Monday, March 7, 2011

Vanguard v. Bank of America

In affirming the BPAI decision in Vanguard Identifications Systems, Inc. v. Patent of Bank of America Corporation, the CAFC issued its first ever decision on an inter partes reexamination.

In this case, the claim was directed to a data card having a circular opening positioned near the right-hand lower corner of the side of the data card having a magnetic strip.

Other embodiments of the data card included positioning the circular opening at other locations on the card. Both of the primary references relied upon by the Examiner lacked the aperture, which formed the critical design component of the claimed design. The BPAI determined that since the circular opening was lacking from each primary element, the Examiner failed “to consider the Appellant’s claimed design as a whole by disregarding the visual impression created by the aperture in the patented design.” The BPAI failed to consider the Respondent’s argument that the circular opening was functional and therefore lacked ornamentality since the issue was not on appeal.

It appears that the BPAI made it easier for practitioners arguing patentability when it is clear that the primary reference lacks any indication of the claimed feature and the Examiner relies on the secondary references for the feature. Other than this benefit, I cannot help but think that it is too bad that the reexamination process does not allow the Examiner to reject the claim on another basis, such as lacking ornamentality.

Keith Noe
Lando & Anastasi, LLP (

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