Appeal No. 2001-1482
Application No. 08/879,392
the independent claims, they too suffer from the same indefiniteness.
Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of
rejection against appellant's claims:
Claims 2 through 11, 13 through 15 and 18 through 22 are rejected under 35
U.S.C. § 112, second paragraph, for the reasons explained above, as being indefinite
for failing to particularly point out and distinctly claim that which appellant regards as the
invention.
Claims 2 through 11, 13 through 15 and 18 through 22 are also rejected under
35 U.S.C. § 112, first paragraph, for the reasons explained above, since the
specification, as originally filed, fails to provide written descriptive support for the
invention as now claimed (i.e., the significance of the “width” of the space (19) to the
illusion created or vis-a-vis the “surface dimensions” of the jewelry article or front
surface thereof). As stated in In re Bowen, 492 F.2d 859, 181 USPQ 48 (CCPA 1974),
the description requirement of 35 U.S.C. § 112, first paragraph, "is that the invention
claimed be described in the specification as filed." It is not necessary that the claimed
subject matter be described identically, but the disclosure originally filed must convey to
those skilled in the art that the applicant had invented the subject matter later claimed.
See In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984).
Turning to the examiner's rejections of the appealed claims under 35 U.S.C.
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