One particularly frustrating rejection that patent applicants can be faced with is a rejection alleging obviousness based on “design choice.” These rejections arise when one or more elements of an invention are not disclosed in the prior art, but the examiner nonetheless alleges that there are only “minor” differences between the claims and the prior art, such that the claimed elements, in view of the prior art, would be obvious to a person of ordinary skill in the art. These rejections tend to be catch-all rejections for examiners because they are highly subjective and are also challenging to rebut. “Obvious design choice” rejections are sometimes also described as (or conflated with) “mere rearrangement of parts,” “results effective variables,” and “optimization of ranges,” among others. All fall into a category where an examiner can make a subjective decision and has broad latitude to maintain the rejection.
Overcoming Obvious Design Choice Rejections
One effective way to overcome these rejections is for the patent applicant to prove that there is a particular purpose for the element at issue that is alleged to be an obvious design choice. Recently, in Ex Parte Adams et al., an appeal before the US Patent Trial and Appeal Board, our firm successfully used the “particular purpose” rationale to overcome an obviousness rejection based on an alleged design choice. In that case, we demonstrated that an alleged “obvious design choice” resulted in the use of less product compared to the prior art, thereby showing that the claimed element was used for the particular purpose of using less product, and was not a mere obvious design choice.
In instances where examiners are able to make subjective rejections, such as an “obvious design choice,” it is not enough to be able to make strong arguments to the examiner and Appeal Board. The patent application must also be well-drafted and carefully constructed, explaining the details of how and why an invention works the way it does. Well-drafted patent applications anticipate potential rejections, including obvious design choice rejections, and highlight the importance of claimed features. That was the case when our firm drafted and prosecuted the patent application in Ex Parte Adams et al., which led to the allowance of the patent.
Lambert Shortell & Connaughton has a great deal of experience overcoming “design choice” obviousness rejections at the USPTO to obtain patents for our clients, as well as in ligation and before the US Patent Trial and Appeal Board to defend our clients’ interests.