Rose case discussed in Ex parte Shotwell
On design choice:
The Appellant’s contentions are not persuasive. The Examiner
articulates that the modification of size of Conaway’s bin is based on a design choice. “Design choice” is appropriate where the Appellant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function or give unexpected results. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995).
About the Rose case
Ex parte Shotwell
The Appellant also contends that the holding of Rose does not apply in this case. See App. Br. 9-10. The Appellant points out that Rose states, “[w]e do not feel that this limitation is patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.” App. Br. 9 (citing Rose at 463 (citing In re Yount, 171 F.2d 317 (CCPA 1948)). The Appellant points out that Yount cites to In re Ayres, 83 F.2d 297 (CCPA 1936) and In re Withington, 104 F.2d 192 (CCPA 1939). The Appellant asserts that the specifications in each of Yount, Ayres, and Withington included a statement of equivalency with respect to a different sizes and that the specifications in both Yount and Withington included a statement that “a change in size is of no difference.” App. Br. 9-10. The Appellant asserts that the instant Specification does not include such statements. See App. Br. 9-10. The Appellant also points out that “the Background section [of the instant Specification] recites difficulties associated with smaller-sized baskets and containers for use in a dishwasher machine.” App. Br. 10. See Spec. paras -.