Appeal No. 98-2788
Application 08/542,180
matter of routine engineering choice barring some convincing evidence of criticality.”
(Answer, page 5)
After reviewing appellants’ specification and drawings, and for the reasons set forth by
appellants in the brief (pages 8-14), it is clear to us that the size limitations at issue cannot be dismissed
as merely being a matter of "obvious design choice," based solely on the examiner's bald assertion that
such is the case. Appellants’ specification in the paragraph bridging pages 4 and 5, and on pages 6
through 8, describes the critical nature of the sizing and function of the flap (16) of the invention as
compared to the sizing and function of the inner sleeve (15) of the Metz patent, which is referred to on
page 4 of appellants’ specification. In a proper obviousness determination, the examiner is required to
consider the totality of the record and to evaluate even what he might perceive as minor changes in
terms of the invention as a whole and in the context of whether the prior art provides any teaching or
suggestion to one of ordinary skill in the art to have made the changes that would produce appellants’
claimed combination. See, for example, In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-
1095 (Fed. Cir. 1995) and In re Gal, 980 F.2d 717, 25 USPQ2d 1076 (Fed. Cir. 1992) which notes
that a finding of “obvious design choice” is precluded where the claimed structure and the function it
performs are different from the prior art.
For the above reasons, the decision of the examiner rejecting claims 9 through 12 under 35
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