Appeal No. 2006-1451
Application No. 08/802,472
“aesthetically pleasing” cannot depend on the undefined views of
unnamed persons, even if they are experts, specialists, or
academics. Id. at 1352
We note that the standards of recognizability and visual suggestion are no more
objective than a standard for aesthetic pleasure. All three are highly dependent on
geographic, cultural, and personal history vagaries of the people to whom such criteria
apply. An icon of a cricket bat might be immediately recognizable in British areas, but
would more likely be thought to be a fraternity pledge paddle in the United States.
Certainly the activities suggested by each would be very different indeed. A more
domestic example would be a sphere with a small circle drawn on top. While most
domestic observers might scratch their heads over what this represented, many from
the American South would recognize it as an iconic black-eyed pea.
Therefore, because as the court stated in Datamize, the definition of a claim
limitation cannot depend on the undefined views of unnamed persons, we reject claims
5, 17 to 24, 27 to 31 and 49 to 58 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.
COMMENTS
Should prosecution be reopened, the examiner should consider the following art
that we make of record: Babe Ruth wristwatch sold in a plastic baseball shaped
package, circa 1948 and 1949, as evidenced by auction site web pages at Hunt
Auctions and at Diamond Galleries, supra., U.S. Pat. Nbr. 5,450,979 to Servick et al.
(9/19/1995, filed 4/19/1993) and U.S. Pat. Nbr. 5,386,909 to Spector (2/7/1995, filed
25
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