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.

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.

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

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?

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.

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