Ex Parte Richey

In Ex parte Richey (Appeal 2010-011708 in U.S. application serial no. 10/944,209) the Board of Patent Appeals and Interferences (BPAI) addressed an Examiner’s contention of a structure of a multi-piece confectionary food as obvious as a “design choice”. The claim at issue recited a structure of a “second outer confectionary strand of edible material wrapped about said center strand along said length thereof to define a plurality of convulsions wrapped around said center strand”. The Examiner maintained that “[t]o choose a pattern in which to wrap confectionary strands around one another would be a design choice which would have been obvious within the routine determination of one of ordinary skill in the art … and would not impart a patentable distinction to the product claim”.

The Board did not accept that contention by the Examiner. The Board pointed out “[h]ere, the Examiner has not provided evidence that the strand configuration recited in the claims was a known alternative to the designs shown by Mills, Kretchmer, and Soderlund”. In this instance the Board was looking for evidence of the claimed strand configuration to be a known alternative to the design disclosed in the applied art.

It is not clear what type of evidence the Board was looking for, but if evidence could have been shown by the Examiner that such a strand configuration was a known alternative, the Examiner would not have needed to rely on a position of “design choice”.