Appeal No. 2006-2083
Reexamination Control No. 90/006,352
Since the advent of modern electronics, financial systems implementing electronic cash,
i.e., electronic representations of paper cash, have been known. Ohta is one such example. In
light of Ohta and the silver certificate, one with ordinary skill in the art would have recognized
the silver certificate as paper cash and would have been motivated to apply Ohta’s teachings on
electronic cash to implement an electronic version of the silver certificate as electronic cash.
That means one with ordinary skill in the art would have been motivated to generate an
electronic representation of the silver certificate and to conduct associated processing and record
keeping by means of a computer and a communication system like Ohta does with respect to
ordinary paper cash. As is stated by the examiner in the answer on page 10, line 23-24, the
incentive or motivation would have been to provide rapid and efficient money transfer made
possible by computers and electrical communications. In that regard, the level of ordinary skill
in the art is reflected by the prior art references cited by the examiner in support of the rejections
on appeal as well as all the prior art references the patentee has provided to the USPTO and
made of record in the underlying reexamination proceeding.
While motivation is necessary to combine teachings, the motivation need not be
expressly stated in any prior art reference. In re Kahn, 441 F.3d 977, 989, 78 USPQ2d 1329,
1338 (Fed. Cir. 2006). One with ordinary skill in the art is presumed to have skills apart from
what the prior art references explicitly say. See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771,
774 (Fed. Cir. 1985). There need only be an articulated reasoning with rational underpinnings to
support a motivation to combine teachings. In re Kahn, 441 F.3d at 988, 78 USPQ2d at 1337.
The standard was clearly met in this case. Ohta discloses an electronic cash system that
implements an electronic version of ordinary paper cash. The silver certificate is a paper
instrument as good as and usable as ordinary cash. One with ordinary skill in the art would
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