H.K. Designs Inc.Download PDFPatent Trials and Appeals BoardJun 9, 20212021000160 (P.T.A.B. Jun. 9, 2021) 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. 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. Appeal 2021-000160 Application 16/243,984 2 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; Appeal 2021-000160 Application 16/243,984 3 [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. Appeal 2021-000160 Application 16/243,984 4 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. Appeal 2021-000160 Application 16/243,984 5 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. Appeal 2021-000160 Application 16/243,984 6 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.” Appeal 2021-000160 Application 16/243,984 7 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 Appeal 2021-000160 Application 16/243,984 8 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 Appeal 2021-000160 Application 16/243,984 9 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. Appeal 2021-000160 Application 16/243,984 10 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). 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