An articulated reason for modifying a prior art element is required even for matters of “design choice” in order to establish a prima face case of obviousness. Here, for example, the fact that a lead receptacle could have been positioned on a mounting block and that doing so would have been a design choice was found to be insufficient to establish obviousness. “Merely stating that a particular placement of an element is a design choice does not make it obvious.” This would be a good case to consult and cite in response to a bald assertion that a claimed feature is obvious for being a mere design choice.
Background / Facts: The patent on appeal here from rejection at the PTO during inter partes review proceedings is directed to a removable brush holder that can be used to pass electrical current in electrical devices or slip ring assemblies, such as electric generators and motors. Relying heavily on the analysis provided by the petitioner, the PTO (Board) determined that a certain lead receptacle in the prior art could be positioned on a modified mounting block and the elements would function as disclosed in the patent. Thus, the Board found that the location of the claimed spring is a design choice and is obvious.
Issue(s): Whether matters of design choice are inherently obvious.
Holding(s): No. In addition to chastising the Board for generally failing to “articulate its reasoning for making its decision,” the court found that “[t]his statement alone is not enough to explain why the Board found [the] claim [] obvious. Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice to locate the spring on the mounting block. Here, it does not.”