Obviousness Based on the Rational of Mere “Design Choice”

by Michael Goltry, Registered Patent Attorney (480-991-3537; mg@pgpct.com)

One question facing inventors is whether their invention is patentable in view of what is known in the prior art, namely, all information that has been made available to the public in any form before a given date that might be relevant to the originality of an invention. One criterion of whether an invention claimed in a submitted patent application is patentable is whether the invention is novel and not anticipated. Novelty turns on whether the invention claimed in a filed patent application is found in one prior art reference, such as a prior patent or publication. In other words, “[t]o anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Accordingly, an invention is not patentable if each and every element claimed is shown, whether expressly or inherently, in one prior art reference.

The other criterion of whether an invention claimed in a submitted patent application is patentable is whether the invention is obvious as a whole notwithstanding that the claimed invention is not identically disclosed in one prior art reference. Three basic criteria must be met to establish a prima facie case of obviousness. First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings. Second, there must be a reasonable expectation of success. Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations. The teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on applicant’s disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991). 

The Supreme Court clarified that an obviousness analysis under 103 requires consideration of the factors set forth in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), including an analysis of the scope and content of the prior art and the differences between the claimed subject matter and the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). According to M.P.E.P. 2141.02, determining the differences between the prior art and the claims under 35 U.S.C. 103 turns on whether the claimed invention as a whole would have been obvious rather than whether the differences themselves would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1539, 218 USPQ 871 (Fed. Cir.1983); Schenck v. Nortron Copr., 713 F.2d 782, 218 USPQ 698 (Fed. Ci. 1983).

Additionally, per se rules for determining obviousness are disfavored. In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995). The Supreme Court set forth the requirements for analyzing obviousness of patent claims as follows:

Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit.  See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).  

KSR, 550 U.S. at 418 (2007).

Of particular interest is U.S. Patent Application No. 10519832 (“the ‘832 application”) directed to a frozen dessert manufacturing apparatus. Claim 6, below, is representative of the claimed subject matter:

6. A frozen dessert manufacturing apparatus comprising:

a cold storage which cold-stores a liquid containing bag constituted of a bag main body containing a mixture and having flexibility and an outer layer member disposed outside this bag main body, capable of forming a sealed space between the outer layer member and the bag main body, and having flexibility; 

a cooling cylinder which stirs and cools the mixture supplied from the liquid containing bag to thereby manufacture frozen dessert; 

a cooling device which cools the cold storage or the cooling cylinder; an air compression device; 

a mixture supply passage for connecting the inside of the bag main body of the liquid containing bag to the inside of the cooling cylinder; 

a bag pressurizing passage for supplying compressed air produced by the air compression device between the outer layer member and the bag main body of the liquid containing bag; 

an air supply passage for supplying compressed air into the cooling cylinder; and

a combined passage member detachably attached to the cooling cylinder and disconnectably connected to the mixture supply passage and the air supply passage, 

wherein the mixture supply passage is combined with the air supply passage, and thereafter connected to the inside of the cooling cylinder by the combined passage member, and the combined passage member is disposed in the cold storage.

The patent examiner rejected the ‘832 application claims as being unpatentable over Meserole, U.S. Patent 6494055, and Wilcox, U.S. Patent 6234351, based on a conclusory statement that “the location of the combined passage member 35 of Meserole is considered to be a matter of obvious choice to one of ordinary skill in the art”, and that “[n]o criticality or unexpected results are seen or have been disclosed for the location of the combined passage member being located in the cold storage” according to claim 6 notwithstanding the explanation in the ‘832 patent application of how moving the combined passage member to cold storage as claimed would result in a different function than that shown by Meserole. 

On appeal, the USPTO Patent Trial and Appeal Board (“the PTAB”) reversed the examiner’s obviousness determination. PTAB No. 2010-009814. The PTAB determined that the examiner’s conclusory “design choice” determination lacked “reasoning based upon rational underpinning to explain why a skilled artisan would have moved the combined passage member of Meserole to cold storage.” PTAB No. 2010-009814, Decision on Appeal p. 6. The PTAB explained that “design choice” may be appropriate where an “applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results.” See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995). However, the PTAB found that Appellants sufficiently explained how moving the combined passage member to cold storage prevents the entrained air from increasing the temperature of the mixture as in Meserole. As a result, the PTAB determined that the examiner’s failure to “set forth an explanation or technical reasoning why moving the combined passage member 35 of Meserole to cold storage would not result in a different function than that shown by Meserole” obviates the examiner’s mere design choice modification of Meserole. PTAB No. 2010-009814, Decision on Appeal p. 7.

An obviousness determination based on design choice, like all obviousness determinations, requires a reasoned, factual analysis. Patent applicants are cautioned to ensure that descriptions in their patent applications assign importance to elements in their patent claims to obviate possible claim rejections based merely on conclusory statements unsupported by prior art disclosures.