Appeal No. 2005-2643
Reexamination Control No. 90/005,842
the use of a specific type of data processing to manage a specific type of account, the
so-called Cash Management Account. Musmanno teaches specific software for
carrying this function out, which is shown, for example, in Figures [1A, 1B], 2, 3 and 4.”).
The examiner does not contend that Musmanno discloses using a data
processor to service inflation-indexed accounts.
I. The merits of the rejection of claims 1-24 for
obviousness over Mukherjee in view of Musmanno
The legal conclusion that a claim is obvious within § 103(a) depends on at least
four underlying factual issues: (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the level of ordinary skill in
the pertinent art; and (4) an evaluation of any relevant secondary
considerations. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). As explained in Princeton Biochemicals Inc. v. Beckman
Coulter Inc., 411 F.3d 1337, 75 USPQ2d 1051, 1054 (Fed. Cir. 2005), it is also
necessary to consider the question of motivation:
As this court pointed out in Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275
[69 USPQ2d 1686, 1690] (Fed. Cir. 2004), in making the assessment
of differences between the prior art and the claimed subject matter,
section 103 specifically requires consideration of the claimed invention “as
a whole.” . . .
. . . This “as a whole” assessment of the invention requires a
showing that an artisan of ordinary skill in the art at the time of invention,
confronted by the same problems as the inventor and with no knowledge
of the claimed invention, would have selected the various elements from
the prior art and combined them in the claimed manner. Id. In other
words, section 103 requires some suggestion or motivation, before the
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