November 19, 2008|
© 2008, Michael E. Kondoudis
Official Notice is a principle in U.S. patent prosecution that authorizes an Examiner to depart from the general requirement to present evidence on the record to support a claim rejection. By “taking official notice”, an Examiner may rely on facts beyond the record to reject claims. Official Notice is intended for facts that are common knowledge or capable of unquestionable demonstration.
Background
Federal Courts, pursuant to the Administrative Procedure Act, review USPTO findings of fact under “the substantial evidence” standard, as a result of the Supreme Court’s decision in Dickinson v. Zurko. This standard obligates the USPTO to provide a record that includes sufficient documentary evidence to enable judicial review. This obligation, in turn, constrains the USPTO’s reliance on Official Notice to only facts that are “capable of such instant and unquestionable demonstration as to defy dispute.”
Additionally, there is a due process argument that an Applicant is entitled to appropriate notice as to why claims are rejected and why submitted patentability arguments are deemed unpersuasive.
A Memorandum from the Deputy Commissioner for Patent Examination Policy on the Procedures for Taking Official Notice is available here.
A leading decision concerning Official Notice is In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-421, (CCPA 1970) (stating that assertions of technical facts in areas of esoteric technology must always be supported by citation of some reference work and allegations concerning specific knowledge of the prior art, which might be peculiar to a particular art, should also be supported).
General Principles
1. Section 2144.03 of the Manual of Patent Examining Procedure (MPEP) provides guidelines for relying on Official Notice and personal knowledge. This should be an Applicant’s primary resource for responding to a use of Official Notice.
2. Official Notice is permissible only in limited circumstances. For example, use of Official Notice should be rare when an application is under final rejection or action under 37 CFR 1.113. (MPEP § 2144.03(A)).
3. Official Notice is permissible only for certain types of facts; those that are capable of instant and unquestionable demonstration as being well-known. Examples of such facts include those that are of common knowledge in the art. (MPEP § 2144.03(A)).
4. It is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts that are of “notorious character” and that serve to “fill in the gaps” that might exist in the evidentiary showing to support a particular ground of rejection. (MPEP § 2144.03(A)).
5. The proper time for taking Official Notice is the first Office Action or as early as possible after a claim feature is presented for examination. Ex parte Gambogi, 62 USPQ2d 1209 (BPAI, 2001)(unpublished).
6. An Applicant must timely traverse an assertion of Official Notice or the noticed facts will be deemed to be admitted prior art. (MPEP § 2144.03(C)). A timely traversal is one presented in the reply to the Office action.
7. To traverse Official Notice, an Applicant must specifically point out the supposed error(s) in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. So, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. (MPEP § 2144.03(C)).
The USPTO’s Burden
1. The Office must provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. (MPEP §2144.03(B)).
2. The Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)).
3. An Examiner may rely on facts within his or her own knowledge to support a rejection. When relying on personal knowledge, however, the Examiner must provide an affidavit or declaration setting forth specific factual statements and an explanation to support the finding. (MPEP §2144.03(C)). Such an affidavit is subject to contradiction or explanation by the affidavits of the Applicant and/or other persons. (See 37 CFR §1.104(d)(2)).
4. When an Applicant challenges a factual assertion as not properly officially noticed or not properly based upon common knowledge, the Office must support the finding with adequate documentary evidence in the next Office action if the rejection is to be maintained. (MPEP §2144.03(C)).
Proper Finality After Traversal
If an Examiner adds a document in the next Office action after an Applicant’s rebuttal, and that document is added only as evidence to support the maintenance of a rejection, the addition of a new document does not result in a new ground of rejection. Accordingly, the Office action may properly be made final. If, however, the Examiner relies on the newly cited document in any other way, and no amendments are made to the claims, the finality of an Office action should be questioned. See MPEP §2144.03(D). Remember, a second or any subsequent action on the merits may properly be made final, unless an examiner introduces a new ground of rejection that is not necessitated by a claim amendment or an IDS. (MPEP §706.07(a)).
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