Appeal No. 2002-0811 Page 5
Application No. 09/182,466
Just as our reviewing court in In re Lee found deficient the mere assertion of
common knowledge and common sense in the art without concrete evidence in the
record on which to base this assertion, we find the examiner’s “obvious matter of design
choice” argument here to be without concrete or objective evidence in the record to
support it.
Lastly, on the merits, the examiner’s rejection must also be reversed. The
artisan may well have found it obvious to have created a list of stocks making up a
broadbased stock index based upon the teachings and suggestions in O’Shaughnessy
alone. The showing in Figure 1 and its initial teachings beginning at the bottom of
column 13 at line 55 of O’Shaughnessy indicates that the Stock Database is stated to
be any commonly used database, which teaching is repeated in the closing paragraph
at column 15, lines 9 through 11. The art readily recognizes and O’Shaughnessy
clearly indicates on its own that appellants’ own starting point for the broadbased stock
index, the Standard and Poor’s index, is an index database itself based upon a subset
list of all the stocks available anyway. Furthermore, the examiner’s analysis in the
paragraph in the middle of page 10 appears to be well taken and is not challenged by
appellants in the Reply Brief.
On the other hand, appellants argue, and there’s no dispute from the examiner’s
perspective, that there is no teaching or suggestion in O’Shaughnessy of eliminating
from an acceptable stock list stocks which are in part based upon a narrower based
index. Flowchart Figures 1 and 2 in O’Shaughnessy and the corresponding discussions
thereof do not teach or otherwise indicate to the artisan the desirability of eliminating
from a broader based stock index any stocks from a so-called narrower stock index.
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