Appeal 2006-2429
Application 09/999,580
1 the expected risk, pricing it, and transferring some or all of
2 it.” (Wallman, Abstract).
3 19. “[A] vast number of products, services and techniques have
4 been developed in attempts to reduce (as opposed to avoid)
5 market risk. An example of such a product, service and
6 technique is hedging--such as buying put options on an
7 index.” (Wallman, col. 3, ll. 31-36).
8 20. “The user enters information about the user's portfolio--such
9 as a list of equities, with dollar amounts, shares owned or the
10 percentage of each issue as part of the entire portfolio--so
11 that the computer-based system is provided the input of what
12 the user wishes to have limited for downside risk ("shielded
13 or protected").” (Wallman, col. 9, ll. 17-23).
14 21. “The portfolio is then analyzed to determine the price to
15 charge the user.” (Wallman, col. 9, ll. 50-51).
16 22. “The computer-based system then provides a series of
17 choices to the user[:] Full protection . . . [p]artial protection .
18 . . [and] [e]xcess protection.” (Wallman, col. 10, ll. 15-30).
19
20
21 PRINCIPLES OF LAW
22 On appeal, Appellants bear the burden of showing that the Examiner
23 has not established a legally sufficient basis for combining the teachings of
24 the applied prior art. Appellants may sustain this burden by showing that,
25 where the Examiner relies on a combination of disclosures, the Examiner
26 failed to provide sufficient evidence to show that one having ordinary skill
27 in the art would have done what Appellants did. United States v. Adams,
28 383 U.S. 39, 52 148 USPQ 479, 483-84 (1966); In re Kahn, 441 F.3d 977,
29 987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar Textilfarben
30 GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464 F.3d 1356,
31 1360-61, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere fact that all the
32 claimed elements or steps appear in the prior art is not per se sufficient to
8
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