Examples Of How To Respond To Takings Of Official Notice – Part II

This is the second in a two-part series on Official Notice and strategies for responding to rejections based on Official Notice.  In part one of this series, I discussed basic principles of Official Notice.  What follow are a few examples of responses to rejections based on the principles discussed in my earlier post.

Example 1 – An Improper Taking of Official Notice

Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.

In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:

It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.

Applicant respectfully traverses this attempted use of Official Notice as improper.  Consequently, a necessary element of a prima facie case is absent.

Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.”  Official Notice, however, is only proper for facts.  (MPEP § 2144.03).  Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”.  (MPEP § 2144.03(A)).  It is improper to use Official Notice for conclusions of law.

Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based.  Official Notice cannot be used in this manner.  As Section 2144.03(A) of the MPEP expressly warns, 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 and that serve to “fill in the gaps” in a rejection.  (MPEP § 2144.03(A)).  This is why official notice is to be judicially applied.  (MPEP §  2144.03).  It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.

Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP.  Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable.  Moreover, courts have long rejected the notion that official notice can be taken on the state of the art.  (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)).   Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.

In sum, the Office’s attempts at Official Notice are improper and traversed.  Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.

Example 2 – An Ambiguous Taking of Official Notice

Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact.  If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.

Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure.   The Office has failed to meet these obligations.  Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03.  MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that 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)).  Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.

Finally, I recommend reviewing the cited Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy from the first example.  It is a useful summary of the USPTO’s policies and instructions to its Examiners.

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© 2008, Michael E. Kondoudis

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