Ex Parte Wcislo et al

Patent Trial and Appeal Board

Jan 13, 2017

12801508 (P.T.A.B. Jan. 13, 2017)

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.
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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
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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
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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
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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,
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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
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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
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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).
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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
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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
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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
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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.
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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
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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
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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
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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
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