Ex Parte Maeda

Informative decision only: persuasive authority, not binding precedent. Examiners are discouraged from relying on "design choice" because it is generally a mere conclusion, not a substitute for obviousness reasoning based on factual evidence. "Design choice" may be 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 or give unexpected results; but where the appellant explains a different function and the examiner offers no technical reasoning in reply, the § 103(a) rejection cannot stand. No prior Board precedent is named in the text as directly addressed; the Board relies on KSR and Federal Circuit authority. For an examiner, a bare "obvious design choice" finding, with only a statement that no criticality or unexpected results were disclosed, will not sustain a rejection once the applicant articulates a functional difference, and the examiner must supply technical reasoning. For an applicant or appellant, the decision shows that explaining, with record support, how a claimed difference (here, moving the combined passage member into cold storage) changes function can defeat a design-choice rejection. The Board relied on KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995), and In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995). LEGAL TEST OR STANDARD: Obviousness under § 103(a) requires articulated reasoning with rational underpinning for why a skilled artisan would make the modification (KSR, quoting In re Kahn); per se rules are disfavored (In re Ochiai). "Design choice" is discouraged as generally a mere conclusion, but may be 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 or give unexpected results (In re Chu). TRIGGERING FACTS: The examiner conceded Meserole's air injection point 35 lies outside the cold storage and rejected the claim by calling its location in cold storage an obvious choice with no criticality or unexpected results disclosed. Appellants explained that placing the combined passage member inside cold storage changes function: it keeps entrained air from raising the mixture temperature, as the Specification says, whereas Meserole's injection raises it. The examiner gave no technical reasoning why function would not differ. KEY QUOTE: "We discourage examiners from relying on “design choice” because it is generally a mere conclusion, which is no substitute for obviousness reasoning based on factual evidence." (p. 6) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), In re Ochiai, 71 F.3d 1565 (Fed. Cir. 1995), and In re Chu, 66 F.3d 292 (Fed. Cir. 1995). PRACTICE TIP: When facing a design choice rejection, explain in the appeal brief, with citations to the specification and the reference, how the claimed difference produces a different function or unexpected result, and argue that the examiner offered no factual or technical reasoning in response.