Appeal No. 2006-1451
Application No. 08/802,472
activity visually suggested by the iconic shape. Therefore, the scope of claim 18 is not
commensurate with the scope of its written description and enablement and we thus
reject claim 18 under 35 U.S.C. § 112, first paragraph. Claim 19 is similarly rejected for
fully incorporating the scope of its parent claim 18 and therefore is rejected for the same
description and enablement issues, supra., of its parent claim 18.
Claims 5, 17 to 24, 27 to 31 and 49 to 58 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
subject matter which the applicant regards as his invention.
More particularly, we point to the claimed characterization of an icon as
“recognizable”, and of the claimed characterization of the shape of the package as
“visually suggestive” of an activity “associated with” the icon in which the article is
used during the activity. The characterization of “recognizable”, “visually suggestive”,
and “associated with” are totally subjective to each individual obviating any possibility of
pointing out the scope of the claims with any degree of particularity.
Our reviewing court has held that
Reference to undefined standards, regardless of whose views
might influence the formation of those standards, fails to provide
any direction to one skilled in the art attempting to determine the
scope of the claimed invention.
Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342; 75 U.S.P.Q.2D 1801
(Fed. Cir. 2005). These noted characterizations in these claims so rejected have no
objective standards and therefore fail to provide the direction required under
35 U.S.C. § 112, second paragraph, to one skilled in the art attempting to determine the
scope of the claimed invention.
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