Design choice rejections are rejections that an Examiner at the USPTO can make if the claimed invention merely includes “design choices” that are different from the prior art. However, even minor differences between acclaimed invention and prior art may be patentable.
Patent law has held that in a proper obviousness determine, “whether the changes from the prior art are ‘minor’, . . . the changes must be evaluated in terms of the whole invention, including whether the prior art provides any teaching or suggestion to one of ordinary skill in the art to make the changes that would produce the patentee’s . . . device.” Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 935, (Fed. Cir.).
Cases decided by the patent Board of Patent Appeals have upheld examiner’s obvious rejoins of pending claims on the grounds that one prior art reference decided a “holiday bag” material, that other prior art references taught paper bags in various sizes, and that the substitution of orange plastic for the crepe paper of Holiday and the paper bags of the cited art would have been an obvious design choice. In re Dembiczak, supra, 175 F.3d at 1000. Therefore, by simply changing the material and/or shape of objects, it is likely that the Board of Patent Appeals will uphold an Examiner’s design choice arguments.
To overcome design choice arguments, I recommend adding in claim limitation regarding how the structure of an object makes the invention function differently than the art. One case I frequently cite is In re Gal. The Federal Circuit in In re Gal, 980 F.2d 717 held that obvious design choice is precluded where the claimed structure and the function it performs are different from the prior art. By amending the claims to include structural differences that include functional aspects that are not taught by the prior art, it is likely that you will overcome an Examiner’s design choice rejection.