During patent prosecution, Examiners may take Official Notice of facts which are not of record or utilize “common knowledge” to support a patentability rejection. As Official Notice is employed occasionally in Office Actions, it is important for a patent practitioner to understand when it is proper for an Examiner to take Official Notice. Further, if the Examiner’s taking of Official Notice is improper, the patent practitioner must traverse the taking in the immediate Response (to the outstanding Office Action) to avoid having the Examiner’s statement construed as admitted prior art.
Overview
Anytime an Examiner utilizes terms such as “Well Known“, “Common Knowledge“, or some variant thereof within an Office Action, it is likely that the Examiner is taking Official Notice of some fact (or feature) of a patent claim. Official Notice is typically employed in Obviousness rejections (35 USC 103) as a “factual gap filler” when the cited art does not explicitly describe a fact. Further, the Office Action will not necessarily use the terms “Official Notice” therein to describe the taking of Official Notice; but instead, will many times utilize the aforementioned terms (well known/common knowledge).
Legal
The legal standard for applying Official Notice was heightened by the CAFC in In re. Zurko due to the Supreme Court’s holding in Dickinson v. Zurko (CAFC should utilize the “substantial evidence” standard of review for factual determinations rendered by the USPTO rather than the “clearly erroneous” standard). The CAFC stated in Zurko that:
“The deficiencies of the cited references cannot be remedied by the Board’s general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art … We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.”
In view of the foregoing, a Patent Examiner is required to provide documentary evidence as indicated in MPEP 2144.03 – Reliance on Common Knowledge in the Art or “Well Known” Prior Art which states:
“Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances … Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.”
It should be noted that MPEP 2144.03 describes instances where documentary evidence will not be required necessarily (“desirable to make something faster, cheaper, better, or stronger” or “in a first Office action to take official notice of facts by asserting that certain limitations in a dependent claim are old and well known expedients in the art without the support of documentary evidence provided the facts so noticed are of notorious character and serve only to ‘fill in the gaps’”).
Conversely, “assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art.” (MPEP 2144.03) Furthermore, other instances where the Examiner is required to provide documentary evidence include references to a chemical theory or the state of the art.
The USPTO has provided further guidance regarding Official Notice in a memo entitled, “Procedures for Relying on Facts Which are Not of Record as Common Knowledge or for Taking Official Notice.“ This memo furthers the requirement for an Examiner to provide documentary evidence when requested by an Applicant.
The USPTO memo specifically states:
“Ordinarily, there must be some form of evidence in the record to support an assertion of common knowledge.9 In certain older cases, official notice has been taken of a fact that is asserted to be “common knowledge” without specific reliance on documentary evidence where the fact noticed was readily verifiable, such as when other references of record supported the noticed fact, or where there was nothing of record to contradict it.10 If such notice is taken, the basis for such reasoning must be set forth explicitly. The examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge.11 The applicant should be presented with the explicit basis on which the examiner regards the matter as subject to official notice and be allowed to challenge the assertion in the next reply after the Office action in which the common knowledge statement was made.”
Timing
The timing of the receipt of Official Notice is also a critical factor in determining whether the Examiner’s taking of Official Notice is proper. As indicated above, MPEP 2144.03 states that a first office action may include an Examiner’s taking of Official Notice. Contrastingly, Official Notice is “rare when an application is under final rejection or action under 37 CFR 1.113.” (MPEP 2144.03)
Applicant Traversal | Examiner Response to the Traversal
To properly traverse an improper taking of Official Notice, MPEP 2144.03 states that an Applicant must “specifically point out the supposed errors 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. See 37 CFR 1.111(b).” Further, failing to reference the Examiner’s taking of Official Notice while including general patentability arguments will not be considered an adequate traversal.
Once an Applicant has properly traversed the Examiner’s taking of Official Notice as stated above, the Examiner must provide support for their assertion in the next Office Action if the rejection is to be maintained. More specifically, the Examiner must provide the Applicant with concrete “documentary evidence” (technical publication/patent publication/etc.), else the Examiner must provide “an affidavit or declaration setting forth specific factual statements and explanation” supporting their assertion if the Examiner is relying upon personal knowledge.
As a final point, a subsequent Office Action may be made Final if another reference is included therein for the sole purpose of responding to the Applicant’s request for documentary evidence, and further, the additional reference may not be utilized by the Examiner for formulating a new art rejection; else, the Office Action may not be made Final.
Conclusion
In view of the heightened evidentiary standards required for a proper taking of Official Notice, the Examiner should (in a majority of instances) provide “documentary evidence” when requested in response to their assertion of Official Notice.