Official Notice And Tips For Responding To Rejections Based On Official Notice

November 19, 2008

in Examples of Responses,Prosecution Strategy

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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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 12 comments… read them below or add one }

EvilDave November 19, 2008 at 10:37 am

I find that often Examiner’s take “Unofficial Notice” as frequently as possible.
This is where they make an off hand comment that limitation X “is a design choice” or some other glib comment and move on.
The trick (for them) is to not mention that they are taking Official Notice. I assume in the hopes that you won;’t notice, and won’t traverse.

EvilDave November 19, 2008 at 10:44 am

I have also been seeing Examiners take Official Notice of legal conclusions (that X is obvious).

anonymous November 19, 2008 at 3:32 pm

Most of the time Official Notice refers to “the art” without specifying what “the art” is. You can, and probably should, traverse Official Notice in such cases because the Official Notice is ambiguous and overbroad. We, as practitioners, should force examiners to state their findings on the record so that we can appeal, if necessary.

Robert K S January 7, 2009 at 10:06 pm

In our prosecution work we regularly referenced the part of MPEP 2144.03 B that cited Zurko (“holding that general conclusions concerning what is ‘basic knowledge’ or ‘common sense’ to one of ordinary skill in the art without specific factual findings and some concrete evidence in the record to support these findings will not support an obviousness rejection”) in replies to office actions with 103 rejections. However, this citation has been removed from the MPEP between the July 2007 and September 2007 editions. Why? Was some aspect of Zurko superseded? Or was the MPEP’s interpretation of the Zurko decision deemed inaccurate? Or was the PTO just getting too many responses calling them on bad “official notice” rejections and decided that they wanted to disincentivize such type of applicant response by excising that part of the MPEP?

Lazarus Long January 8, 2009 at 7:15 pm

I agree with your posts that many/most of the takings of official notice (ON) are either poorly done or just plainly improper. Probably because most examiners are not properly taught how & when to take ON & when NOT to take it. And too many forget that the taking of ON is basically a placeholder for a reference to be named later (if necessary) and a statement of obviousness is still required to make the rejection.

Personally, I always try to get them to take it as little as possible. And then only for really well known items (i.e., things an average person on the street would know which is a lot more restrictive standard than required).

For example, I would write it something like:

As to claim 666,Smith shows the use of a printer but does not indicate that the printer can be a laser printer as claimed. One of ordinary skill in the art would have known that a laser printer is a well known and conventional printer (Official Notice; see MPEP 2144.06). Therefore, to one of ordinary skill in the are it would have been obvious that a laser printer can be used as the generic printer of Smith because of the conventionality of such printers and because Smith is not limited to any particular type of printer and a laser printer would function equally well as the generic printer that Smith uses.

thanks,

LL

e6k January 15, 2009 at 1:13 am

“Why? Was some aspect of Zurko superseded? Or was the MPEP’s interpretation of the Zurko decision deemed inaccurate?”

No, applicant’s misrepresented what was being said in Zurko. The holding is just as true today as it ever was. Common knowledge not basic knowledge or common sense. If your examiner had actually stated that the knowledge was common sense, or basic knowledge then it would have been appropriate to cite that portion.

What we got were morons like yourself, and probably thousands of others, who decided to traverse every official notice, even the proper ones, taking notice of “common knowledge”, with that statement. Incorrect traversal. And they were probably tired of seeing it happen and since it was an easy mistake for attorneys to make, they wanted to stop causing them make the mistake.

e6k January 15, 2009 at 1:20 am

“As to claim 666,Smith shows the use of a printer but does not indicate that the printer can be a laser printer as claimed. One of ordinary skill in the art would have known that a laser printer is a well known and conventional printer (Official Notice; see MPEP 2144.06). Therefore, to one of ordinary skill in the are it would have been obvious that a laser printer can be used as the generic printer of Smith because of the conventionality of such printers and because Smith is not limited to any particular type of printer and a laser printer would function equally well as the generic printer that Smith uses.”

Good god, even primaries are fing this up.

Where is your motivation for your legal conclusion of obviousness LL? Or do we not use motivations since KSR?

Lazarus Long January 17, 2009 at 9:02 pm

6K, you rambled that:
“Good god, even primaries are fing this up.

Where is your motivation for your legal conclusion of obviousness LL? Or do we not use motivations since KSR?”

For an example like this, what I gave IS sufficient motivation. Could I give more explanation? Yeah, if I wanted. But for this example it was not necessary and was not the point of the example, anyhow.

Stating that it would have been obvious “conventionality of such printers and because Smith is not limited to any particular type of printer and a laser printer would function equally well as the generic printer that Smith uses” establishes the “why” of motivation (one of the Graham v Deere tests. Remember?) It points out that the claimed printer is conventional & replacing the generic printer of the ref. with any other conventional one is just basically a matter of routine engineering & choice for the application it is to be used for and the type of printer used as an output does not effect the claimed invention which the ref shows. Even BEFORE KSR nothing much else would have been needed. Now, WITH KSR what I said is probably MORE than is even necessary.

So, in your 18 months (or whatever) of “wisdom” how would YOU have written it? I can not wait to see.

LL

Robert K S January 23, 2009 at 9:30 pm

e6k: Thanks for your civil response. I confess, though, I don’t understand what you’re talking about re: distinction between “common knowledge”/”basic knowledge”/”common sense”. Can you help me out? What is the difference between “common knowledge” and “basic knowledge” or “common sense”? Are you saying that if the PTO takes official notice on the basis of “common knowledge”, then it need not back up the notice, once challenged, with a reference or an affidavit, because “common knowledge” somehow differs fundamentally from “basic knowledge” and “common sense”?

It seems like you believe that the PTO indeed excised that section of the MPEP to stop applicants from citing it, but that you don’t have any inside information one way or other.

docket February 26, 2009 at 2:34 am

Is it still timely if a traversal to an Official Notice is submitted in a subsequent response (instead of the immediate response to the Office Action having the Official Notice) where the Examiner repeats the same Official Notice in subsequent Office Actions and hasn’t yet indicated that the Official Notice is taken as admitted prior art? Please explain your answers. Thanks!

Paul V. Keller October 26, 2011 at 2:40 pm

If you want to traverse official notice after the subsequent action, simply do so. In my opinion, you are unlikely to have a problem unless you are traversing the official notice for the first time when it is repeated in a final rejection. In that case, the examiner may cite MPEP 2144.03 in refusing to dig up evidence. If that happened and I needed to press the issue, I would file an RCE.

MPEP 2144.03(C) has some worrisome language. It states that if there has been official notice and applicant has not objected, the examiner should inform the applicant that the fact is being taken as admitted. I know of no law or regulation that would make such silence a binding admission. The failure to traverse Official Notice is on similar ground with the failure to separately argue a dependent claim rejection. It is routine for a reply not to address moot points, such as arguments that apply only to dependent claims when strong arguments addressing the independent claim rejections are already being presented. If the USPTO were to start arguing that these implied admission are binding, the result would be routine traversal by attorneys, lots of extra work for examiners, and unhappiness all around. As a practical matter, I do not see that happening.

Any experienced patent attorney knows better than to make needless work for an examiner. The examiners have it hard enough as it is. Maintaing good rapport with examiners is the key to smooth and effective patent prosecution. I recommend against traversing a point of official notice unless the traversal relates to one of your better arguments.

I was enough concerned about this issue modify the boiler plate at the conclusion of each office action reply to the following:

The applicant requests reconsideration of the pending claims in view of the foregoing amendments, remarks, and arguments. The applicant believes this reply places the application in condition for allowance and deems further traverse, including traverse of official notice, moot at this time. The applicant reserves the right to traverse additional aspects of the office action at a later date.

bob roberts June 1, 2012 at 10:15 pm

Mr. Keller raises a number of good points. US practice is far more constrained than JPO practice where examiners simply state that numerous dependent claims are merely conventional and don’t provide facutal support.

Often it appears that applicant’s fail to properly traverse. The applicant traverses the elements as being unknown rather than the specific elements of which offical notice was taken in combination with the other elements of the claims. This can be erroneous when Applicant’s specification fails to have sufficent disclosure to support those particular elements as being invented for the first time. This sometimes leads to examiners making enablement rejections or examiner interogatories in response to such overzealous traversals. Traversing well known standards is pretty silly for applicants representative, or disclosures found within IDS’s supplied by applicant would appear pretty silly to an examiner, and probably would look silly to a client as well. For example, traversing 802.3 (ethernet), AND gates, DOS directory structures, or even email clients for claims filed in the mid 2000’s as not being well known, rather than those features in combination with some presumably novel claim element.

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