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Help end bad “design choice” rejections October 3, 2011

Posted by Brian Schar in General.

Below is the text of a short letter that I faxed to the BPAI re making Ex parte Gunasekar precedential.  In a nutshell, Ex parte Gunasekar sets out clear standards for rejecting a claim on the oft-abused grounds of “design choice.”  Read the opinion, and if you agree with me, please join me in sending this request to the BPAI.

Dear Chief Judge Fleming:

I write to request that the Decision on Appeal be made precedential in the appeal designated Ex parte Gunasekar, Appeal No. 2009-008345, Application No. 10/903,590.  I am not a party to this application, and have no ownership of or license to this application.  Additionally, I write on my own behalf and not that of my employer, who may not necessarily share my opinion.

Obviousness rejections grounded in “design choice” have been a problem in some art units for a long time.  There is a tendency by some Examiners to gloss over missing elements in the prior art with the incantation of “design choice,” while providing little or no technical reasoning for that rejection.  Further, the idea of “design choice,” interpreted broadly, covers all §101 patentable subject matter, which is necessarily designed: the question is whether the design was obvious. 

The MPEP is virtually silent on the topic of design choice rejections, and as a result provides no guidance to the Examiners as to the proper circumstances for making such a rejection.  Further, the MPEP does not provide any useful guidance to Applicants as to how a design choice rejection can be overcome.

Ex parte Gunasekar, on the other hand, brings significant clarity to the circumstances of a proper design choice rejection.  It sets a standard that can be easily understood and followed by Examiners and Applicants alike.  As such, it would help Examiners in writing clearer design choice rejections where appropriate, and to avoid them in situations where they are not appropriate.  It would help Applicants more thoroughly and clearly respond to design choice rejections as well.  Further, it likely would reduce the number of appeals that argue design choice as a ground of rejection, because clearer rules would help to dispose of the design choice issue at an earlier phase during prosecution.  Thus, making this case precedential would likely “help expedite Board consideration of other cases or provide needed guidance to examiners or applicants,” which is one criterion for making an opinion precedential.

Thank you for considering this request.


1. Tipster - October 4, 2011

Flemming is no longer chief judge.

2. Brian Schar - October 5, 2011

I stand corrected. The BPAI doesn’t make it easy to find out who is the chief judge. You’d think they would.

3. AAA JJ - October 12, 2011

James D. Smith (formerly of Baxter International) is now Chief APJ.

Design choice is a garbage rejection that any competent practitioner should be able to successfully traverse relatively easily. See the MPEP’s discussion of In re Chu and then read read that case. The APJ’s like to cite Ex parte Clapp, but I find Chu to be more helpful.

4. Traversing a Design Choice Rationale Asserted in an Obviousness Rejection - November 13, 2011

[…] decision here, it is hoped that this decision is made precedential (see the letter Brian Schar of American IPA sent to the BPAI re. the foregoing).Related Posts:Obviousness RejectionUSPTO KSR GuidelinesTeaching […]

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