Appeal No. 2004-0298
Application No. 09/385,226
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
With respect to each of the appealed independent claims 1, 20,
27, 42, and 46, Appellant’s response to the obviousness rejection
asserts a failure by the Examiner to establish a prima facie case
of obviousness since proper motivation for the Examiner’s proposed
combination of references has not been set forth. After reviewing
the arguments of record from Appellant and the Examiner, we are in
general agreement with Appellant’s position as stated in the
Briefs.
In particular, we agree with Appellant that the St. Paul and
Successful Farming references, applied by the Examiner as providing
teachings of offering “in-kind” dividends to investors in lieu of
cash, are directed to fundamentally different problems with
fundamentally different solutions than the movie financing method
claimed by Appellant. As asserted by Appellant (Brief, pages 14
and 15; Reply Brief, pages 4-6), St. Paul describes a one-time
certificate redeemable for a haircut or unspecified product as a
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