Appeal No. 2006-1874
Reexamination Control No. 90/006,351
determination of nonobviousness. See Demaco Corp. v. F. Von Langsdorff Licensing Ltd.,
851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir. 1988). The burden of showing nexus is
on the applicant or the patent owner. In that connection, it is noted that the printout submitted by
the patentee for the “goldmoney.com” website contains the following description:
Goldmoney is based upon 3 patents awarded for its concepts and breakthrough
technology. Managed by former Morgan Stanley and Chase Manhattan
Executives, Goldmoney works closely with partners to ensure reliability and
security for your gold. [Emphasis in original]
Insofar as the commercial system is based on the invention of three different patents, the
patentee has failed to establish the necessary nexus between the alleged commercial success and
the subject matter of claim 1 of the underlying patent in this appeal. The patentee does not
describe the specifics of the payment system provided through the Internet website at
goldmoney.com. Nexus cannot be presumed but must be established. Even a mere conclusory
assertion that there is nexus between the merits of the claimed invention and the alleged
commercial success would not be persuasive. See Huang, 100 F.3d at 140, 40 USPQ2d at 1690
("Huang's affidavit contains a conclusory assertion that, in his opinion, the sales of the grips
derive from the increased thickness of the polyurethane layer and the alignment of the pores.
This merely represents the inventor's opinion as to the purchaser's reason for buying the product,
and, alone is insufficient. Instead, the applicant must submit some factual evidence that
demonstrates the nexus between the sales and the claimed invention - for example, an affidavit
from the purchaser explaining that the product was purchased due to the claimed features.").
For the foregoing reasons, the patentee’s arguments based on secondary considerations as
objective indicia of nonobviousness are not persuasive and are insufficient to rebut the prima
facie case of obviousness.
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