EDITOR Brendan M. Laurs ([email protected]) CONTRIBUTING EDITORS Emmanuel Fritsch, IMN, University of Nantes, France ([email protected]) Henry A. Hänni, SSEF, Basel, Switzerland ([email protected]) Franck Notari, GemTechLab, Geneva, Switzerland ([email protected]) Kenneth V. G. Scarratt, GIA Research, Bangkok, Thailand ([email protected]) DIAMONDS U.S. Patent and Trademark Office (USPTO) awards patents, and consequently it may affect the validity of a Bar code technology applied to diamonds. Inscribing dia- number of patents on diamond cut designs. monds using lasers and other technologies has become a A general review of U.S. patent law as it applies to routine method for identifying a stone and personalizing it diamond cuts can be found in the Winter 2002 G&G (T. for individual situations. At the same time, bar coding has W. Overton, “Legal protection for proprietary diamond evolved from the traditional one-dimensional array of lines cuts,” pp. 310–325). One of the factors that the USPTO to a two-dimensional matrix code that can hold far more considers in awarding a patent is whether the claimed information. invention is a development that would be “obvious” to Diamond laser inscription technology has now pro- a person having ordinary skill in the relevant field. An gressed to the point where a miniature matrix code can be obvious invention is not eligible for a patent. Until the inscribed on the girdle of a diamond (see, e.g., figure 1). KSR International case, the U.S. Court of Appeals for Instead of just a grading report number, the matrix code the Federal Circuit (which has jurisdiction over patent can store all of the information in the report itself, such as disputes) applied a fairly narrow definition of obvious- clarity, cut, and color grades, as well as country of origin (if ness: whether a specific motivation or suggestion to known), the name of the manufacturer, and other combine prior inventions or knowledge (referred to as specifics. This has distinct advantages for diamond dealers prior art in patent law) could be found in the patent lit- and manufacturers when managing inventory, security erature, the nature of the problem, or the knowledge of a issues, and finances. Unlike traditional laser inscriptions, person having ordinary skill in the field. The justifica- which can be read with a loupe or a microscope, a matrix tion for this narrow test was the straightforward recogni- code requires a scanner to decode the information. While tion that nearly all inventions involve some synthesis of this does entail investment in additional equipment, it can previous knowledge, and that fact alone does not make also provide confidentiality to the owner of the stone. an invention obvious. One manufacturer of the inscription and code-reading equipment, PhotoScribe Technologies of New York, noted that the cost of applying a diamond matrix code is comparable to that of current laser inscriptions. Russell Shor ([email protected]) Editor’s note: The initials at the end of each item identify the GIA, Carlsbad editor or contributing editor who provided it. Full names and affiliations are given for other contributors. Interested contributors should send information and U.S. Supreme Court ruling may affect viability of some illustrations to Brendan Laurs at [email protected] or GIA, The diamond cut patents. On April 30, 2007, the United Robert Mouawad Campus, 5345 Armada Drive, Carlsbad, States Supreme Court handed down a decision in the case CA 92008. Original photos will be returned after consideration or publication. of KSR International v. Teleflex (available online at www.supremecourtus.gov/opinions/06pdf/04-1350.pdf). GEMS & GEMOLOGY, Vol. 43, No. 2, pp. 162–183 Although this case involved a patent for an automobile © 2007 Gemological Institute of America gas pedal, the ruling affects the standards by which the 162 GEM NEWS INTERNATIONAL GEMS & GEMOLOGY SUMMER 2007 variations of traditional round and square diamond cuts. This decision (which effectively overturns several decades of established precedent) still needs to be inter- preted and applied by the Federal Circuit and the USPTO, so it is premature to say whether any particular diamond cut patent is in danger. It does, however, counsel caution in the enforcement of existing cut patents and in the development of new designs. Thomas W. Overton ([email protected]) GIA, Carlsbad Figure 1. This simulated data matrix bar code on the girdle facet of a diamond reads “PhotoScribe.” The data matrix measures 80 × 80 μm; the same inscrip- tion using letters would require about 10 times the COLORED STONES AND space. Courtesy of PhotoScribe Technologies, New ORGANIC MATERIALS York City; magnified 130×. First discovery of amazonite in Mexico. Amazonite is a bluish green variety of potassium feldspar that has been found on every continent except Antarctica (see M. In this case, the invention consisted of an adjustable Ostrooumov, “L’amazonite,” Revue de Gemmologie, electronic gas pedal design that was a combination of sev- Vol. 108, 1991, pp. 8–12). More than 100 large ama- eral previous patents covering the component parts and zonite deposits are known, and there are numerous the method by which they were arranged. Teleflex (the smaller ones. Recently, blue to bluish green amazonite patent holder) sued KSR for infringement. Although KSR was discovered for the first time in Mexico (figures 2 and argued that the progress of science would have inevitably 3). This material is hosted by the Peñoles pegmatite, led to the combination at issue here (and previous patents which is located about 60 km southeast of the village had addressed the problem in a general sense), the Federal Valle de Allende (Sierra de Peñoles, Allende municipali- Circuit upheld the patent because, looking strictly at the ty, Chihuahua State). The pegmatite is genetically relat- language in the previous patents, there was no specific ed to a Li-F granite of Miocene age (32 million years, suggestion to combine them. according to K-Ar dating); this is younger than all other The Supreme Court, however, held that the Federal known amazonite deposits. The pegmatite consists of an Circuit was applying this test too rigidly. Instead, the outer zone of coarse-grained albite-oligoclase and quartz Court held that obviousness should be determined against with a small amount of pale blue amazonite. Toward a general background considering the scope of the prior art, the differences between the prior art and the inven- tion, and the level of ordinary skill—essentially, much more of a holistic, common sense approach. Where a cer- Figure 2. Amazonite was recently discovered in tain combination of elements is something obvious to Chihuahua State, Mexico. This specimen is 28 cm try—as it was in this case—the invention itself is likely wide; photo by Juan Manuel Espinosa. obvious as well. Although this new standard implicates a broad range of issues, this contributor believes it presents a particular hazard to diamond cut patents, since so many recent cut designs are minor variations of previous cuts (see, e.g., Overton, 2002; Spring 2004 Gem New International, pp. 75–76). As the Supreme Court stated, “If a person of ordi- nary skill can implement a predictable variation, [the law] likely bars its patentability” (KSR International, p. 13). Further, the Court held that when there is market pressure to solve a problem for which there are a finite number of predictable solutions, an invention resulting from the pursuit of known options is likely the product not of innovation but of ordinary skill and common sense. For this reason, it will likely be more difficult to defend those cut patents that are but minor evolutions of previous designs. There is, after all, little question that there has been substantial market pressure in recent years for manufacturers and jewelers to develop in-house GEM NEWS INTERNATIONAL GEMS & GEMOLOGY SUMMER 2007 163 nized mining to date), the deposit shows mineralogical, geochemical, and geological characteristics that are analo- gous to other important amazonite deposits worldwide (Ostrooumov, 1991). Mikhail Ostrooumov ([email protected]) University of Michoacán, Mexico Jacinto Robles Camacho National Anthropology and History Institute Mexico City Astorite—A rhodonite-rich rock from Colorado. Astorite is Figure 3. These beads and cabochons (4.82–11.32 ct) the trade name for a rhodonite-rich gem from Colorado of Mexican amazonite were recently cut in the miner- (although this term also has been used as a synonym for alogical laboratory at the University of Michoacán. richterite, which is an amphibole, and the name asterite Photo by Robert Weldon. has been applied to star sapphire; see J. de Fourestier, Glossary of Mineral Synonyms, Canadian Mineralogist Special Publication 2, Mineralogical Association of the interior, the pegmatite attains >50 vol.% amazonite, Canada, Ottawa, Ontario, 1999, p. 29). Astorite originates which occurs as distinctly blue crystals up to 2–3 cm in from the Toltec mine in the San Juan Mountains of south- longest dimension that are associated with albite, western Colorado, approximately 18 km from Silverton. quartz, and micas (biotite and zinnwaldite). The central This historic mine, which was originally opened for gold zone of the pegmatite consists mainly of a quartz core and other metals, was once the property of Colonel John with bluish green crystals of amazonite. Chemical anal- Jacob Astor IV, who among other accomplishments co- ysis (by EDXRF spectroscopy) of the amazonite from the founded the Waldorf-Astoria Hotel in New York City outer zones to the core of the pegmatite showed increas- before perishing on the RMS Titanic in 1912 (J. C. Zeitner, ing K, Rb, Cs, Pb, Tl, Ga, Be, Sr, U, and Th, and decreas- “Astorite: A new gem material,” Rock & Gem, Vol. 32, ing Al, Na, Fe, and Ba.