Appeal No. 2006-1874
Reexamination Control No. 90/006,351
the failure of the Bank of Credit and Commerce International (BCCI) as a “scandal.” That
suggests something sinister and out of the ordinary insofar as the operation of BCCI is
concerned. Furthermore, the declaration of James J. Turk does not refer to, document, or
otherwise discuss any failed attempt by those in the banking industry to solve the alleged long
felt problem. On this record, the patentee has not established that payment risk of payments
made through banks represents a long felt but unresolved need in the banking industry or that
others in the banking industry have made genuine efforts to solve the alleged problem, but
without success. The patentee has not even revealed what was attempted that failed to provide
an adequate solution.
In any event, it appears that a solution to the payment risk problem discussed by the
patent owner has already been provided by way of the manner of operation of the gold vault of
the federal reserve system. The declaration of James J. Turk does not discuss the operation of
the gold vault of the federal reserve system with regard to whether it eliminates payment risk.
As for commercial success, the Court of Appeals for the Federal Circuit stated, In re
Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996):
In the ex parte process of examining a patent application, however, the PTO lacks
the means or resources to gather evidence which supports or refutes the
applicant's assertion that the sales constitute commercial success. Consequently,
the PTO must rely upon the applicant to provide hard evidence of commercial
success.
The patent owner proffers the declaration of James J. Turk, a co-inventor, dated April 30, 2004,
as supporting evidence for the alleged commercial success. In that regard, paragraph 6 of the
declaration states:
6. The patented invention has been implemented as a working
commercial payment system accessible via an online website found at
http://www.goldmoney.com/ (see printouts attached as Exhibit B). This system
has been in continuous operation since February 2001 and presently holds
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