Design Choice is a theory used by patent examiners when they are unable to find prior art showing all of the claimed limitations. See some of our previous posts here and here, as well as our post on some informative PTAB decisions (here).

One situation where design choice is particularly likely to be cited by an examiner is where the applicant provides a range of embodiments as to a specific feature. For example, consider an application disclosing a device with a protrusion, where the specification states it may be circular, oval, rectangular, triangular, etc. Here, if we assume the the protrusion is claimed generally as “curved”, and the examiner finds a non-curved protrusion in relevant prior art, the examiner may rely on Design Choice by asserting that the applicant’s own specification confirms that various shapes are possible and thus the curved shape has nothing special and so is obvious as mere design choice. Many times such a rejection can be difficult to overcome. In this way, sometimes the broadening language in a specification (that patent professionals are trained to include) can actually hinder prosecution.

One way to address this issue when drafting is to include advantages tied to the different protrusion designs and avoid merely lumping them all together in terms of solving a generic problem. To be clear, different layers can be applied including a generic problem solved by all of the shapes, in combination with more specific and different problems solved by the different example shapes. In this way, if the claims need to be narrowed to a specific shape, there is evidence of record to address a rejection based on obvious design choice.

A recent PTAB decision illustrates this latter point. Appeal 2020-004031, Application 14/808,450, relates to an e-cigarette from R. J. Reynolds. The issue was related to dependent claim 2 (which added the underlined limitation to independent claim 1):

An aerosol delivery device comprising:
an outer shell;
a radiation-trapping chamber positioned within the outer shell and comprising a chamber wall, wherein an interior of the chamber wall is configured as a black body or a white body;
a radiation source configured to provide radiation within the radiation-trapping chamber, wherein the radiation-trapping chamber is spherical.

The Examiner followed the approach described above. Specifically, the Examiner asserted the spherical shape to be a matter of design choice and noted that the Appellant’s Specification teaches that the chamber may take on a variety of shapes other than spherical. However, here, the specification included a specific advantage of the spherical shape (less energy to operate the device due to improved radiation trapping). In this way, the Examiner’s rejection was improper since the claim was not generic to the various shapes, and further the specification provided a specific advantage to the spherical shape:

Although the Examiner is correct that Appellant’s Specification teaches that the chamber can assume a variety of shapes, the claim before us is limited to spherical chambers. For purposes of the rejection before us, we need not be concerned with the patentability of embodiments that have different shapes.

The PTAB further summarized the importance of the disclosure of a particular problem and solution linked to the spherical shape as follows:

Thus, in context, Appellant teaches that there are advantages to using a spherical chamber in terms of energy efficiency and space reduction. This contradicts the unfounded allegations of the Examiner in the Final Action that Appellant fails to disclose that using a spherical chamber solves a problem, is for any particular purpose, or the device would perform equally well with a cylindrical chamber. Final Act. 5. A finding of obvious design choice is precluded where the claimed structure and the function that it performs are different from the prior art.

Of note in this appeal regarding claim 1, the applicant suffered from precisely the issue noted in our recent post on BRI and the Specification. In that post, we noted how the case went all the way to the PTAB on a claim interpretation issue and no one (until the PTAB) noticed that the applicant’s specification actually precluded their proposed meaning. Here too, R.J. Reynolds was arguing that the proper interpretation of a black body or white body could not cover the prior art since the prior art did not disclose either. The PTAB found (which was missed by the examiner and two conferees) that the specification defined black bodies as having an emissivity higher than .5, and white bodies having an emissivity less than .5. And since the claim required a black body or a white body, it encompassed basically all possible bodies. From this, it was easy to affirm the rejection.