Appeal No. 2006-2083
Reexamination Control No. 90/006,352
depositors to a payment risk. Note further than the declaration of James J. Turk refers to the
failure of the Bank of Credit and Commerce International (BCCI) as a “scandal.” That suggests
something sinister and out of the ordinary insofar as the operation of BCCI is concerned.
Furthermore, the declaration of James J. Turk does not refer to, document, or otherwise discuss
any failed attempt by those in the banking industry to solve the alleged long felt problem. On
this record, the patentee has not established that payment risk of payments made through banks
represents a long felt but unresolved need in the banking industry or that others in the banking
industry have made genuine efforts to solve the alleged problem, but without success. The
patentee has not even revealed what was attempted that failed to provide an adequate solution.
As for commercial success, the Court of Appeals for the Federal Circuit stated, In re
Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996):
In the ex parte process of examining a patent application, however, the PTO lacks
the means or resources to gather evidence which supports or refutes the
applicant's assertion that the sales constitute commercial success. Consequently,
the PTO must rely upon the applicant to provide hard evidence of commercial
success.
The patent owner proffers the declaration of James J. Turk, a co-inventor, dated April 30, 2004,
as supporting evidence for the alleged commercial success. In that regard, paragraph 6 of the
declaration states:
6. The original patented invention has been implemented as a working
commercial payment system accessible via an online website found at
http://www.goldmoney.com/ (see printouts attached as Exhibit B). This system
has been in continuous operation since February 2001 and presently holds
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
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