Appeal No. 2006-1451
Application No. 08/802,472
golf. Hence its visual suggestion is only by virtue of what the particular person making
the mental leap from icon to activity to article has by way of personal memory towards
that suggestion. Hence there is no objective test disclosed for the scope of the activities
that an icon might suggest, nor of the level of the icon’s ability to visually suggest an
article that might be used during any such activity. Indeed, the test the appellant has
applied in the prosecution history, that of inconceivability, is highly subjective to the
personal levels of conception.
As the opinion in Datamize (where the subjective element was the phrase
“aesthetically pleasing”) stated
The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual
purportedly practicing the invention. See Application of Musgrave,
431 F.2d 882, 893 (C.C.P.A. 1970) (noting that “[a] step requiring
the exercise of subjective judgment without restriction might be
objectionable as rendering a claim indefinite”). Some objective
standard must be provided in order to allow the public to determine
the scope of the claimed invention. Even if the relevant perspective
is that of the system creator, the identity of who makes aesthetic
choices fails to provide any direction regarding the relevant
question of how to determine whether that person succeeded in
creating an “aesthetically pleasing” look and feel for interface
screens. A purely subjective construction of “aesthetically pleasing”
would not notify the public of the patentee’s right to exclude since
the meaning of the claim language would depend on the
unpredictable vagaries of any one person’s opinion of the
aesthetics of interface screens. While beauty is in the eye of the
beholder, a claim term, to be definite, requires an objective anchor.
Id. at 1350
And
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. In short, the definition of
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