Is it “obvious”?

If it’s a “design choice,” yes.

If functional, no.

By Shane Adams - originally posted to Flickr as Dreyfuss chews his bone, CC BY 2.0, https://commons.wikimedia.org/w/index.php?curid=9418541One criterion for whether a claimed invention is patentable is whether it’s “obvious” as a whole. This applies even if the claimed invention isn’t identical to the prior art (such as a previously patented invention).

As the US Patent and Trademark Office (USPTO) explains, “An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable.”

For example, a three-slot toaster might be deemed obvious in light of the existence of a two-slot toaster.

As the US Supreme Court ruled in the case of Graham v. John Deere Co.,

Obviousness is a question of law based on underlying factual inquiries. The factual inquiries enunciated by the Court are as follows:

(A) Determining the scope and content of the prior art;

(B) Ascertaining the differences between the claimed invention and the prior art; and

(C) Resolving the level of ordinary skill in the pertinent art.

Courts disfavor per se (hard-and-fast) rules for determining obviousness, preferring to look at the big picture. As the Supreme Court stated in KSR Int’l Co. v. Teleflex Inc.,

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 a review, this analysis should be made explicit.

A patent application can be rejected if a Patent Examiner finds that an element of a claimed invention is a mere “design choice.” As the Board of Patent Appeals and Interferences explained in Ex parte Bagnall, et al.,

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”). However, 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).

In the recent matter of Ex parte Elliott, the Patent Trial and Appeal Board (PTAB) reversed a Patent Examiner’s obviousness rejection. The PTAB found that the Examiner didn’t provide evidence or show reasoning to support the conclusion that a feature was a mere design choice. The PTAB noted that the Appellant had presented evidence that the claimed structure solved a stated problem.

Elliot involved edible animal chews. The Patent Examiner determined that it would have been obvious to provide an extruded animal chew with internal walls and struts in light of other edible food products, such as ice cream cones and pasta, that also included internal walls and struts.

The PTAB disagreed, finding:

Here, the recited internal support structure is said to provide certain functions, including increased chewing time and reduced calorie content. Spec. 5. Thus, the Specification presents at least some evidence that the recited structure solves a stated problem. See id. at 2 (“It has been found that an internal support structure within the edible chew provides longer-lasting time per gram of product.”). Conversely, the Examiner does not identify evidence or reasoning adequate to support a determination that the difference between a chew having no internal structure (Nie, Bunke) and the claimed chew having specified internal walls and struts would have been an obvious design choice.

Takeaway: To avoid challenges on the grounds of obviousness, it’s important that each feature disclosed in a patent application should be associated with one or more advantages, to counter any argument that the feature is a mere “design choice.”


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