Appeal 2006-2429
Application 09/999,580
1 the separate issues of analogous art and whether the references can be
2 combined to reject the claims under 35 U.S.C. § 103." (Reply Br. 5).
3 With regard to the rejection of claims 6-8 under 35 U.S.C. § 103(a) as
4 being unpatentable over Basch in view of Tull and Wallman, the Examiner
5 relies upon Wallman for a suggestion of hedging to reduce risk exposure.
6 (Answer 6). Appellants contend that Wallman does not make up for the
7 deficiencies of Basch and Tull, and that there is no suggestion to use
8 hedging of investments in Basch. (Br. 21).
9
10 We reverse.
11 ISSUE
12 With respect to the rejection of claims 10-23 under 35 U.S.C. § 112
13 (second paragraph) as being indefinite, the issue is whether the metes and
14 bounds of the claims would have been clear to an artisan, in light iof
15 Appellants' disclosure.
16 With respect to the rejection of claims 1-5 and 9 under 35 U.S.C.
17 § 103(a) as being unpatentable over Basch in view of Tull, the issue is
18 whether the combined teachings and suggestions of Basch and Tull would
19 have suggested the limitations of the claims. In particular, the issue turns on
20 whether Tull would have suggested inputting debt market data associated
21 with the transaction to the data processing system of Basch.
22 With respect to the rejection of claims 6-8 under 35 U.S.C. § 103(a) as
23 being unpatentable over Basch in view of Tull and Wallman, the issue turns
24 on whether Wallman makes up for the deficiencies of Basch and Tull.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013