When bringing a new product to market, there are usually many problems that are solved. Sometimes a problem relates to the fundamental aspect of a new product, such as a better way to deliver a beer during a tailgating party (see the cooler cannon). Additional aspects of the invention and related problems the inventor must solve might include how to control the launching of the beer, how to keep the costs in range with what consumers will pay, how to make sure the beer is launched repeatably and consistently, etc. These related aspects can lead to numerous additional protectable concepts. Often, during patent examination at the USPTO, because these related inventive concepts might seem secondary to the general invention, examiners often discount them and reject them under the theory of design choice.

Design choice is a “shortcut” examiners use to reject features that admittedly cannot be found in the references they are using to reject the application. Obviously, for examiners who have limited time to perform their duties, the attraction of this type of rejection can be quite strong. And often, at first glance, these additional features can look like trivial additions. But you wouldn’t be reading this post if that were really the case.

One of the most popular posts on this blog is a discussion of design choice (here). This post takes a bit of a deeper dive into that subject.

As an initial matter, design choice does not apply in every case where there is a difference from the cited art. In fact, the MPEP only mentions it in one subsection - MPEP 2144.04.VI.C. “Rearrangement of Parts” (given the number of times examiners cite design choice, you would think it would have its own section).

MPEP 2144.04.VI.C. “Rearrangement of Parts”

In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). However, “[t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellant’s specification, to make the necessary changes in the reference device.” Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984).

So - this means we first have to have a situation where the difference with the prior art is a rearrangement of parts, at least if you are following the MPEP. This is usually a good place to start with examiners.

However, according to some PTAB decisions, design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). But when the claimed structure performs differently from the prior art, a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function).

Thus, we see that another requirement of a design choice rejection is identity of function. This requirement is also a potentially good place to focus arguments against a rejection as usually one can find a way to illustrate an important difference in function from the prior art.

Now, as we discussed in the previous post, the applicant usually has to come forward with some sort of evidence to establish the new function or other advantages relative to the cited art. This is where things can be tricky. The PTAB often brushes aside “mere attorney argument.” See an example PTAB decision where Mattel (13/446,102) was attempting to protect a Hot Wheels track booster. The PTAB sustained a design choice rejection in terms of the number of paddles in the track booster. According to the PTAB, while the applicant argued that there was a functional difference, they “have not provided evidence of unexpected results or a difference in function when using three booster arms as opposed to, for example, six booster arms.” (emphasis in original).

Takeaways

During drafting, the drafter should take care to provide relative advantages or improvements for as many components and features as possible. While this can seem tedious and often inventors might push back thinking the attorney has lost focus on the invention, such extra work can save the day many years in the future.

During prosecution, the attorney should make sure that arguments against design choice clearly articulate with technical reasoning why the prior art function is different and exactly how the claimed feature (alleged to be design choice) is responsible for achieving advantages. As a rule of thumb, it should take several detailed paragraphs to show, step by step, why the structure in the prior art functions differently, and fails to provide a feature of the claimed structure. Smart attorneys like to think that the reader can make logical connections and infer why assertions are made. That can be an Achilles heel when appealing design choice rejections to the PTAB.

Likewise, citation to record evidence in the specification, prior art, and/or an inventor declaration is best (when possible). But as always, the arguments need to be specific. Conclusory assertions, even if accurate and true, will likely be insufficient before the PTAB.