A case supportive of the position that a change in the size of a claimed article does not impart patentability

Cannot be extended to support the proposition that changing the size of a component is a matter of obvious design choice.  Ex parte Drozdenko

The claims in Drozdenko relate to a fan blade and an engine for gas turbines.  More specifically, the claims are directed to a adhesive and fabric stack used between a sheath and a fan blade.  The fabric layer has holes that “are less than 0.001 inches in diameter”, on average.  The Examiner applied a reference to the claims that taught a conventional scrim material having larger holes and argued that modifying the reference to have holes within the scope of the claims was an obvious matter of design choice, citing In re Rose, 220 F.2d 459 (CCPA) in support of the rejection.

In re Rose

The Board reversed the Examiner, first differentiating Rose.  In Rose, the Board explained, Appellants had argued nonobviousness based on the fact that the claimed article was large, whereas those taught in the applied prior art were much smaller.  The Rose Court held that the argued distinction was irrelevant as “the size of the article under consideration is not ordinarily a matter of invention.”  The Board distinguished Rose from the application at hand by saying “here, in contrast, the Examiner does not propose a change in the overall size of the article under consideration” and instead “proposes changing the structure of” the prior art’s woven fabric “to that of a tightly woven fabric having holes less than 0.001 inch.”

In re Gal

Noting that Appellant’s specification described problems with the use of fabric having larger holes, the Board held that In re Gal, was more applicable.  In re Gal, 980 F.2d 717 (Fed. Cir. 1992) (a finding of obvious design choice is precluded when the claimed structure and the function it performs are different from the prior art).  Because Appellant had shown that a fabric having a much smaller hole size would function differently than the scrim material known in the art, the Board held one of ordinary skill in the art would have not been motivated to make the substitution/modification.