Informative Decisions Address Design Choice Considerations

Today, the Patent Trial & Appeal Board (PTAB) designated two ex parte appeal decision informative, Ex parte Spangler, Appeal No. 2018-003800 (Feb. 20, 2019) & Ex parte Maeda, Appeal No. 2010-009814 (Oct. 23, 2012)

The Spangler decision (here) affirmed an examiner’s obviousness rejection determining that claimed relative lengths and locations of two claimed components were a matter of obvious design choice. The Board explained that since the specification did not suggest that the relative lengths or locations were critical to the claimed invention, variations of such was a matter of design choice.

Showing the other side of the coin, Maeda (here) reversed the examiner’s obviousness rejection, which determined that the location of a claimed component of a manufacturing apparatus was a matter of obvious design choice because moving the component to the claimed location would result in a different function than shown in the prior art.

While helpful for patent prosecutors dealing with such rejections before the Examining Corps, the loose application of “design choice” arguments is also a common petitioner misstep in AIA Trial Proceedings.

Scott A. McKeown is an author of the Patents Post Grant