Appeal No. 2005-1674
Application 09/613,153
claims do not couple the buyback ratio with either a price/sales ratio or a price/earnings ratio.
Instead, they more broadly couple the buyback ratio with "at least one other selection criteria
associated with performance of a corresponding company" (claims 21, 31, and 41), "at least one
other selection criteria associated with performance of a company corresponding to the at least
one selected stock" (claims 51, 61, and 71), or "a company performance ratio" (claim 81).
Claim 21, for example, reads:
21. A computer implemented method for reporting on investments, or
potential investments, comprising the steps of:
receiving a request specifying a selection of stocks from a database
of stock information;
identifying stocks from the specified selection having buyback
ratios, wherein a buyback ratio corresponds to a percentage of shares of
issued stock repurchased from the public during a specified period
and resulting in a decrease of shares outstanding; and
generating a report ranking a set of the identified stocks with
buyback ratios based on at least one other selection criteria associated
with
performance of a corresponding company.
B. The grounds of rejection
Claims 21-81 stand rejected under 35 U.S.C. § 112, first paragraph, as based on a
disclosure which fails to provide written description support for claims which are not limited to
at least one of the price/sales ratio and the price/earnings ratio.4 Answer at 3. As appellant
correctly notes (Brief at 3 n.4), this rejection clearly does not apply to dependent claims 22, 23,
4 "[N]ew matter rejections of claims under § 251 have been reviewed on the basis of a
§ 112 analysis, that is, on whether a claim found support in an original patent." In re Rasmussen,
650 F.2d 1212, 1215 n.6, 211 USPQ 323, 326 n.6 (CCPA 1981) (citing In re East, 495 F.2d
1361, 1366, 181 USPQ 716, 719 (CCPA 1974)).
(Continued on next page.)
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