Appeal Number: 2006-2941
Application Number: 10/170,421
well known to skilled persons in June 2002. . . . [, and] it would have been abundantly
clear to such skilled persons that the distributed excesses are calculated using a
computer.”
We agree with appellant. It is well-established that “[a]n inventor need not . . .
explain every detail since he is speaking to those skilled in the art. What is conventional
knowledge will be read into the disclosure.” In re Howarth, 654 F.2d 103, 105; 210
USPQ 689, 691 (C.C.P.A. 1981). Appellant, throughout the specification, describes the
invention as it applies to HMOs, which may have over 100 million members (see, for
example, page 11, lines 5-7). Further, in the example on page 11 of the specification, the
amount of money going into the fund is $16 per member, or over one and a half billion
dollars. In other words, the calculations referenced in the claims may involve billions of
dollars divided amongst millions of members. Computers have long been used for
calculations involving such large numbers. Thus, the use of a computer to calculate
excesses in the fund is considered conventional knowledge that will be read into the
disclosure and need not be detailed in the specification. Accordingly, we will not sustain
the written description rejection of claims 1, 2, 4 through 14, and 16 through 22.
The examiner (Answer, page 3) further rejects claims 1, 4 through 6, 8, 10
through 14, and 16 through 22 as being unpatentable over Halley. Specifically, the
examiner (Answer, page 4) asserts that Halley discloses all of the limitations of claim 1
except for the recited accounting period. However, the examiner contends that using an
accounting period is “known and used as a business choice to establish an optimized way
of accounting for a particular business set-up.” The examiner concludes (Answer, pages
4-5) that it would have been obvious to include a timely payment schedule in Halley
“which is best for business profitability.”
Appellant argues (Brief, page 9) that Halley fails to teach paying into a fund,
calculating liabilities against participants of the fund, and paying the established
liabilities out of the fund, all with reference to a defined accounting period, nor
distributing excesses to participants. Appellant explains (Brief, page 9) that the timing of
Halley’s pay-outs depends on the employee’s death, disability, or retirement, not on a
defined accounting period.
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