Appeal No. 2004-0094
Application No. 09/181,658
“Mere denials and conclusory statements, however, are not sufficient to establish a
genuine issue of material fact.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617,
citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d
1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the modification.”
In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In addition, our reviewing court stated in Lee, 277 F.3d at 1343, 61 USPQ2d at 1433,
that when making an obviousness rejection based on combination, “there must be
some motivation, suggestion or teaching of the desirability of making the specific
combination that was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
Finally, in as much as appellants have admitted, on page 9 of the brief that “it is
common in the mortgage market for mortgages to be sold between the primary and
secondary markets and that companies needing cash sometimes sell their accounts
receivables (debits) to a financial institution or collection agency”, we do not find that
appellants have admitted that the claimed features of: receiving account data
electronically from time-to-time, acquiring ownership of the receivables represented by
the account data and wherein at least one of the accounts is a recurring bill, is well
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