Board Overturns Rejection Based On Design Choice As The Basis Was Rebutted and As Not A Mere Rearrangement of Known Elements

September 14, 2011 – Blog Post

In Ex parte Gunasekar, et al. (Appeal 2009-008345 in U.S. application serial no. 10/903,590), the Board of Patent Appeals and Interferences reviewed assertions that claim features were obvious in view of “official notice” and/or “design choice.”

The invention at issue related to multi-media conferencing, and specifically to a language assistance application initiated to augment textual information and increase a conference session participant’s comprehension of the textual information. The disputed claim features recited “marking the textual information to notify the one participant that the supplemental information is available for selective display if the textual information is in the list; and forwarding the textual information having the marking to the one participant for display during the conference session without replacement of the textual information.”

The Examiner acknowledged that the prior art did not “clearly teach” these features, but took official notice that marking textual information was well known in the art. The Examiner further contended that including a mark in the textual information to notify the participant that the supplemental information is available is “considered as a design choice of a software engineer.” The Board disagreed, reversing the Examiner’s obviousness rejections that relied upon these assertions of official notice and/or design choice.

Concerning the use of “official notice,” the Board found that the Examiner failed to provide any persuasive evidence that marking text was well known in the art. The Examiner merely pointed to the prior art and in conclusory fashion determined that to send the participant textual and supplemental information, this information should be ready and available to be sent, and thus including a mark would be “considered as a design choice of a software engineer.” The Board also stated:

our reviewing court has held that an Appellant adequately traverses a finding of Official Notice where the appellant’s argument ‘contain[s] adequate information or argument’ to create on its face ‘a reasonable doubt regarding the circumstances justifying the … notice’ of what is well known to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). ‘To adequately traverse such a finding [of Official Notice], an applicant must specifically point out the supposed errors in the [E]xaminer’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.’ M.P.E.P. § 2144.03(C).

To the Board, the applicants did exactly this by articulating a number of reasons why a person having ordinary skill in the art would not reasonably infer or deduce anything about marking text from the prior art.

With respect to “design choice,” the Board explained that “design choice may be an acceptable rationale for an obviousness rejection when a claimed product merely arranges known elements in a configuration recognized as functionally equivalent to a known configuration.” See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). The instant application was not such a case, however, as the Examiner again provided no persuasive evidence that marking text was a known alternative to the designs in the prior art. Additionally, the Examiner did not advance a “convincing line of reasoning” why including a mark was an obvious matter of design choice, as the Board articulated:

To support a conclusion that a claim is directed to obvious subject matter, i.e., that a feature is an obvious matter of design choice, an Examiner must present a ‘convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed feature to have been obvious. Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned ‘convincing line of reasoning.’ Ex parte Clapp, 227 U.S.P.Q. at 973.

Ex parte Gunasekar, et al. therefore reinforces the hurdle that Examiners must clear to properly assert “official notice” and/or “design choice” as rendering a claim feature obvious.