Appeal No. 96-2552
Application 08/161,816
July 10, 1995 (Paper No. 26), to reconsider the rejection
under 35 U.S.C. § 101 in view of proposed Patent and Trademark
Office (PTO) guidelines which issued as Examination Guidelines
for Computer-Related Inventions, 1184 Off. Gaz. Pat. &
Trademark Office 87 (March 26, 1996). The examiner maintained
the rejection "since there is no practical application having
a physical transformation in the industrial arts" ([Second]
Sup. Examiner's Answer, Paper No. 28, page 1). The examiner
states that "the gist of the overall invention resides in the
abstract idea for business financial
calculations/determinations (e.g. to estimate the value) which
lacks the required physical transformation in the industrial
arts for a practical application" (EA2). The examiner relies
on the business methods analysis in the district court's
decision in State Street Bank & Trust Co. v. Signature
Financial Group Inc., 38 USPQ 1530 (D. Mass. 1996), rev'd and
remanded, 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998).
We refer to the Examiner's Answer (Paper No. 18), the
Supplemental Examiner's Answer (Paper No. 25), and the
[Second] Supplemental Examiner's Answer (Paper No. 28) for a
statement of the examiner's position and to the Appeal Brief
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