Appeal No. 2005-2642
Reexamination Control No. 90/005,841
better system by using futures, it recognized the prior-art.” Final Action at 39, ¶ 68
(underlining omitted).
Appellant’s interpretation of the rejection as based on Bodie’s proposed PPA’s
appears to be based on Bodie’s disclosure that inflation-indexed annuities in the form of
default-free government or corporate bonds annuities did not exist:
Bodie then goes on to say that such things don’t exist! So Bodie has no
explanation or description whatsoever of the nature of this hypothetical
index-linked bond, but concedes that in any event no such instrument
exists. The author then states that the only solution to his desire to
provide a PPA would be to base in [sic; it] on commodity futures
contracts—an indicator or [sic; of] future expected inflation, not past
inflation. Id. at page 6, col. 1.
Brief at 20. However, the fact that indexed annuities were not commercially available
does not detract from Bodie’s teaching of their desirability or preclude the examiner
from relying on Bodie as a reference for that teaching. Sivaramakrishnan, 673 F.2d at
1384-85, 213 USPQ at 442. Nor does Bodie’s observation that such annuities
were not commercially available amount to a “teaching away” from the use of such
annuities. As explained in Syntex (U.S.A) LLC v. Apotex Inc., 407 F.3d 1371, 1380, 74
USPQ2d 1823, 1830 (Fed. Cir. 2005):
Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
37
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