Appeal No. 2006-2083
Reexamination Control No. 90/006,352
is without merit because the fact that other electronic payment systems have been patented does
not mean the patentee’s claimed electronic payment system is patentable. The patentee has not
shown that the same claimed invention had been considered patentable over the same cited prior
art. In any event, any such prior decision of another examiner would not have been binding on
the examiner who made the final rejection in this case and is also not binding on the board.
Finally, the patentee argues (Brief at 13) that the examiner ignored objective indicia of
nonobviousness in the form of “commercial success, long felt but unresolved needs, failure of
others, etc.” The patentee states (Brief at 13):
[T]here have been a number of spectacular bank failures giving rise to payment
risks such as the Herstatt risk. There was thus a long felt but unresolved need for
a commercial payment system which was not subject to payment risk. This need
was not solved by any system prior to the invention of the patent in
reexamination, and certainly the cited Ohta and Silver certificate references do
not solve this problem.
The declaration of James J. Turk, a co-inventor, refers to a 1974 failure of a small foreign
exchange trading bank in Germany, Bankhaus Herstatt, a 1990 failure of Drexel Burnham
Lambert, a 1991 failure of the Bank of Credit and Commerce International (BCCI), and a 1995
failure of the Barings Bank. Four bank failures in a period of approximately thirty (30) years
does not seem to present a substantial problem. Moreover, the patentee provides no factual
detail about the operation and failure of each of the referenced banks. It is not known whether
the banks failed simply because of poor investments within the range of permissible investments
established by rules governing the operation of those banks or because of intentional or criminal
mischief in violation of the applicable rules. If it were the latter, the bank failures are not
pertinent, for even the patentee’s invention cannot guard against intentional or criminal mischief.
For instance, despite all operating procedures to the contrary, personnel running the secure
facility for storing the commodity may nonetheless still make use of the commodity and subject
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