Appeal No. 2006-2083
Reexamination Control No. 90/006,352
system. That satisfies the requirements of the transmitting means when the silver certificate is
represented electronically. Ohta’s electronic cash is received back from a payee of the initial
user through a communication system. That satisfies the requirements of the receiving means
when the silver certificate is represented electronically. Ohta uses a computer to confirm that its
electronic cash has not been previously spent. That satisfies the requirements of the confirming
means when the silver certificate is represented electronically. With regard to the maintaining
means, the patentee does not dispute that at the time the invention was made one with ordinary
skill in the art would have known to use a computer rather than non-computer means to keep
records of the amount of silver in storage.
On page 4 of the brief, in summarizing its invention the patentee states that for its
invention the precious metal is stored in safekeeping “in a custodial account” and “not in a
deposit account.” Supposedly, ownership of the stored precious metal remain in the hands of the
depositor and does not pass to the institution holding the precious metal in exchange for a
liability owed by the institution. But the patentee does not point out or explain where such a
limitation is included in its claims. We see nothing in the claims that requires legal title to the
deposited commodity to remain in the hands of the depositor, notwithstanding that a transaction
cost is recited in claim 9 as including a storage fee. A storage fee is not inconsistent with the
notion of a deposit account. The commodity has to be stored and available on demand no matter
who owns it. With respect to the alleged “custodial” rather than “deposited” nature of stored
commodity, the patentee is arguing a limitation that is not a feature of the claimed invention.
Citing U.S. Patent No. 5,420,405, filed February 26, 1993, the patentee argues (Brief at
13) that at the time of the invention “such electronic payment systems were considered non-
obvious and patentable.” It is not understood what the patentee means by “such.” The argument
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