Appeal No. 2005-2643
Reexamination Control No. 90/005,842
examiner is not proposing to use the same software that is represented by Musmanno’s
flow charts to service Mukherjee’s inflation-indexed accounts. “Claims may be obvious
in view of a combination of references, even if the features of one reference cannot be
substituted physically into the structure of the other reference.” Orthopedic Equip. Co,
Inc. v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir. 1983) (citing
In re Anderson, 391 F.2d 953, 958, 157 USPQ 277, 281 (CCPA 1968)). Instead, what
matters in the § 103 nonobviousness determination is whether a person of ordinary skill
in the art, having all of the teachings of the references before him, is able to produce the
structure defined by the claim. Orthopedic Equip., 702 F.2d at 1013, 217
USPQ2d at 200 (citing In re Twomey, 218 F.2d 593, 596, 104 USPQ 273, 275 (CCPA
1955)). On this point, appellant argues:
The complexity of the data processing required for carrying out the
claimed invention is evident in the four examples of data processing
systems described in the subject patent specification (see Figures 2-5),
along with the numerous and varied permutations of these four systems
that they enable and that would be evident to those of skill in light thereof,
which provide those of skill with the basic understanding to . . . necessary
to overcome the problems that faced the Finnish system and that
apparently led to the “Sudden Death” of that system.
Brief at 17. This argument fails for several reasons, the first of which is that, as noted
above, Mukherjee attributes the “[s]udden death” of the Finnish system of providing
inflation-adjusted accounts to the 1968 trade agreement which abolished inflation
indexing. Mukherjee at 56, 4th para. Second, appellant has not explained, and it is
not apparent from an examination of appellant’s Figures 2-5, why appellant believes a
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