In the oral argument of In re Printless Previews, App. No. 2011-1273 (Fed. Cir. 2012), there was an interesting sound bite when Judge Linn wondered aloud about the propriety of examiners rejecting claims by saying a missing element was merely a matter of design choice:
I can remember way back when when I was an examiner, some of the toughest problems we faced were when we went out, we did comprehensive searches, and we found references that covered every element of the claim except one little thing. And, it was common practice back then, and I think you’re justifying the practice, that the examiners very frequently would say ‘Well the claim is rejected A in view of B and C — with respect to the last element, that’s a matter of mere design choice of no patentable consequence.’ It was a nice phrase. It had a nice ring to it. But I often wondered whether that was legitimate or not.
[Listen]
You know from your own experience whether this practice has changed since Judge Linn’s days as an examiner.
This case had a Rule 36 judgment. But, you can listen to the entire oral argument here: [Listen].