Appeal No. 2005-2642
Reexamination Control No. 90/005,841
to service the accounts with a data processor in order to obtain the speed and accuracy
offered by automated (as opposed to manual) processing. Appellant’s argument that
Musmanno’s software is “totally inapplicable to the issue at hand: the adjustment and
management of inflation-indexed accounts,” Brief at 11, is unconvincing because the
examiner is not proposing to use Musmanno’s disclosed software to service
Mukherjee’s inflation-indexed accounts. “Claims may be obvious in view of a
combination of references, even if the features of one reference cannot be substituted
physically into the structure of the other reference.” Orthopedic Equip. Co, Inc. v.
United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir. 1983) (citing In re
Anderson, 391 F.2d 953, 958, 157 USPQ 277, 281 (CCPA 1968)). Instead, what
matters in the § 103 nonobviousness determination is whether a person of ordinary skill
in the art, having all of the teachings of the references before him, is able to produce the
structure defined by the claim. Orthopedic Equip., 702 F.2d at 1013, 217 USPQ2d at
200 (citing In re Twomey, 218 F.2d 593, 596, 104 USPQ 273, 275 (CCPA 1955)). On
this point, appellant argues:
The complexity of the data processing required for carrying out the
claimed invention is evident in the four examples of data processing
systems described in the subject patent specification (see Figures 2-5),
along with the numerous and varied permutations of these four systems
that they enable and that would be evident to those of skill in light thereof,
which provide those of skill with the basic understanding to [sic] necessary
to overcome the problems that faced the Finnish system and that
apparently led to the “Sudden Death” of that system.
Brief at 12. This argument fails for several reasons, the first of which is that, as noted
above, Mukherjee attributes the “[s]udden death” of the Finnish system of providing
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