Appeal No. 2005-2642
Reexamination Control No. 90/005,841
The rejection of claims 29-32, which are dependent on claim 24, rejected over
the same prior art as claim 24, and not argued separately from claim 24, is affirmed for
the same reasons as the rejection of claim 24. 37 CFR § 1.192(c)(7) (2001).11
Claim 34, which depends on claim 24 and is separately argued, specifies that the
deposit account is “being used to finance property of the institution.” The phrase
“property of the institution” is not defined in the specification of the ‘461 patent. As in
our discussion of claim 24, we are reading the term “institution” on banks offering
inflation-indexed deposit accounts of the type described at pages 50-56 of Mukherjee.
Regarding claim 34, the examiner argues that Mukherjee
discloses [the] claimed: “deposit account being used to finance property of
the institution” (“apply an extra charge to all loans equal to half the rise in
the index, and then use the funds to compensate . . . depositors”—page
50, col. 1. Furthermore, it is noted that banks inherently acquire assets,
because that is one of the functions of a bank, and was necessary to
maintain solvency. It is further taught by the application to “Mortgage
Banks” (p. 61). Regarding implicit and inferred teachings relied upon, it is
noted that ‘an artisan is likely to extract more than a layman from reading
a reference‘—In re Oetiker (CAFC) 24 USPQ2d 1443 (10/13/1992).
Final Action at 8-9, ¶ 15. We agree with appellant that the examiner is incorrect to
characterize the deposit accounts as “property” of the institution. Brief at 14. However,
there is merit to the examiner’s assertion that banks inherently acquire assets (i.e.,
property) and his implication that the assets are acquired, at least in part, with money
11 Of these claims, claim 31 is also rejected on another ground, addressed infra.
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