Appeal No. 2005-2642
Reexamination Control No. 90/005,841
produce the objective of the applicant's invention. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994). A statement that a particular combination is not
a preferred embodiment does not teach away absent clear
discouragement of that combination. In re Fulton, 391 F.3d at 1199-1200.
Regarding the examiner’s motivation for combining the teachings of Bodie with those of
Mukherjee as modified above in view of Musmanno, we agree that it would have been
obvious for a bank to want to pay some or all of the costs of its inflation-indexed deposit
accounts by investing in inflation-indexed annuities of the type described in Bodie, if and
when they should become available, with the principal component of the annuity being
paid out over a plurality of iterations over the term, as required by claim 31, and with the
accrual component also being paid out over a plurality of iterations over the term (not
required by claim 31). Appellant has not explained why claim 31 would be patentable
over Mukherjee, Musmanno, and Bodie even if Bodie’s disclosure of inflation-indexed
annuities is considered to be enabling. We are therefore affirming the rejection of claim
31 based on those references.
Claim 33, which depends on claim 24, specifies that the “index” recited in that
claim “corresponds generally to the consumer price index.” The examiner has rejected
this claim on the cited references in two different ways, both of which are persuasive.
First, he argues that the claim is unpatentable over the combined teachings of
Mukherjee and Musmanno in the manner discussed in the rejection of claim 24,
asserting that Mukherjee discloses relying on the “consumer price index” at page 51,
38
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