Appeal No. 2001-1482
Application No. 08/879,392
defined by border (15) and produces the illusion that stone (17) is larger than its actual
size. At no time did appellant indicate that the “width” of the space was in any way
critical to achieving the desired visual impression, or that the relationship between the
“width” or size of the space and the “surface dimensions” of the front surface of the
jewelry article was of any significance. Indeed, language relating to “width” of the space
and “surface dimensions” of the front face appears nowhere in the originally filed
specification. As for the drawings in the present application, we do not see that such
drawings can be relied upon in any way to establish criticality of the width of the space.
Moreover, we consider that the standard set forth in the claims on appeal
regarding the width or space being “arranged and sized to give a viewer the illusion that
said stone is larger than the actual size of said stone,” is too subjective. No specific
width or range of widths for the space are provided by appellant and thus one is left to
divine what size of space would create the illusion desired in the mind of a hypothetical
viewer. However, the impression created in the mind of one viewer might be quite
different than that created in the mind of another viewer. Thus, how does one
reasonably determine the scope of the subject matter set forth in the claims on appeal?
For the above reasons, when the claim recitations relating to size or width of the
space are viewed in the context of appellant's specification, we find that such recitations
render the scope and content of claims 18, 19 and 20 unclear and indefinite. Since
claims 2 through 10, 13 through 15, 21 and 22 on appeal depend from one or other of
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