Appeal No. 2005-2642
Reexamination Control No. 90/005,841
indicator of prior actual inflation. The examiner is therefore correct to read the claimed
“means for establishing data representative of a deposit account with an institution . . .”
on inflation-indexed deposit accounts of the type described by Mukherjee, including the
‘A’ and ‘B’ deposit accounts discussed at pages 51-56. Final Action at 3-4, ¶ 7. We
note that this claimed means alternatively reads on the initially proposed accounts that
were not adopted, which are described at page 50, last paragraph (“The initial idea had
been to apply an extra charge to all loans equal to half the rise in the index, and then to
use the funds to compensate all depositors for half their loss due to inflation.”).
Furthermore, assuming for the sake of argument that the index and resulting variable
interest component must be continuous (i.e., nonstepped) functions of the rate of the
prior actual inflation, the initially proposed accounts were to operate in that manner.
See Mukherjee at 50, last para. The fact that the initially proposed accounts were never
adopted does not detract from Mukherjee’s status as a reference teaching the
desirability of such accounts. See In re Sivaramakrishnan, 673 F.2d 1383, 1384-85,
213 USPQ 441, 442 (CCPA 1982):
That Gable may not have actually reduced the specific mixture of resin
and cadmium salt to practice has no bearing on whether the mixture is
"described in a printed publication" under §102(b). See e.g., Mannix Co.
v. Healey, 341 F.2d 1009, 1010 n.1, 144 USPQ 611, 612 n.1 (CA 5 1965);
Siegel v. Watson, 267 F.2d 621, 624, 121 USPQ 119, 121 (CADC 1959);
Ritter v. Rohm & Haas Co., 271 F. Supp. 313, 341, 154 USPQ 518,
542 (S.D.N.Y. 1967). Cf. In re Deters, 515 F.2d 1152, 1155, 185 USPQ
644, 647 (CCPA 1975) (that a reference is a "paper patent" is irrelevant to
its value as evidence of level of skill in the art); In re Blake, 53 CCPA 720,
724, 352 F.2d 309, 312, 147 USPQ 289, 291 (1965) (patent statute does
not require commercial use of subject matter of a prior-art disclosure for
that disclosure to qualify as a reference).
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