Giovanna Cantoni

Patent Trials and Appeals Board

Dec 18, 2020

2020003754 (P.T.A.B. Dec. 18, 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.
15/305,370 10/20/2016 Giovanna Cantoni IPA40USA 8607
270 7590 12/18/2020
HOWSON & HOWSON LLP
325 Sentry Parkway East, Five Sentry East
Suite 160
Blue Bell, PA 19422
EXAMINER
TRAVERS, MATTHEW P
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
ckodroff@howsoniplaw.com
docketing@howsoniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIOVANNA CANTONI

Appeal 2020-003754
Application 15/305,370
Technology Center 3700
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6, 8, 9, 15, and 17–20. 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 Giovanna
Cantoni. Appeal Br. 2.
Appeal 2020-003754
Application 15/305,370

2
BACKGROUND
The Specification discloses that “the present invention relates to a
method for manufacturing an ornament made of precious metals, as well as
an ornament manufactured thereby.” Spec. 1, ll. 5–6.

REPRESENTATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A method for manufacturing an ornament made of
precious metal, comprising:
- providing a sheet or plate or foil of pure precious metal
with a fineness equal to or greater than 999 parts per thousand;
- tracing the profile of a desired shape;
- cutting the sheet or plate or foil according to the profile
by using a hacksaw in order to obtain the ornament having the
desired shape;
wherein the pure precious metal is pure gold and wherein
said sheet or plate or foil has a thickness between 0.40 and 0.60
mm;
wherein the sheet, plate or foil is obtained by:
- melting the precious metal in the crucible and
successively casting in a mold;
- rolling the metal thus obtained in a rolling
machine;
- eliminating irregularities present in the sheet, plate
or foil, by means of a new passage through the rolling
machine, but in a reverse direction and by processing with
cross-strokes;
and wherein the method further comprises, after cutting
the sheet or plate or foil according to the profile, glazing the
ornament.
Appeal Br. 18.
Appeal 2020-003754
Application 15/305,370

3
REJECTIONS
1. The Examiner rejects claims 1, 6, 8, 9, 15, and 17–20 under 35 U.S.C.
§ 112(b) as indefinite.
2. The Examiner rejects claims 1, 6, 8, 9, 15, and 17–20 under 35 U.S.C.
§ 103 as unpatentable over Crowe2 in view of Engraving School3 and
Appellant’s Admitted Prior Art (“AAPA”).
DISCUSSION
Indefiniteness
The Examiner finds that the limitation “the crucible” in claim 1 lacks
antecedent basis. Final Act. 2. “Appellant acknowledges and agrees.”
Appeal Br. 4. We also agree, and thus we sustain this rejection.
Obviousness
We are persuaded of error in the rejection of independent claim 1 as
obvious, as discussed below.
With respect to claim 1, the Examiner finds that Crowe discloses a
method for manufacturing an ornament made of precious metal including the
steps of providing a sheet or plate of precious metal; tracing a profile of a

2 The Examiner relies on the following as a single reference:
Crowe, Ben; basic inlay technique part 1 - marking out and cutting out
a new guitar inlay; published 9/16/2012; Crimson Custom Guitars;
https://www.youtube.com/watch?v=KW9tiZOpupU;
Crowe, Ben; basic inlay technique part 2 - recessing the cavity and
gluing in the new guitar inlay; published 9/24/2012; Crimson Custom
Guitars;
https://www.youtube.com/watch?annotation_id=annotation_516436&feature
=iv&src_vid=KW9tiZOppU&v=ACHki_NlsTM
3 How to make gold wire and sheet for inlay; Available on line 9/5/2013;
Engraving School; http://www.engravingschool.com/private/gold-wire.htm
Appeal 2020-003754
Application 15/305,370

4
desired shape, and cutting the sheet or plate of metal according to the profile
with a hacksaw. Final Act. 3. The Examiner acknowledges that Crowe does
not disclose the purity of the metal used, stating only that it is solid silver.
Id. However, the Examiner relies on Engraving School as teaching the use
of a pure precious metal sheet of 24k gold for an inlay because it is easier to
work with a pure metal than a non-pure precious metal. Id. The Examiner
further finds and determines:
Engraving School further teaches melting the precious
metal in a crucible and rolling it to thickness, but not by the
specific steps claimed. However, Applicant admits that these
steps for rolling are known per se (page 5, line 34 to page 6,
line 6) and thus they would have been obvious to one of ordinary
skill as a known means for obtaining metal sheets, especially in
view of the general direction offered by Engraving School.
Id. at 4.
The key to supporting a prima facie conclusion of obviousness
under 35 U.S.C. § 103 is the clear articulation of the reason why the claimed
invention would have been obvious. The Court in KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) indicated that the analysis supporting
a rejection under 35 U.S.C. § 103 should be made explicit. The Federal
Circuit has stated that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be 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, we agree with Appellant that the rejection lacks evidence to
support the conclusion that the proposed combination would have been
obvious. See, e.g., Appeal Br. 13–14. Crowe is a video directed to creating
Appeal 2020-003754
Application 15/305,370

5
an inlay made of metal for a guitar. Crowe describes the process as using
“solid silver stock.” See Crowe, description on website. In the video, the
material is described as “silver.” Id. at 1:56. There is no further description
regarding the specific material used or what other materials may be suitable
in the process depicted. Engraving School is a website that describes “[h]ow
to make gold wire and sheet for inlay.” Engraving School 1. Engraving
School describes a process in which 24k gold is used to create a sheet for an
inlay, and Engraving School discloses that “24k is pure and much easier to
work with than the lower karat golds.” Id. at 1–2. Engraving School does
not provide further explanation as to how 24k gold may be “easier to work
with.” With respect to AAPA, the Examiner relies on a statement in
Appellant’s Specification stating:
The sheet, plate or foil 1 is obtained in a per se known
manner by:
- melting the precious metal in the crucible and
successively casting in a mold;
- rolling the metal thus obtained in a rolling machine;
thanks to rolling, the metal becomes "green" and therefore harder
and less ductile and malleable;
- eliminating irregularities present in the sheet, plate or
foil, by means of a new passage through the rolling machine, but
in a reverse direction and by processing with cross-strokes.
Spec. ¶ 5–6.
We find that the Examiner has not provided sufficient evidence or
explanation to show that the claimed method would have been obvious in
view of the limited disclosure provided in the references relied upon. For
example, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art to substitute pure 24k gold into the method of Crowe
because it is “easier to work with than non-pure precious metal.” Final
Appeal 2020-003754
Application 15/305,370

6
Act. 3. As noted, these references do not provide substantial disclosure
regarding the characteristics of the materials used and why one material may
be more suitable than another. Although Engraving School states that 24k
gold is easier to work with than lower karat golds, Engraving School
provides no further disclosure on this point. Also, the Examiner points to no
disclosure in Crowe regarding the characteristics of suitable metals for the
process shown, other than the use of what is described as “solid silver
stock.” Without further disclosure or explanation, we are not persuaded that
one of ordinary skill in the art would have had a reason to use gold, with the
purity required by claim 1, in the method of Crowe or that one of ordinary
skill in the art would have had a reasonable expectation of success in
implementing such a combination.
Further, to the extent the Examiner relies on AAPA, we find that the
Examiner’s determination in this regard also lacks suitable supporting
evidence. Although the Specification discloses that sheets of metal may be
obtained from known methods, the Examiner must still provide an
articulated reasoning with rational underpinnings to support the conclusion
that it would have been obvious to use this known method in combination
with the prior art. The fact that such a method is known, per se, is not
sufficient, and the Examiner has not provided a reason why a person of
ordinary skill in the art would have found it obvious to use the claimed
method for obtaining a sheet in the proposed combination of Crowe and
Engraving School.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1. We are also persuaded of error in the rejection of dependent
Appeal 2020-003754
Application 15/305,370

7
claims 6, 8, 9, 15, and 17–20 for the same reasons. Accordingly, we do not
sustain the obviousness rejection.
CONCLUSION
We AFFIRM the rejection of claims 1, 6, 8, 9, 15, and 17–20 as
indefinite. We REVERSE the rejection of claims 1, 6, 8, 9, 15, and 17–20 as
obvious.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 8, 9, 15,
17–20
112(b) Indefiniteness 1, 6, 8, 9,
15, 17–20

1, 6, 8, 9, 15,
17–20
103 Crowe, Engraving
School, AAPA
1, 6, 8, 9,
15, 17–
20
Overall
Outcome
1, 6, 8, 9,
15, 17–20

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