Ex Parte Spangler

Informative decision only: persuasive authority, not binding precedent. When an examiner finds that particular relative sizes and locations of claimed features solve no stated problem and would perform equally well in the combined prior art, and the specification shows those dimensions are immaterial to the disclosed function (so they are not critical), the Board may sustain a § 103 rejection on an obvious matter of design choice. Disclosed benefits of the overall feature do not establish criticality of the specific claimed dimensions, and a reference's stated preference for a different arrangement does not defeat design choice where its teachings show the claimed arrangement would work equally well. No prior precedent directly addressed this issue in the text; the decision cites only In re Rice and In re Kuhle for the design choice rationale. For an examiner or challenger, it shows design choice can be supported by the reference's own teachings that alternative sizes and spacings work equally well, even if the reference prefers a different arrangement. For an applicant, it means that pointing to benefits of a feature generally is not enough: the specification must tie the specific claimed relative lengths and locations to a function, a solved problem, or unexpected results. The Board relied on In re Rice, 341 F.2d 309 (CCPA 1965), In re Kuhle, 526 F.2d 553 (CCPA 1975), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). LEGAL TEST OR STANDARD: Design choice under § 103 where the claimed differences solve no stated problem. The Board asked whether the specification shows criticality of the claimed dimensions, meaning a difference in function or unexpected results as compared to the reference (Rice), or whether the change solves no stated problem (Kuhle). It also asked whether the combined art would perform equally well with the claimed arrangement and whether the reference teaches away from it. TRIGGERING FACTS: Claim 1 recited a featherseal with two lateral tabs, the first shorter than the second and the second tab spaced farther from its end than the first. The Examiner combined Bouchard and Stec. Appellants did not contest adding tabs generally. They argued the tab arrangement was critical, citing Spec. paragraphs 27-29. The specification's benefits came from the tabs' locking function through the tab space engaging a post, not from the relative sizes or locations. Stec showed the tabs work equally well in symmetric or asymmetric arrangements. KEY QUOTE: "Thus, although Stec expresses a preference for a symmetrical arrangement permitting two correct installation orientations, Stec' s teachings generally support the Examiner's position that the particular relative sizes and positioning of the tabs specified in claim 1 solve no stated problem and are an obvious matter of design choice." (p. 8) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board followed In re Rice, 341 F.2d 309, 314 (CCPA 1965), and In re Kuhle, 526 F.2d 553, 555 (CCPA 1975), and cited KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). PRACTICE TIP: If you rely on criticality to rebut a design choice rejection, tie the specific claimed sizes, positions or ratios to a disclosed function, a solved problem, or unexpected results in the specification. Do not rely on benefits of the feature in general. Also address the cited reference's own teachings on whether alternative arrangements work equally well.