Appeal No. 2004-0298
Application No. 09/385,226
“thank you” to investors in a hair salon company, not as any kind
of offered dividend as an incentive to invest in a company.
Similarly, we agree with Appellant that the Successful Farming
reference merely discloses a technique for assuring a constant
supply of a product, in this case feeder pigs, to an investor, in
contrast to the claimed invention which is directed to the sale of
a security in combination with the offer of a copy of a not yet
produced product, i.e., a movie, as a dividend. The 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In
our view, given the disparity of problems addressed by the applied
prior art references, and the differing solutions proposed by them,
any attempt to combine them in the manner proposed by the Examiner
could only come from Appellant’s own disclosure and not from any
teaching or suggestion in the references themselves.
We are further of the opinion that even assuming, arguendo,
that proper motivation were established for the Examiner’s proposed
combination of references, we fail to see how and in what manner
the references could be combined to arrive at the specific
combination set forth in the appealed independent claims. As
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