, Appellants have waived any argument 5 Appeal 2017-000445 Application 12/801,508 of error, and we summarily sustain the rejection of claims 42-47 under 35U.S.C. § 112, second paragraph, as being indefinite. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Moreover, claims 42 46 depend directly from claim 7 and, thus, incorporate the language “best combined effect,” which renders the claims indefinite for the reasons discussed supra. Accordingly, we also sustain the rejection of claims 42-46 as indefinite for this additional reason. Rejection II—Anticipation by Braunwart The Examiner finds that Braunwart discloses a jewelry item satisfying all of the limitations of claim 7. See Final Act. 5—6. Appellants argue that Braunwart does not disclose “a rigid base . . . having a shape including a side surface, a top surface and/or a flat bottom,” as recited in claim 7 (Appeal Br. 38, Claims App.). See id. at 15. In particular, with respect to the Examiner’s finding that Braunwart’s face 14 represents a top surface (see Final Act. 5), Appellants assert that “one skilled in the art would never make that mistake” (Appeal Br. 15 (emphasis omitted)). We do not find this argument persuasive. The claim language “a top surface and/or a flat bottom” requires only one of a top surface and a flat bottom. Braunwart discloses “front and back faces 12 and 14.” Braunwart, para. 13. Appellants do not set forth any evidence or sufficiently persuasive explanation as to why one of ordinary skill in the art would consider it a “mistake” to interpret Braunwart’s face 14 as a top surface. Thus, 6 Appeal 2017-000445 Application 12/801,508 Appellants do not apprise us of error in the Examiner’s finding, which is supported by a preponderance of the evidence. Appellants argue that Braunwart does not disclose that “the groove is positioned at a distance and angle relative to said top surface and/or said flat bottom . . ., the angle ranges from 0-15 degrees,” as recited in claim 7. See Appeal Br. 16—17. In particular, Appellants assert that Braunwart “doesn’t specify or provide[] any evidence to support the angle.” Id. at 16. Appellants appear to take issue with the Examiner’s interpretation that a zero angle is considered parallel. See id. at 16—17 (citing Final Act. 4). According to Appellants, “the Examiner is trying to assume where the reference doesn’t give the basis for assumption.” Id. at 17 (emphasis omitted). The Examiner responds “that a zero angle would make the groove parallel to the girdle of a facet stone, which is best shown in figure 6.” Ans. 4. According to the Examiner, Braunwart discloses “an ‘angle relative to said top surface and or flat bottom’ of 0 degrees, since the groove is around the girdle of the stone.” Id. In reply, Appellants assert that “Fig. 6 is neither a faceted stone nor a cabochon stone,” and the stone in Figure 6 “doesn’t have facets, has a smooth surface which is shown by shaded lines, and never had a girdle.” Reply Br. 2.3 3 Appellants also contend that “the Examiner’s Answer . . . rais[es] new issues without new grounds for rejection.” Reply Br. 3. We note that the issue of whether an Examiner’s Ans wer includes a new ground of rejection is a petitionable matter that does not fall within the Board’s jurisdiction, and, therefore, we do not address this matter. See 37 C.F.R. § 41.40(a) (“Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 ” and “[fjailure of appellant to timely file such a petition will constitute waiver of any arguments that a 7 Appeal 2017-000445 Application 12/801,508 Appellants’ argument is not persuasive because Appellants do not specifically identify any error in the Examiner’s interpretation that a groove and a top surface that are parallel have a relative angle of 0 degrees between them. In this regard, Braun wart discloses “a gemstone 10 having generally rounded front and back faces 12 and 14” and “groove 16 . . . formed all the way around the girdle of the stone.” Braunwart, para. 13; see id., Figs. 1—3. According to Braunwart, Figure 3 shows a side view of Figure 1, wherein “the stone is shown with faceted faces.” Id., para. 15. Although Braunwart does not explicitly disclose a relative angle between groove 16 and face 14, Figures 1 and 3 depict groove 16 as substantially parallel to the central facet of face 14. Therefore, because two parallel surfaces have a relative angle of 0 degrees between them, Braunwart discloses a relative angle of 0 degrees between groove 16 and face 14. Figure 6 of Braunwart depicts another embodiment of a gemstone that includes table 22 and groove 26 (see also id., para. 16) and provides additional evidence that Braunwart teaches a substantially parallel relationship between a groove and a top surface. Braunwart’s relative angle of 0 degrees falls in the claimed range, and, thus, the Examiner’s finding is supported by a preponderance of the evidence. Appellants discuss the contents of the Applicant-Initiated Interview Summary, dated December 4, 2013, and the substance of the corresponding interview conducted on December 4, 2013. See Appeal Br. 23—27. Appellants also discuss the contents of the Advisory Action, dated February 3, 2014. See id. 27—29.* * 4 We have considered the content of these remarks rejection must be designated as a new ground of rejection.”); Manual of Patent Examining Procedure (MPEP) § 1002.02(c). 4 Appellants assert that the Examiner presented new grounds of rejection in the Advisory Action. See Appeal Br. 27—29. We will not address this 8 Appeal 2017-000445 Application 12/801,508 and find no separate substantive argument for patentability in addition to the arguments discussed supra. For the above reasons, Appellants do not apprise us of error in the Examiner’s rejection of claim 7 under 35 U.S.C. § 102(b) as anticipated by Braunwart, which we, thus, sustain. Rejection III— Obviousness based on Braunwart and Meyer In the rejection of claim 42, the Examiner determines that “it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a planar sheet in place of the wire of Braunwart, as known in the art, taught by . . . Meyer, by utilizing a planar sheet B.” Final Act. 7— 8. The Examiner reasons that the proposed modification “would not alter the form, function or use of the Braunwart device” but, rather, would be “done for the purpose of aesthetics.” Final Act. 8. Appellants argue that Meyer’s flange B is not a planar sheet. See Appeal Br. 33. This argument is not convincing. According to Meyer, “Figure 1 is a side elevation of one of the improved gems, having a convex face on one side and [a] flat face on the other in the same plane as the face of the flange on that side.” Meyer, 11. 33—36 (emphasis added). Appellants do not offer any evidence or explanation as to why Meyer’s flange B, as so described, does not represent a planar sheet. See also id., Figs. 1—3. Moreover, Appellants acknowledge that “precious metals in form of [a] sheet are known in the art,” thereby stipulating to the Examiner’s finding assertion because it does not relate to an appealable matter, but, rather, it relates to a petitionable matter under 37 C.F.R. § 1.181. See MPEP § 1002.02(c). 9 Appeal 2017-000445 Application 12/801,508 that such planar metal sheets are known in the jewelry art. Appeal Br. 34; see Final Act. 7. Appellants argue that Meyer’s flange B is made of glass rather than metal. Appeal Br. 33. Appellants also assert that Meyer’s flange B is not held in a groove because imitation stone A does not have a groove. Id. These arguments are not persuasive because they are not responsive to the rejection as articulated by the Examiner. The Examiner does not rely on Meyer for disclosing a groove and a metal insert, but instead relies on Braunwart for teaching a rigid base with a groove that holds a metal insert. See Final Act. 5. Nonobviousness cannot be established by attacking references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants argue that Braunwart and Meyer teach away from the claimed invention. See Appeal Br. 34. In particular, Appellants assert that Braunwart’s disclosure in paragraph 20 that “the wire . . . need not be made of metal” teaches away from metal inserts, as claimed. See id. at 29, 31. Appellants also argue that Meyer teaches away from Braunwart. See id. at 34. These arguments are not convincing. A reference teaches away from a claimed invention or a proposed modification if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also 10 Appeal 2017-000445 Application 12/801,508 criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants do not point to, nor do we find, any disclosure in Braunwart or Meyer criticizing, discrediting, or otherwise discouraging using metal for the setting. The fact that Braunwart discloses that the wire “need not be made of metal” does not constitute a teaching away from using a metal wire. Braunwart simply discloses that other materials can be used “without departing from the inventive concepts.” Braunwart, para. 20. Appellants assert that “Meyer . . . chang[es] the principle of. . . Braunwart.” Appeal Br. 34. To the extent that Appellants appear to argue that the Examiner’s proposed modification of Braunwart based on the teachings of Meyer would change the principle of operation of Braunwart, we do not find this argument persuasive. We find no evidence in the record before us that Braunwart’s jewelry item would no longer operate satisfactorily if a planar sheet flange were used in place of wire as the metal insert in the groove. Regardless of the particular form of the metal insert in the groove, the metal insert would appear to serve the same purpose as before, using the same principles of operation. Namely, a metal insert formed as a planar sheet would continue to be set in the groove of the stone and facilitate attachment to a hanger. See Braunwart, para. 17. Appellants argue that the Examiner’s proposed modification of Braunwart is improper because it is based upon impermissible hindsight, there is no motivation for the proposed modification, and the Examiner did not articulate reasoning supported by rational underpinnings. See Appeal Br. 30—31. According to Appellants, “the use of sheet in the groove is not known in the art as prove[n] by all the Examiner references.” Id. at 34. We 11 Appeal 2017-000445 Application 12/801,508 do not find these arguments persuasive. To the extent that Appellants appear to insist upon an explicit motivation in the prior art to establish obviousness, the Supreme Court has stated that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Court noted that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Instead, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Here, the Examiner finds “that Braunwart discloses a wire, . . . the groove has different widths and depths to accommodate differently gauged wire,” and the wire “does not need to b[e] cylindrical in cross section.” Final Act. 7 (citing Braunwart, paras. 16, 20). The Examiner also finds that a planar sheet was known in the art, as evidenced by Meyer. See id. at 7—8. As discussed supra, the Examiner determines that it would have been obvious to one of ordinary skill in the art to use a planar sheet in Braunwart’s groove in place of wire because the proposed modification would be aesthetic and would not alter form, function, or use of Braunwart’s device. See id. at 8. Appellants do not specifically address, much less point to any defect in, the Examiner’s reasoning. The modification proposed by the Examiner is nothing more than the simple substitution of one known element for another or the mere application of a known technique to a piece 12 Appeal 2017-000445 Application 12/801,508 of prior art ready for the improvement. See KSR, 550 U.S. at 417 (noting that such modifications are obvious where they do no more than yield a predictable result). Moreover, Appellants do not identify, nor do we discern, any knowledge relied upon by the Examiner that was gleaned only from Appellants’ disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, and, accordingly, Appellants’ assertion of hindsight is unsupported. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Thus, we do not agree with Appellants that the Examiner’s rejection “use[s] the claimed invention as an instruction manual or ‘template’ to piece together the teachings of the prior art.” Appeal Br. 30 (emphasis omitted). For the above reasons, Appellants’ arguments do not apprise us of error in the Examiner’s determination that the subject matter of claim 42 would have been obvious. Accordingly, we sustain the rejection of claim 42 as unpatentable over Braunwart and Meyer. Rejection IV— Obviousness based on Braunwart To the extent that the arguments presented on pages 29—32 of the Appeal Brief (i.e., teaching away, hindsight using Appellants’ invention as a template, no motivation, no articulated reasoning) apply to the rejection of claims 43—46, these arguments do not persuade us of error in the rejection for the same reasons that they are not persuasive with respect to the rejection of claim 42, as discussed supra. We address Appellants’ additional arguments for each of claims 43 46 infra. 13 Appeal 2017-000445 Application 12/801,508 Claim 43 The Examiner determines “that it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a rope, such as a ‘stranded cord[,’] as optionally taught by Braunwart.” Final Act. 8; see also Braun wart, para. 20. Appellants argue that “Braunwart doesn’t want to use metal rope ‘thereby reducing both the cost and weight of the mount.’” Appeal Br. 35 (emphasis omitted) (quoting Braunwart, para. 14). Appellants also assert that “precious metals in form of metal rope are known in the art — but the use of metal rope in the groove is not known in the art as prove [n] by all the Examiner references.” Id. (emphasis omitted). These arguments are not convincing. Braunwart discloses that, “[a]s a further example, the use of a slender wire to mount the stone may reduce the amount of precious metal or other material required to secure the stone, thereby reducing both the cost and weight of the mount.” Braunwart, para. 14. The fact that Braunwart discloses an example embodiment using a slender wire to reduce cost and weight does not establish that one of ordinary skill in the art would have no reason to use rope in place of wire as proposed by the Examiner. Appellants do not specifically address, much less point to any defect in, the reasoning articulated by the Examiner for the conclusion of obviousness. Moreover, to the extent that Appellants appear to insist that the prior art must provide some explicit teaching, suggestion, or motivation to use metal rope in the groove of Braunwart, this argument is not persuasive of error here for the same reasons, discussed supra, that the similar argument (see Appeal Br. 34) asserted with respect to claim 42 is not persuasive. See also KSR, 550 U.S. at 419 (stating that a rigid insistence on teaching, suggestion, or motivation 14 Appeal 2017-000445 Application 12/801,508 is incompatible with its precedent concerning obviousness). Accordingly, Appellants do not apprise us of error in the rejection of claim 43 as unpatentable over Braunwart, which we, thus, sustain. Claim 44 The Examiner determines “that it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a chain, as known to hang the jewelry article from (figures 7d, 7k) and continue it around in place of the wire as taught by Braunwart.” Final Act. 8. Appellants argue that Braunwart’s chain is used only to suspend the stone and “there is no motivation for one of ordinary skill in the art to ‘continue it around in place of the wire’ because all [of] Braunwart’s stones have clean periphery of the face.” Appeal Br. 35 (emphasis omitted). According to Appellants, “precious metals in the form of a chain are known in the art but the use of chain in the groove is not known in the art as prove[n] by all Examiner references.” Id. (emphasis omitted). This line of argument is not persuasive of error in the rejection of claim 44 for the same reasons, discussed supra, that Appellants’ similar arguments (see Appeal Br. 34, 35) presented for patentability of claims 42 and 43 are not persuasive. Accordingly, Appellants do not apprise us of error in the rejection of claim 44 as unpatentable over Braunwart, which we, thus, sustain. Claim 45 In the rejection of claim 45, the Examiner determines “that it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a hollow wire (tube), in order to save on metal [0014] as desired by Braunwart.” Final Act. 8. The Examiner explains that, “by 15 Appeal 2017-000445 Application 12/801,508 hollowing out the known wire used by Braunwart, the article would not alter the form, function or use of the disclosed Braunwart device.” Id. Appellants acknowledge that “precious metals in the form of a tube are known in the art,” but Appellants argue that “the use of tube in the groove is not known in the art as prove[n] by all Examiner references.” Appeal Br. 36 (emphasis omitted). We do not find this argument persuasive for the same reasons, discussed supra, that Appellants’ similar arguments (see Appeal Br. 34, 35) asserted for patentability of claims 42 44 are not persuasive. Accordingly, Appellants do not apprise us of error in the rejection of claim 45 as unpatentable over Braunwart, which we, thus, sustain. Claim 46 The Examiner explains that Appellants “claim[] ‘mesh’ but do[] not disclose any examples as to what this material is.” Final Act. 9. The Examiner interprets mesh as “a type of chain,” and, therefore, refers to the rejection of claim 44. Id.', see also id. at 8 (the Examiner determining “that it would have been obvious to one of ordinary skill in the art at the time of the invention to apply a chain, as known to hang the jewelry article from (figures 7d, 7k [of Braunwart]) and continue it around in place of the wire as taught by Braunwart”). Appellants argue that “the rejection is deficient in that it offers nothing more than a merely conclusory statement of a hypothetical [based on] the Examiner’s assumptions, but without asserting any reasoning, much less an ‘articulated reasoning with some rational underpinning’ as to why it would be obvious to combine those elements.” Appeal Br. 36 (emphasis omitted). According to Appellants, “precious metals in the form of a mesh 16 Appeal 2017-000445 Application 12/801,508 are known in the art — but the use of mesh in the groove is not known in the art as prove[n] by all Examiner references.” Id. These arguments are not persuasive of error for the same reasons, discussed supra, that Appellants’ similar arguments (see Appeal Br. 34, 35) asserted for claims 42 45 are not persuasive. Moreover, Appellants’ Specification does not define the term “mesh,” and Appellants do not provide any evidence or explanation as to why the Examiner errs in interpreting a chain as reading on the claimed mesh. Accordingly, Appellants do not apprise us of error in the rejection of claim 46 as unpatentable over Braunwart, which we, thus, sustain. DECISION The Examiner’s decision rejecting claims 7 and 42-46 under 35 U.S.C. § 112, claim 7 under 35 U.S.C. § 102(b), and claims 42-46 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 17 Copy with citationCopy as parenthetical citation