Appeal No. 94-0570
Application 07/389,382
through a series of mathematical calculations and thereby
determine an optimized portfolio of equity stocks. We
conclude that the present claims are directed to statutory
subject matter under State Street and the rejection will not be
sustained.
The examiner’s last substantive paper filed in this
appeal was the Supplemental Examiner’s Answer filed October
22, 1996 (Paper No. 28), in which the examiner stated that the
issues on appeal were “similar, if not identical” to the
issues in State Street. At that time, however, the examiner
did not have the benefit of the Federal Circuit decision,
instead relying on the (now reversed) District Court decision.
Rejection for lack of written description
Claims 24 and 25 stand rejected as lacking a written
description in the specification as originally filed. The
standard for whether the written description requirement is
satisfied is laid out in In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984):
it is not necessary that the claimed subject matter be
described identically, but the disclosure originally filed
must convey to those skilled in the art that applicant had
invented the subject matter later claimed.
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