Appeal No. 2005-1674
Application 09/613,153
32, 33, 42, 43, 52, 53, 62, 63, 72, and 73, which specify that the "selection criteria is selected
from the group consisting of a price/sales ratio and a price/earnings ratio" and which are
indicated as allowed in the Office Action Summary (PTOL-326) for the final Office action. As a
result, we agree with appellant that the § 112 rejection should be understood to be applicable to
only claims 21, 24-31, 34-41, 44-51, 54-61, 64-71, and 74-81.
Claims 21, 24-31, 34-41, 44-51, 54-61, 64-71, and 74-81 stand rejected under 35 U.S.C.
§ 251 on the ground of reissue recapture.
C. The grouping of the claims
Appellant (Brief at 6) and the examiner (Answer at 2) agree that the claims should be
considered in the following three groups:
Group I: Claims 21, 24-31, 34-41, and 44-50;
Group II: Claims 51, 54-61, 64-71, and 74-80; and
Group III: Claim 81.
D. The rejection under 35 U.S.C. § 112
The examiner and appellant apparently agree that the phrase "at least one other selection
criteria associated with performance" is generic to a price/sales ratio and a price/earnings ratio
but is not limited to those two species. The examiner contends that the '286 patent fails to
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007