TALIA LUXURY GOODS, LTD.

Patent Trials and Appeals Board

Jul 31, 2020

2019004253 (P.T.A.B. Jul. 31, 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.
14/902,597 01/04/2016 Ronen BERKA 88049/3 5516
1912 7590 07/31/2020
AMSTER, ROTHSTEIN & EBENSTEIN LLP
90 PARK AVENUE
NEW YORK, NY 10016
EXAMINER
MORGAN, EMILY M
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
07/31/2020 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
____________

Ex parte RONEN BERKA and TAL MAN

Appeal 2019-004253
Application 14/902,597
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.
DECISION ON APPEAL

The Appellant1 appeals from the Examiner’s rejection of claims 1–4,
6, 7, 10, 13, 18, 19, and 21–28. We REVERSE.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
joint inventors”). “The real party in interest is the assignee Talia Luxury
Goods, Ltd.” (Appeal Br. 3.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). A hearing was
held on July 21, 2020.
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Application 14/902,597

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THE APPELLANT’S INVENTION
The Appellant’s invention relates to “jewelry having interchangeable
decorative elements or segments which can be easily and quickly assembled
and dissembled and/or reconfigured according to the particular preference or
current mood of the wearer.” (Spec. 1, ll. 26–29.)
ILLUSTRATIVE CLAIM
1. A jewelry system comprising:
a) a pendant including:
a plurality of decorative segments, each decorative
segment of the plurality of decorative segments comprising:
a top surface,
a bottom surface, and
an aperture that extends vertically from said top
surface to said bottom surface positioned such that each
aperture aligns substantially coaxially with the other apertures
when said plurality of decorative segments are positioned
adjacent to each other with a top surface of a first decorative
segment positioned adjacent a bottom surface of a second
decorative element such that the top surface is in contact with
the bottom surface and wherein the first decorative element has
a different shape than the second decorative element;
wherein the top surface and the bottom surface of
each of said plurality of decorative segments is essentially flat,
such that when the decorative segments are positioned adjacent
to each other, the pendant has an outer surface that is
substantially continuous across the plurality of decorative
segments; and,
b) a rod extending through the apertures of the plurality
of decorative segments, the rod including:
a first end including a stopper, and
a second end, positioned opposite the first end including
a threading aperture integrally formed through said second end
of said rod,
wherein said rod has a first width smaller than a second
width of each aperture of each decorative segment of the
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plurality of decorative segments and wherein said stopper has a
third width larger than the second width of each aperture of
each decorative segment of the plurality of decorative
segments, such that when said first end of said rod is passed
through each aperture of each decorative segment of the
plurality of said plurality of decorative segments, said stopper
prevents said plurality of decorative segments from sliding over
said second end of the rod; and
wherein said threading aperture of said rod is adapted to
receive there-through a threadable member, such that when said
threadable member is threaded through said threading aperture,
said pendant is secured on said rod.
REJECTIONS
The Examiner rejects claims 1–3, 6–7, 10, 13, 18, 19, and 21–28
under 35 U.S.C. § 103 as unpatentable over Lichtenstein3 in view of Mount4
and Poli.5 (Non-Final Action 3.)
The Examiner rejects claim 4 under 35 U.S.C. § 103 as unpatentable
over Lichtenstein in view of Mount, Poli, and Johnson.6 (Non-Final
Action 9.)
ANALYSIS
Claims 1 and 28 are the independent claims on appeal, and they set
forth a jewelry system comprising a “pendant” and a “rod.” (Appeal Br.,
Claims App.) The pendant includes “a plurality of decorative segments,”
and the rod “extend[s] through the apertures of the plurality of decorative

3 US 5,836,176, issued November 17, 1998.
4 US 2002/0116947 A1, published August 29, 2002.
5 US 2005/0178155 A1, published August 18, 2005.
6 US 4,879,882, issued November 14, 1989.
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segments.” (Id.) Independent claims 1 and 28 require, among other things,
the decorative elements to have “different” shapes. (Id.)
The Examiner’s obviousness rejection is based upon a modified
version of an earring assembly 100 disclosed by Lichtenstein satisfying all
of the requirements of independent claims 1 and 28. (See Non-Final
Action 3, 6.) More particularly, the Examiner’s rejection is premised upon a
modified version of Lichtenstein’s earring assembly 100 having a pendant
formed by decorative segments of different shapes. We are persuaded by the
Appellant’s position that the record is lacking with respect to this premise.
(See Appeal Br. 8–12; Reply Br. 1–4.)
Lichtenstein’s earring assembly 100 is shown in Figures 5 and 6,
reproduced below.
Figure 5 Figure 6

As shown in the above drawings, the earring assembly 100 comprises
ornamental members 162, 164, and 166, and a rod 140 that extends through
apertures in these ornamental members. In the drawings, the ornamental
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members 162, 164, and 166 have bead-like shapes with “different
diameters.” (Lichtenstein 4:40.) According to the Examiner, Lichtenstein’s
bead-shaped members 162, 164, and 166 form a pendant having “the shape
of a snowman.” (Non-Final Action 3.)
The Appellant asserts (see Appeal Br. 9), and the Examiner agrees
(see Answer 3), that Lichtenstein’s bead-shaped members 162, 164, and 166
do not have different shapes.
The Examiner determines that it would have been obvious to modify
the snowman shape of Lichtenstein’s pendant in view of Poli for “aesthetic
purposes.” (Non-Final Action 6.) The Examiner explains that “the
modification is to change the shape of the existing beads of Lichtenstein into
the shape suggested by Poli.” (Answer 3.) The Examiner further explains
that this modification consists of “merely incorporat[ing] a known aesthetic
shape” from a decorative device shown by Poli “into the decorative device
of Lichtenstein.” (Id.)
The problem with the Examiner’s explanation is that it does not
adequately address how the “aesthetic shape” shown by Poli would be
“merely incorporated” into Lichtenstein’s earring assembly 100. As pointed
out by the Appellant, Poli discloses a “specific structure and arrangement of
plate segments” (Reply Br. 2), namely “juxtaposable” plate segments which
are pieced together to form a plate-shaped personalization element (see Poli
¶¶ 22, 36, 39, Figs. 1–5). The Examiner does not paint us a clear picture of
how one of ordinary skill in the art would incorporate this plate-like
geometry into Lichtenstein’s earring assembly 100. And, without a clear
picture of how the Examiner’s proposed incorporation is accomplished, we
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are unable to assess whether Lichtenstein’s modified earring assembly
would satisfy all of the requirements of independent claims 1 and 28.
Thus, on the record before us, we cannot sustain the Examiner’s
rejection of independent claims 1 and 28. The Examiner’s rejections of the
dependent claims likewise suffer from the above-discussed shortcoming (see
Non-Final Action 6–10), and so we also do not sustain the Examiner’s
rejections of claims 2–4, 6, 7, 10, 13, 18, 19, and 21–27.
CONCLUSION
Claims
Rejected
Basis Affirmed Reversed
1–3, 6, 7, 10, 13,
18, 19, 21–28
§ 103
Lichtenstein, Mount,
Poli
1–3, 6, 7, 10,
13, 18, 19,
21–28
4 § 103
Lichtenstein, Mount,
Poli, Johnson
4
Overall Outcome 1–4, 6, 7, 10,
13, 18, 19,
21–28

REVERSED