KSR and obvious design choice

The good news for applicant in Ex parte Kobayashi was that applicant won on anticipation and obviousness rejections. The bad news was a new rejection, courtesy of KSR (via US v. Adams) and obvious design choice, termed here art-recognized alternative design structures. There was no evidence of unpredictability of the new combination.

The BPAI reminded applicant that the BPAI passes only on rejections, and does not decree patent issuance, citing to a variety of cases including Voss, Borkowski, Arkley, and In re Fisher, 448 F.2d 1406 (CCPA 1971).