95001542 (P.T.A.B. Apr. 22, 2013)

Ex Parte 7,571,060 et al

Patent Trial and Appeal BoardApr 22, 2013

95001542 (P.T.A.B. Apr. 22, 2013)

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. 95/001,542 02/09/2011 7,571,060 WAT0151 9737 29585 7590 04/22/2013 DLA PIPER US LLP 555 MISSION STREET SUITE 2400 SAN FRANCISCO, CA 94105-2933 EXAMINER NASSER, ROBERT L ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/22/2013 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 ____________ GARRY IAN HOLLOWAY Requester and Appellant v. GEMOLOGICAL INSTITUTE OF AMERICA, INC. Patent Owner and Respondent ____________ Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 2 Appellant appeals the Examiner’s decision not to reject claims 1-18 under 35 U.S.C. §§ 134 and 315 (2002). We have jurisdiction under 35 U.S.C. §§ 134 and 315 (2002). STATEMENT OF THE CASE This proceeding arose from a request by Garry Ian Holloway for an inter partes reexamination of U.S. Patent 7,571,060 B2, titled “System and Method for Gemstone Cut Grading,” and issued to Troy Blodgett, Ronald Geurts, Al Gilbertson, Barak Green, T. Scott Hemphill, and Tom Moses on Aug. 4, 2009 (the ‘060 patent). The ‘060 patent describes grading of gemstones (col. 1, ll. 6-7). Claim 1 reads as follows: 1. A method for grading the cut of a physical or virtual gemstone, comprising receiving cut proportions for the gemstone; obtaining scores for a plurality of cut score components, including accessing prediction tables from which scores for designated ones of the plurality of cut score components can be obtained, and in which each of the designated cut score components has an associated range of possible scores, wherein, for a particular designated cut score component, the possible scores are associated with corresponding ranges of cut proportions, and the corresponding ranges are based upon theoretically derived scores combined with empirically derived boundaries or thresholds, wherein the theoretically derived scores have been determined for possible cut proportions for the particular designated cut score component, and the boundaries or Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 3 thresholds have been set by statistical analysis of observations of the particular designated cut score component; applying the received cut proportions to the accessed prediction tables to obtain corresponding scores for the designated cut score components; and outputting the cut grade reports for the gemstone. Appellant appeals the Examiner’s refusal to adopt the following rejections: 1) Claims 1-14 under 35 U.S.C. § 102(b) as anticipated by US Patent No. 7,251,619 B2 (“Holloway”); 2) Claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over Holloway; 3) Claims 1, 3, 6, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Holloway and David M. Lane, Pearson’s Correlation and Computing Pearson’s Correlation Coefficient, 2002 (“Lane”) or Duncan Cramer, Basic Statistics for Social Research, Minitab Inc., 1997 (“Cramer”); 4) Claims 15-17 under 35 U.S.C. § 103(a) as unpatentable over Holloway and American Gem Society, Diamond Grading Standards, 1999 (“AGS”). ISSUE Did the Examiner err in refusing to adopt the proposed rejections of claims 1-18? Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 4 PRINCIPLES OF LAW The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17- 18 (1966). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). ANALYSIS Claim 1 recites cut components associated with “ranges of cut proportions” that are based, in part, on “empirically derived boundaries or thresholds” that “have been set by statistical analysis of observations of the particular designated cut score component[.]” Appellant states that Holloway discloses empirically derived boundaries or thresholds (App. Br. 6, citing Holloway at col. 4, l. 53 – col. 5, l. 42). Holloway discloses performing “virtual diamond analysis” (col. 4, l. 39) in which “the range chosen was for table sizes between 54% and 65% . . . pavilion angles between 39.5o and 43o . . . [and] crown angles between 28o and 40o” (col. 4, ll. 48-52). Holloway also discloses diamond charts “. . . with varying crown and pavilion angles” (col. 5, ll. 15-16; 23-24; 31-32; Figs. 2-5). Hence, Appellant appears to equate Holloway’s ranges of values of table sizes, pavilion angles, and/or crown angles with the claimed “ranges of cut proportions.” Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 5 The Examiner states that Holloway fails to disclose or suggest “that statistical analysis is used to derive the boundaries or thresholds” (RAN 6) on which the corresponding ranges of cut proportions are based. Respondent concurs with the Examiner (Resp. Br. 5-6, 10). As discussed above, Holloway discloses one example in which specific ranges were chosen for each of table sizes, pavilion angles, and crown angles (col. 4, ll. 48-52). We agree that the specific ranges are associated with boundaries or thresholds (e.g., table sizes between 54% and 65%). However, Appellant does not sufficiently demonstrate how Holloway derives the boundaries or thresholds, much less that Holloway sets the boundaries or thresholds by statistical analysis of observations of a particular designated cut score, as recited in claim 1. Appellant argues that Holloway discloses that “cross-correlation was performed by comparing diamonds with the same score from different areas on each grid . . .” and that results from this process are “confirmed by showing actual diamonds . . . to . . . observers” (App. Br. 9). Appellant also argues that Holloway discloses “an analysis of data obtained during the collection stage” (id.). However, even assuming Appellant to be correct that “cross-correlation” involves some form of statistical analysis and that Holloway discloses analyzing data that were obtained during a collection stage, Appellant does not demonstrate that Holloway also discloses that such “cross-correlation” or analysis is utilized to set the boundaries or thresholds (i.e., the ranges of table sizes, pavilion angles, and/or crown angles) as required by claim 1. Instead, Holloway appears to disclose that the boundaries or thresholds of the cut components (i.e., table sizes, pavilion Appeal 2013-003140 Reexamination Control 95/001,542 Patent 7,571,060 B2 6 angles, and/or crown angles) have already been set (see, e.g., col. 4, ll. 46-52 and Figs. 2-5) prior to either “cross-correlation” or showing actual diamonds to observers (col. 5, ll. 8-13). Appellant does not rely on Lane, Cramer, or AGS to make up for the deficits of Holloway. Claim 12 recites similar features as claim 1. Dependent claims 2-11 and 13-18 depend from claim 1 or claim 12. CONCLUSION The Examiner did not err in refusing to adopt the proposed rejections of claims 1-18. DECISION The Examiner’s decision not to reject claims 1-14 under 35 U.S.C. § 102(b) as anticipated by Holloway; claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over Holloway; claims 1, 3, 6, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Holloway and Lane or Cramer; and claims 15- 17 under 35 U.S.C. § 103(a) as unpatentable over Holloway and AGS is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. AFFIRMED