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Patent Trials and Appeals Board

Nov 7, 2019

15179437 - (D) (P.T.A.B. Nov. 7, 2019)

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.
15/179,437 06/10/2016 CHARLES KURT ARTINGER 17996-18 9343
76656 7590 11/07/2019
Patent Docket Department
Armstrong Teasdale LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHARLES KURT ARTINGER
__________

Appeal 2019-003339
Application 15/179,437
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 4, 6, 7, 9, 10, 12–14, 16, 17, and
19–212 under 35 U.S.C. § 103 as unpatentable over Dholakiya (US

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 Replacement Services,
LLC. Appeal Brief (“Appeal Br.”) 1, filed Dec, 12, 2018.
2 We note that the Examiner incorrectly lists in the header of the rejection
claims 1–4, 6–10, 12–17, and 19–22 as being rejected; whereas, the first page
of the Office Action correctly identifies the claims that are rejected. See Final
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Application 15/179,437

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D687,335 S, issued Aug. 6, 2013) and Karmes (US D728,413 S, issued May
5, 2015). Claims 2, 5, 8, 11, 15, 18, and 22 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to customizable articles
and, more particularly, to customizable jewelry such as rings.” Spec. ¶ 1.
Claims 1, 7, 14, and 21 are independent.
Claims 1 and 14 are illustrative of the claimed subject matter and
recite:
1. A ring comprising:
a shank comprising a pair of opposing side segments and
a bridge that extends between said side segments, said bridge
comprising a top surface; and
a head extending from said shank and comprising an
annular rail configured to support a gemstone thereon, said top
surface oriented to face said annular rail, said head defining a
gemstone pocket and comprising a gallery having a first
framework and a second framework, said first framework
extending from said top surface of said bridge to said rail on a
first side of said annular rail, said second framework extending
from said top surface of said bridge to said rail on a second side
of said annular rail opposite said first side, said annular rail is
supported a distance from said bridge by said first and second
framework, said first framework shaped to define a first
alphanumeric symbol and a second alphanumeric symbol, said
second framework shaped to define a third alphanumeric symbol
and a fourth alphanumeric symbol, wherein said first framework

Office Action (“Final Act.”) 2, dated Aug. 16, 2018; see also id. at 1 (Office
Action Summary).
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and said second framework each comprise an interior surface,
and an exterior surface, wherein a thickness is defined between
said interior surface and said exterior surface, said interior
surfaces cooperate to define a periphery of said pocket, said
alphanumeric symbols extending through the entire thickness of
said framework, wherein each said interior surface has a concave
contour, said alphanumeric symbols each being unitary members
such that said exterior surface extends continuously between said
annular rail and said bridge top surface, wherein said first
alphanumeric symbol is different than said second alphanumeric
symbol, wherein said third alphanumeric symbol is different than
said fourth alphanumeric symbol, and wherein said
alphanumerical symbols are oriented to be read from exterior to
the gemstone pocket.

14. A method of fabricating a ring, said method
comprising:
receiving a customer selection of a first alphanumeric
symbol and a second alphanumeric symbol;
forming a shank including a pair of opposing side
segments and a bridge that extends between said side segments;
and
one of coupling and forming a head on the shank, the head
comprising an annular rail configured to support a gemstone
thereon, the head defining a gemstone pocket and including a
gallery having at least one framework extending from the bridge
to attach to the annular rail, the at least one framework
structurally supporting the annular rail at a spaced distance from
the bridge, the at least one framework shaped to define the first
alphanumeric symbol and the second alphanumeric symbol
based on the customer selection, wherein the framework has an
interior surface having a concave contour, an exterior surface,
and a thickness between the interior surface and the exterior
surface such that the interior surface defines a periphery of the
pocket and such that the alphanumeric symbols extend through
the entire thickness of the framework.

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ANALYSIS
Claims 1, 3, 4, 6, 7, 9, 10, 12, 13, and 21
Appellant does not offer arguments in favor of independent claims 7
or 21, or dependent claims 3, 4, 6, 9, 10, 12, and 13 separate from those
presented for independent claim 1. See Appeal Br. 5–16. We select claim 1
as the representative claim, and claims 3, 4, 6, 7, 9, 10, 12, 13, and 21 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Dholakiya discloses a ring
including: (1) a shank comprising a pair of opposing side segments and a
bridge that extends between the side segments, the bridge comprising a top
surface; and (2) a head extending from the shank and comprising an annular
rail configured to support a gemstone thereon, the top surface of the bridge
oriented to face the annular rail, the head defining a gemstone pocket and
comprising a gallery in which “four frameworks, each extend[] from [the]
top surface of [the] bridge to [the] rail on a first side of [the] annular rail,
[and are] shaped to define one alphanumeric symbol (the symbol shown in
Dholakiya is a ‘U’).” Final Act. 3; see also Dholakiya Figs. 1, 2. The
Examiner acknowledges that “Dholakiya discloses wherein the at least one
framework comprises one alphanumeric symbol but not a second symbol
that is different than the first.” Id. The Examiner, however, finds that
“Karmes discloses a gemstone setting having vertical ‘frameworks’, each in
the shape of multiple alphanumeric symbols.” Id. The Examiner concludes
that it would have been obvious to “use one or more of the known aesthetic
alphanumeric symbols, or any combination of the alphanumeric symbols, of
Karmes in place of the aesthetic alphanumeric symbol of Dholakiya”
because “this is done for the purpose of aesthetics.” Id. at 4 (citing MPEP
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§ 2144.03(I)). The Examiner also notes that “mere duplication of parts has
no patentable significance unless a new and unexpected result is produced,”
that “a user may desire the aesthetic that reflect his or her name, which could
include, one, two, or three, letters in which to achieve this,” and that “these
symbols do not have any function except to be aesthetic.” Final Act. 4–5
(citing MPEP § 2144.04 (VI)(b))
Appellant contends that “the Examiner expresses a conclusion that is
completely unsupported by evidence (i.e., a mere opinion).” Appeal Br. 6;
see also id. at 7 (Appellant contends that “Examiners cannot simply reach
conclusions based on their own understanding or experience––or on their
assessment of what would be basic knowledge or common sense”).
This argument is unpersuasive because Appellant does not explain
what portion of the rejection Appellant considers as the Examiner’s “mere
opinion,” unsupported by evidence. See Ans. 33 (“[The] Examiner notes that
[A]ppellant has not pointed out what features have been omitted by the two .
. . references.”).
Appellant argues that “the Examiner asserts that it would have been
obvious to modify certain features of the cited references to arrive at the
claims of the present application,” but that “the Examiner fails to provide
any motivation within the cited references themselves to support this
conclusion.” Appeal Br. 6.
Appellant’s contention is unpersuasive. The Examiner explains that
the motivation for using “one or more of the known aesthetic alphanumeric
symbols, or any combination of the alphanumeric symbols, of Karmes in

3 Examiner’s Answer (“Ans.”), dated Jan. 24, 2019.
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place of the single alphanumeric symbol of Dholakiya” is “for the purpose
of aesthetics,” i.e., an “aesthetic that reflect his or her name .” Final Act. 4,
5. We also note the Specification discloses that the “first framework 142
and second framework 144 may not be designed to structurally support rail
136 and/or gemstone 106 in other embodiments but, rather, may be designed
to serve only an aesthetic or decorative function.” Spec. ¶ 16 (emphases
added). The Specification further discloses that
[a]lthough frame members 146 (e.g., first frame members 152
and second frame members 154) are shaped and oriented to
define symbols in the form of alphanumeric characters in the
exemplary embodiment, in other embodiments frame members
146 may be shaped and oriented to define any suitable types of
symbols such as, for example, but not limited to logos, inanimate
objects, and/or animals.
Id. at ¶ 19 (emphases added). Thus, the Specification discloses that the
alphanumeric symbols could serve only an aesthetic or decorative function,
thus supporting the Examiner’s motivation or reason for modifying
Dholakiya’s ring.
Appellant contends that Dholakiya does not disclose: (1) “a first
framework extending from a top surface of a bridge to a rail on a first side of
the annular rail”; (2) “a second framework extending from the top surface of
a bridge to a rail on a second side of the annular rail that is opposite the first
side”; (3) “a first framework shaped to define a first alphanumeric symbol
and a second alphanumeric symbol, in combination with a second
framework shaped to define a third alphanumeric symbol and a fourth
alphanumeric symbol”; (4) “first and second frameworks that each include
interior and exterior surfaces, wherein the interior surfaces have a concave
contour and the alphanumeric symbols being unitary members such that the
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exterior surfaces extend continuously between the annular rail and said
bridge top surface”; and (5) “a first alphanumeric symbol as being different
than a second alphanumeric symbol, and a third alphanumeric symbol as
being different than a fourth alphanumeric symbol, wherein the
alphanumerical symbols are oriented to be read from exterior to the
gemstone pocket.” Appeal Br. 8–9; see also Reply Br. 1–3.4
These arguments are unpersuasive. The Examiner annotates Figure 1
of Dholakiya in comparison to Appellant’s Figure 1, which are reproduced
below:

Figure 1 of Dholakiya depicts “a perspective view of a stone setting for a
ring” and Appellant’s Figure 1 depicts “a front view of an exemplary ring.”
Dholakiya Description; Spec. ¶ 6.
In regard to Appellant’s argument (1), as seen in the annotated figure,
the Examiner identifies Dholakiya’s structures that correspond to the
claimed bridge 114, the claimed annular rail 136, and a frame member 146
(which includes the claimed first framework 142). In regard to argument

4 Reply Brief (“Reply Br.”), filed Mar. 25, 2019.
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(2), Dholakiya’s Figure 2 shows a second framework that is on an opposite
side of the first side of the annular rail 136. See Dholakiya, Fig. 2.
Concerning argument (3), the Examiner notes, Appellant has admitted that at
least this structure of Dholakiya’s ring “may have a passing resemblance to a
letter U.” Final Act. 4, Ans. 6 (both citing Appellant’s correspondence of
July 31, 2017 and February 14, 2018). Further, the Examiner relies on
Karmes––rather than Dholakiya––as disclosing “multiple alphanumeric
symbols.” Final Act. 4; see also Ans. 5–6; In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references []. [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.”). As to arguments (4) and (5), Appellant does not address
the rejection as set forth by the Examiner, wherein the Examiner relies on
Karmes’ Figure 3 and further notes that mere “duplication of parts” without
unexpected results and features in relation to the symbols that “do not have
any function except to be aesthetic” have “no patentable significance” in a
utility application. See Final Act. 3–5.
We note Appellant’s assertion that “[t]he claimed ring solves the
particular problem of providing a support structure for an annular rail of a
ring that may be shaped to define desired alphanumeric symbols.” Appeal
Br. 7; see also Reply Br. 2, 5–6. To the extent Appellant is arguing that
Dholakiya does not provide a support structure for an annular rail, this
argument is not persuasive. As seen in the Examiner’s annotated figure,
region 146 is connected to region 136 (i.e., an annular rail) and region 114
(i.e., a bridge); thus, region 146 is a support structure. See Final Act. 4; In re
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Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (“[T]hings patent drawings show
clearly are [not] to be disregarded.”) (emphasis in original).
Appellant argues that “Karmes does not describe nor suggest a shank
that includes a pair of opposing side segments and a bridge that extends
between the side segments,” “a first framework extending from the top
surface of a bridge to a rail on a first side of the annular rail,” “a second
framework extending from the top surface of a bridge to a rail on a second
side of the annular rail that is opposite the first side,” and “alphanumeric
symbols that are unitary members that include an exterior surface extending
continuously between an annular rail and a bridge top surface.” Appeal Br.
9–10.
These arguments are unpersuasive in that they do not address the
rejection as set forth by the Examiner. As noted above, the Examiner relies
on Dholakiya, rather than Karmes, for disclosing these limitations. See Final
Act. 3–5.
Appellant reproduces a portion of Figure 5 of Dholakiya and
annotates a “cylindrical projection” in the figure. Appeal Br. 10. Appellant
argues that because of this cylindrical projection, Dholakiya fails to disclose
a framework extending from the top surface of the bridge. Id.
This argument is unpersuasive because, in effect, Appellant arbitrarily
equates one portion of Dholakiya’s ring as the claimed framework and
another portion as the claimed bridge. Further, claim 1 does not preclude a
“cylindrical projection.” The term “comprising”—recited in the preamble to
claim 1—“is well understood in patent law to mean ‘including but not
limited to.’” Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1319
(Fed. Cir. 2009) (quoting CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d
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1356, 1360 (Fed. Cir. 2007)). Thus, the presence of additional elements in
the prior art does not demonstrate error. See Ans. 5 (The Examiner notes
that “the frameworks of Dholakiya ‘extend from a top surface of a bridge’ as
claimed, and go to the annular rail as claimed” and that “the presence of an
extra aesthetic feature does not preclude Dholakiya from reading on claim
1.”).
Appellant argues that there is a “[d]iscontinuity between each
individual members of the structures” as annotated in Karmes’ Figure 4 and
thus, Karmes does not disclose alphanumeric symbols that are “unitary
members.” Appeal Br. 11.
The Examiner explains that “[A]ppellant seems to be equating ‘being
unitary members’ as being a single alphanumeric character” but “this is not
claimed.” Ans. 5; Appeal Br. 20 (Claims App.); In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied
upon for patentability).5 As such, Appellant does not provide persuasive
evidence or argument apprising us of Examiner error.
Appellant appears to argue that because of the “centrally located
cylindrical projection,” Dholakiya’s ring does not have an “exterior surface
[that] extends continuously between said annular rail and said bridge top
surface,” as claimed. See Appeal Br. 11.

5 We also note the Specification discloses that “[a]lthough all frame members
146 of first framework 142 are integrally formed together as a single-piece,
unitary structure in the exemplary embodiment, at least one frame member
146 may be coupled (e.g., brazed) to at least one other frame member 146 in
any suitable manner in other embodiments,” thus, indicating that there is no
criticality as to whether alphanumeric symbols of a framework are “unitary
members.” See Spec. ¶ 22.
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As the Examiner explains, Dholakiya’s ring includes stones, “which
makes the exterior surface seem non-continuous.” Ans. 5. The Examiner
also notes that Dholakiya’s and Appellant’s own frameworks “are
‘interrupted by the centrally located jewel’ in the same manner.” Ans. 5.
Appellant does not apprise us of Examiner error.
Appellant argues that “[o]ne skilled in the art would realize that any []
change to any other alphanumeric character would require an extensive
redesign of the ring” and that “Dholakiya merely describes a standard
ornamental design long recognized in the art that is not interchangeable to
any other alphanumeric character.” Appeal Br. 12.
This argument is unpersuasive. The Supreme Court has emphasized
that “the [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As noted by the Court in KSR, “[a] person of ordinary skill is also a person
of ordinary creativity, not an automaton.” Id. at 421. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. See also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Nothing in the record here
before us suggests the Examiner’s proposed combination of known prior art
elements according to their known functions would involve more than
routine engineering efforts.
Appellant contends that Dholakiya does not disclose a ring having an
alphanumerical symbol “U” because the region of the ring annotated as
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“146” by the Examiner “is not sufficiently differentiated from the
surrounding structure.” Appeal Br. 12; see also Reply Br. 4.
First, claim 1 does not recite any limitation that precludes the
Examiner’s finding that annotated region 146 of Dholakiya’s ring is an
alphanumerical symbol “U.” Appeal Br. 20 (Claims App.). Second, as the
Examiner notes, Appellant has admitted that at least this structure of
Dholakiya’s ring “may have a passing resemblance to a letter U.” Ans. 6
(citing Appellant’s correspondence of July 31, 2017 and February 14, 2018).
Third, even if Dholakiya does not disclose an alphanumerical symbol “U,”
Karmes clearly discloses frameworks comprising alphanumerical symbols.
Ans. 6.
Appellant argues that “the claimed ring of present application
provides the functional benefit of security and identification not described or
suggested in the cited references.” Appeal Br. 15.
However, we note that claim 1 does not recite “security and
identification” and is drawn to an apparatus rather than a method. Appeal
Br. 20 (Claims App.); In re Self, 671 F.2d at 1348. In addition, the
Examiner notes that Appellant’s concept of “security and identification” is
“the same as including engraving on a ring, which is old and well known in
the art” and “the same as adding initials to bags, clothing, eyeglasses, and
any other accessory” and that “the use of an aesthetic feature for
identification purposes does not preclude the application of MPEP
2144.04(I).” Appellant does not apprise us of Examiner error.
Lastly, Appellant contends that the Examiner engages in
impermissible hindsight reconstruction. Appeal Br. 15–16.
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We are not persuaded of Examiner error, because Appellant has not
made a showing that the Examiner’s rationales (see Final Act. 3–5) were
outside of the knowledge within the level of ordinary skill in the art at the
time the claimed invention was made or were gleaned only from Appellant’s
disclosure.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1. Accordingly, we
sustain the Examiner’s rejection of claim 1 as unpatentable over Dholakiya
and Karmes. We further sustain the rejection of claims 3, 4, 6, 7, 9, 10, 12,
13, and 21, which fall with claim 1.

Claims 14, 16, 17, 19, and 20
Appellant does not offer arguments in favor of dependent claims 16,
17, 19, and 20 separate from those presented for independent claim 14. See
Appeal Br. 16–18. We select claim 14 as the representative claim, and
claims 16, 17, 19, and 20 stand or fall with claim 1.
Appellant contends that “[c]laim 14 is submitted to be patentable over
Dholakiya in view of Karmes for substantially the same reasons as provided
above with respect to Claim 1.” Appeal Br. 16; see also id. at 18 (Appellant
presents similar arguments for claim 14 as those presented above for claim
1). These arguments are unpersuasive for the reasons discussed supra.
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Appellant also contends that neither Dholakiya nor Karmes discloses
the limitation “receiving a customer selection of a first alphanumeric symbol
and a second alphanumeric symbol.” See id. at 17, 18; see also Reply Br. 6.6
This argument is unpersuasive. As the Examiner explains “choosing
the alphanumeric characters or words is on the basis of aesthetics, which
depends on the users.” Ans. 8. Thus, as this feature is disclosed in
Dholakiya and Karmes and discussed supra, Dholakiya and Karmes also
disclose “receiving a customer selection of a first alphanumeric symbol and
a second alphanumeric symbol,” as claimed. Alternatively, we also agree
with the Examiner that “a ring is not engraved until [the engraver is] told
what to engrave; similarly, the letters inserted into Dholakiya depend on
what the user desires” and that “this is old and well known in the art.” Ans.
8. Moreover, although claim 14 is drawn to a method of fabricating a ring
rather than to an apparatus (i.e., a ring) as in claim 1, there are no method
step in claim 14 to “improv[ing] security to the owner by having
alphanumeric symbols that are more difficult to remove from the ring if
stolen without compromising the structural integrity of the ring assembly.”
Appeal Br. 18; see also id. at 22–23 (Claims App.); In re Self, 671 F.2d at
1348.
For these reasons, we are not persuaded the Examiner erred in
rejecting independent claim 14. Accordingly, we sustain the Examiner’s
rejection of claim 14 as unpatentable over Dholakiya and Karmes. We

6 We note that here, claim 14 is drawn to a method of fabricating a ring,
rather than an apparatus (i.e., a ring) as in claim 1. Appeal Br. 20, 22–23
(Claims App.).
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further sustain the rejection of claims 16, 17, 19, and 20, which fall with
claim 14.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6, 7,
9, 10, 12–14,
16, 17, and
19–21
103   Dholakiya and
Karmes
1, 3, 4, 6, 7,
9, 10, 12–
14, 16, 17,
and 19–21

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)(1)(iv).

AFFIRMED