Appeal No. 2002-0811 Page 3
Application No. 09/182,466
At the outset, we observe that independent claims 1, 11 and 21 on appeal
essentially have corresponding features recited in their respective methods, systems
and p rogram products.
The examiner’s rationale in the statement of the rejection at pages 4 through 6 of
the Answer as to independent claims 1, 11 and 19 on appeal is fatally deficient. Pages
4 and 5 of the Answer set forth what the examiner views as corresponding teachings to
the majority of the limitations of representative claim 1 on appeal. At the top of page 5
of the Answer, the examiner recognizes that O’Shaughnessy does not teach the
claimed step of creating a list of stocks making up a list of a broadbased index and also
fails to teach the additional step of eliminating from that index list stocks which are part
of an earlier recited narrower-based stock index. What follows at pages 5 and 6 is fatal
to the examiner’s attempt to assert a prima facie case of obviousness.
The examiner initially asserts that these two claimed features found to be
deficient in the teachings and suggestions of O’Shaughnessy “would have been an
obvious matter of design choice to one of ordinary skill in the art at the time the
invention was made…[because] Applicant has not disclosed that creating a list of the
stocks making up the index, and eliminating from the index list stocks which are part of
the narrower based stock index provides an advantage, is used for a particular purpose,
or solves a stated problem.”
This initial reasoning process is based upon wrong or reverse logic. As noted by
the case law relied upon by appellants in the Brief and Reply Brief, the examiner has a
positive, initial burden to prove unpatentability within 35 U.S.C. § 103. Conversely,
appellants have no duty or presumption against patentability.
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