Appeal No. 2006-1874
Reexamination Control No. 90/006,351
1,255,672 grams of gold on deposit (see printout of http://goldmoney.com/en/bar-
count.html (copy attached as Exhibit C)), representing over US$16 million of
asset-based electronic currency in circulation. The amount of currency in
circulation in this system has been steadily increasing.
Commercial success is not proved simply by sales figures. "This court has noted in the
past that evidence related solely to the number of units sold provides a very weak showing of
commercial success, if any." Huang, 100 F.3d at 140, 40 USPQ2d at 1689; Kansas Jack, Inc. v.
Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir. 1983) (determination of obviousness
not erroneous where (1) the evidence of commercial success consisted solely of the number of
units sold; and (2) there was no evidence of market share, of growth in market share, of
replacing earlier units sold by others or of dollar amounts, and of a nexus between sales and the
merits of the invention.). The amount of gold grams held in the patentee’s payment system, even
if steadily increasing, does not demonstrate commercial success. It is unknown whether the
numbers are big or small in the market for such commodity-based currency. It is also not known
how such numbers compare with the extent gold or other commodity certificates were or have
been in use for payments, in market share and variations in market share. Moreover, it would
appear that the proper comparison should be with respect to the total amount of currency in
circulation, whether commodity-based or not, and the patent owner has not provided such data.
Also, it is not certain whether the patentee’s sales numbers are due to price, advertising,
availability, or other factors unrelated to the merits of the claimed invention. A "nexus" is
required between the merits of the claimed invention and the evidence of secondary
considerations in order for the evidence to be given substantial weight in an obviousness
decision. See Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539, 218 USPQ 871, 879 (Fed.
Cir. 1983). "Nexus" is a legally and factually sufficient connection between the objective
evidence and the claimed invention, such that the objective evidence should be considered in the
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