D. Swarovski KG

Patent Trials and Appeals Board

Apr 28, 2020

15154241 - (D) (P.T.A.B. Apr. 28, 2020)

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.
15/154,241 05/13/2016 Christian LOINGER P43096US/KEL058NA 1010
29673 7590 04/28/2020
STEVENS & SHOWALTER LLP
7019 CORPORATE WAY
DAYTON, OH 45459-4238
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
04/28/2020 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):
PTO@sspatlaw.com
ssllp@speakeasy.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTIAN LOINGER
____________

Appeal 2019-006133
Application 15/154,241
Technology Center 3600
____________

Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 42, 43, and 46–48 as unpatentable under 35 U.S.C.
§ 112(b) as indefinite and of claims 21–23, 25, 32, 33, 37, 38, 40, 42, 43,
and 45–48 as unpatentable under 35 U.S.C. § 103(a) over Katz (US 2005/
0050921 A1, pub. Mar. 10, 2005), Johnston (US 5,072,549, iss. Dec. 17,
1991), and Blasbichler (US 2012/0079853 A1, pub. Apr. 5, 2012). 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(a). Appellant identifies D. Swarovski KG as the Applicant
and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention relates to cut gemstones. Spec. 1. Claim 21,
reproduced below, is illustrative of the subject matter on appeal.
21. A gem giving the optical impression of a star,
comprising:
a girdle at which the gem has a largest transverse
dimension;
a pavilion adjoining the girdle from below the girdle, the
pavilion having pavilion facets; and
a crown adjoining the girdle from above the girdle, the
crown having:
a flat table;
a first set of crown facets, each of the first set of crown
facets having a broadside which adjoins the flat table;
a second set of crown facets, each of the second set of
crown facets having a broadside which adjoins the girdle,
wherein each of the first set of crown facets is inclined
with respect to a girdle plane at an angle between 20.5° and
24.5o,
wherein each of the second set of crown facets is inclined
with respect to the girdle plane at an angle between 31° and
37°,
wherein all of the crown facets of the gem belong to one of
the first or second type of crown facets,
wherein, in plan view, the girdle has a pentagonal shape,
and
wherein the pavilion facets comprise a first set of pavilion
facets and a second set of pavilion facets, wherein each of the
first set of pavilion facets tapers towards the girdle and has an
angle γ of 43.5° ± 3° relative to the girdle plane, and wherein
each of the second set of pavilion facets, which with a wide side
adjoins the girdle, has an angle δ of 50° ± 3° relative to the
girdle plane.
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OPINION
Indefiniteness
Claim 42
Claim 42 depends from claim 37 which, in turn, depends from
claim 21. Claims App. Claim 42 adds limitations related to: (1) sets of
crown facets alternating around the perimeter of the crown; and (2) the first
and second sets of crown facets being five each in number, thereby giving
the optical impression of a five-ray star shape. Id.
The Examiner maintains that claim 21 discloses all of the structural
features of claim 42, such that it is unclear what additional structural feature
is imparted in claim 42 to achieve the claimed optical impression. Final
Act. 5.
Appellant argues that it is permissible to define an invention in
functional terms. Appeal Br. 11. Appellant argues that two recited sets of
alternating crown facets further limits the structure of claim 37. Id. In
response, the Examiner reiterates that it is unclear how claim 42 is
structurally limited from claim 21 upon which it depends. Ans. 3. In reply,
Appellant reiterates that it is permissible to recite claim limitations in
functional terms. Reply Br. 3. Appellant directs our attention to
paragraphs 16, 18, 46, and 48 and all of the drawings submitted with its
disclosure as providing sufficient information from which one skilled in the
art would be able to correspond the functions recited in claim 42 with the
structure of claim 42. Id.
Claim 21 recites a gem that gives the optical impression of a star
comprising, in pertinent part: (1) a first set of crown facets that have a
broadside that adjoins the flat table; (2) a second set of crown facets that
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have a broadside that adjoins the girdle; and (3) a girdle that has a
pentagonal shape. Claims App. We do not necessarily disagree with
Appellant that it is permissible to recite claim limitations in functional terms.
See In re Swinehart, 439 F.2d 210, 212 (CCPA 1971) (explaining that there
is nothing intrinsically wrong with defining something by what it does rather
than what it is). However, claim 21 explicitly recites a pentagon shaped
girdle and then recites two sets of facets – one with broadsides adjacent the
table and the other with broadsides adjacent the girdle. Claims App.
Application of elementary principles of geometry require that each of the
two sets have five facets and that the facets alternate with each other.
We have reviewed paragraphs 16, 18, 46, and 48 of Appellant’s
Specification. Paragraph 16 merely recites the crown facet angles of
claim 21. Spec. ¶ 16. Paragraph 18 merely recites the pavilion facet angles
of claim 21. Id. ¶ 18. Paragraphs 46 and 48 describe optical properties of
the invention, but there is no indication that such optical properties arise
from anything other than the structure recited in claim 21. Id. ¶¶ 46, 48.
Appellant fails to convincingly explain how the recitations of claim 42
accomplish anything more than just providing an alternative and duplicative
means of expression for the same subject matter as that of claim 21. If there
is a difference (we don’t think that there is a difference), Appellant’s vague
and nebulous explanation as to what that difference is does not explain what
that is.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. See In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). However, the language of
the claims, although overlapping and duplicative, is sufficiently clear as to
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what they are directed to.2 Therefore, we reverse the Examiner’s
Section 112 indefiniteness rejection of claim 42.
Claims 43, 46, 47, and 48
These claims depend, directly or indirectly, from claim 21. Claims
App. The Examiner considers claims 43, 46, 47,3 and 48 indefinite because
the limitations added by each of these claims only recite optical properties.
Final Act. 4–5. The Examiner finds that Appellant fails to identify any
additional structure that differentiates the scope of these claims from
claim 21. Id. at 5. According to the Examiner, “the structure of the stone of
claim 21 creates the optical impression as claimed, because the stone of
claim 21 has all the structure required to create this optical impression.” Id.
Appellant argues that the Specification and drawings provides written
description support for the limitations in claims 43, 46, and 48. Appeal
Br. 11–12. However, Appellant fails to explain how the claimed optical
properties result from structure that narrows the scope of the claims from
independent claim 21 from which they depend. Stated differently, Appellant
fails to explain how the optical properties recited in these claims would not
also result from the structure recited in claim 21.

2 We decline to exercise our discretion to enter a new ground of rejection of
claim 42 under 35 U.S.C. § 112(d). See 37 C.F.R. § 41.50(b); see also
Manual of Patent Examining Procedure (MPEP) § 1213.02.
3 The Examiner does not explicitly mention claim 47 under this ground of
rejection. Final Act. 4–5. We deem this omission to be a mere inadvertent
typographical error as claim 47 would necessarily be rendered indefinite by
virtue of its dependency from claims 21 and 46. Claims App.
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Thus, the issues raised as to these claims are substantially the same as
that of claim 42 discussed above and, thus, we reverse the Examiner’s
Section 112 indefiniteness rejection of claims 43, 46, 47, and 48.
Unpatentability of
Claims 21–23, 25, 32, 33, 37, 38, 40, 42, 43, and 45–48
over Katz, Johnston, and Blasbichler
Claims 21–23, 25, 32–33, 37, 38, 40, 42, 45, and 48
Appellant argues claims 21–23, 25, 32–33, 37, 38, 40, 42, 45, and 48
as a group. Appeal Br. 12–15. We select claim 21 as representative. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Katz discloses the invention substantially as
claimed except for the crown facet angles and the pentagonal shape. Final
Act. 6. The Examiner relies on Johnston as disclosing a pentagonal girdle
that produces the optical impression of a star. Id. The Examiner relies on
Blasbichler as disclosing the crown facet angle. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to combine the teachings of the
references to achieve the claimed invention. Id. 6–7. According to the
Examiner, a person of ordinary skill in the art would have done this to create
a star impression, it would have been obvious to try various facet angles
taught by other references, and changing the shape is a matter of design
choice. Id.
Appellant does not refute the Examiner’s findings of fact with respect
to the references taken individually. Instead, Appellant argues the
combinability of the references. Appeal Br. 12–15.
[T]he invention lies in precise combinations of angles of facets
as recited in claim 21, and that the disclosure of much broader
ranges of angles, not in the claimed combinations, from a
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variety of separate prior art documents, would not have led a
person skilled in the art to the present invention. Indeed, the
prior art does not provide any teaching as to which precise
angles to use, and in combination with which other angles.
Id. at 13. Appellant further argues that the prior art does not provide a
reason to modify facet angles to decrease the light return of some facets so
as to give the optical impression of a star. Id. at 14, Reply Br. 5.
The Examiner responds by noting that the rejection involves only two
proposed modifications of Katz: (1) a pentagonal girdle; and (2) a reduced
crown facet angle. Ans. 4. The Examiner further explains that the known
range of angles disclosed in Katz and Blasbichler is such that it would have
been obvious to try the Blasbichler angle on modified Katz as a matter of
routine optimization. Id. at 5.
Katz is directed to a cut gemstone that has a crown, a girdle and a
pavilion. Katz, Abstract. The crown of Katz has a flat table shaped as an
equilateral polygon. Id. Although Katz specifies a certain range of crown
facet angles, Katz explains that it would have been obvious to one skilled in
the art that other angles could be used. Id. ¶ 34. Johnston discloses a
pentagon shaped gem with cut facets that cause a five-legged star to appear
beneath the gem table. Johnson, Abstract. Blasbichler discloses a gemstone
that features a crown angle between 32.8o and 33.0o. Blasbichler, ¶ 7. In an
alternative embodiment, the angle varies between 20.2o and 20.4o. Id. ¶ 20.
Appellant’s arguments are not persuasive of Examiner error. Johnston
demonstrates that it was known in the art to create a cut gemstone with a
pentagonal shaped girdle to create a five-sided star shape. Johnson, col. 2,
ll. 12–17. We find persuasive the Examiner’s explanation that angles and
facets are selected to create a particular light/optical pattern that conforms to
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a particular shape. Ans. 5–6 (“this a known reason to change and modify
angles of a cut gemstone”). The prior art discloses a range of facet angles
that is broader than the claimed range. Id. at 6. Katz expressly contemplates
that other angles could be used. Katz ¶ 34. Given the teachings of the prior
art, we agree with the Examiner that arriving at the claimed facet angles is
merely a matter of routine optimization and design choice. In re Applied
Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012), quoting In re Aller,
220 F.2d 454, 456 (CCPA 1955) (“Where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation”).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly we sustain the Examiner’s unpatentability rejection of
claims 21–23, 25, 32–33, 37, 38, 40, 42, 45, and 48.
Claims 43 and 46
As previously discussed in connection with the Section 112
indefiniteness rejection of these two claims, claims 43 and 46, as best
understood, are not different in scope from that of the claims from which
they depend. Consequently, we affirm the Examiner’s Section 103
unpatentability rejection of 43 and 46 for the same reasons discussed above
in connection with Section 103 rejection of claim 21.
Claim 47
Claim 47 depends from claim 46 and adds the limitation: “wherein
each of the first set of crown facets adjoin the girdle with a point and each of
the first set of pavilion facets adjoin the girdle with a point.” Claims App.
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Appellant argues that the pavilion facet limitation is not met by Katz
because facets 34 do not extend to girdle 50. Appeal Br. 17.
In response, the Examiner states that the pavilion facet limitation is
met by Blasbichler and that it would have been obvious to apply such
teaching to Katz as a simple matter of shrinking facet 32. Ans. 7. In reply,
Appellant argues that the Examiner’s Answer is based on impermissible
hindsight. Reply Br. 7.
Appellant’s argument is not persuasive. Our previous comments
regarding routine optimization and design choice are equally applicable
here, thereby obviating Appellant’s hindsight argument. In re Cree, Inc.,
818 F.3d 694, 702 n.3 (Fed. Cir. 2016). We sustain the Examiner’s Section
103 unpatentability rejection of claim 47.
CONCLUSION
Claims
Rejected
§ References/Basis Aff’d Rev’d
42, 43, 46-48 112 Indefinite 42, 43, 46-48
21-23, 25, 32,
33, 37, 38, 40,
42, 43, 45–48
103 Katz, Johnston,
Blasbichler
21-23, 25, 32,
33, 37, 38, 40,
42, 43, 45-48

Overall
Outcome
21-23, 25, 32,
33, 37, 38, 40,
42, 43, 45-48

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).
AFFIRMED