Decided July 21, 2009
(Appeal 2009-001146; Appl. No. 10/689,379; Tech. Center 3700)
Ex parte Yardley reminds us that Official Notice is limited to facts, and taking Official Notice OF a legal conclusion is improper.
Some of the claims at issue here were directed to a method of making a paper napkin, and included limitations for dimensions and weight. The Examiner admitted that the reference did not teach ranges of dimensions, nor the weight of the product, but took Official Notice that "it would have been obvious to one of ordinary skill in the art to apply the folding method of [the reference] to various sizes and weights of webs including those of claims 82 and 87." (Decision, pp. 15-16.)
The Board held that Official Notice of obviousness is improper:
[Here] the assertion of official notice is not directed to establishing evidentiary facts, but is rather an attempt to establish the ultimate legal conclusion of obviousness as to the rejected claims. The procedures setting forth the circumstances in which official notice may properly be taken do not recognize any basis for the taking of official notice of a legal conclusion (MPEP § 2144.03), nor do we believe that this would be proper under any circumstances.The way I understand this, taking Official Notice of a fact is acceptable because a fact is a Premise from which a Conclusion is drawn. Thus, taking Official Notice is a merely a short cut to proving the fact with real evidence — a shortcut that is permissible in limited circumstances. On the other hand, short-cutting the entire analysis by taking Official Notice of the Conclusion itself is not acceptable.
(Decision, p. 16.)
Based on my own experience, and the BPAI cases I've read, it's pretty hard to traverse an assertion of Official Notice in a way that convinces the Board that you've complied with the law (see MPEP 2144.03(c), for starters). But if you ever see the Examiner taking Official Notice of a legal conclusion, argue that the MPEP § 2144.03 does not provide for this.
Obviousness is probably the strongest form of an "ultimate legal conclusion". But I think other aspects of obviousness analysis could be described as legal conclusions.
For example, I think you could traverse the following statement on the same grounds: "Official Notice is taken that it would be an obvious design choice to use an LCD display instead of a CRT display".
Or even this one: "Official Notice is taken that it's merely a matter of design choice to use an LCD display instead of a CRT display".
I find this blog post puzzling. It's an examiner's job to make legal conclusions. I've never seen an examiner phrase rejections in the manner of your examples, and I don't see why any examiner ever would. "Official Notice is taken that it's merely a matter of design choice to use an LCD display instead of a CRT display" is only a more laborious (and as you point out, incorrect) way of saying "It is merely a matter of design choice to use an LCD display instead of a CRT display", which is what examiners do state. One can argue whether they are correct, and whether they have appropriately resolved the Graham factors, but any legal conclusion is essentially "official notice" in character: the "Office" is giving you "notice" of their conlusion.
ReplyDeleteAlso, what's with the statement "it's pretty hard to beat an Examiner's assertion of Official Notice"? It's quite the opposite. All that must be done is to traverse the official notice. MPEP 2144.03 (C). Perhaps you mean "it's pretty hard to beat an assertion of official notice after you've already let it go uncontested", which amounts to an admission?
ReplyDeleteThanks for your comments, Robert K S. I welcome all comments, especially ones that disagree, as they force me to rethink my position.
ReplyDelete>I've never seen an examiner phrase rejections
>in the manner of your examples
It's probably not common. I've seen many, many Office Actions and have only seen this Official-Notice-of-obviousness a few times
>any legal conclusion is essentially
>"official notice" in character
I can see how you could characterize any rejection as OFFICIAL NOTICE in the sense that a rejection gives you NOTICE that the OFFICE is making a legal conclusion of unpatentability.
But the MPEP, together with case law, defines "Official Notice" in a much narrower way: only FACTS are susceptible to O.N., and even then only facts of a certain kind; Applicants must traverse O.N. in a specific way; and failure to traverse in this specific way.
It's this specific kind of Official Notice that my post was directed to.
>It's an Examiner's job to make legal conclusions
Agreed. In my post, I simply wanted to point out that Examiners are not allowed to shortcut the conclusion by taking Official Notice of the conclusion itself.
My original post said "Official Notice is ... inapplicable to legal conclusions." Your comment convinces me that my statement was far too strong, and was at least misleading if not flat out wrong.
More accurate is: "Taking Official Notice OF a legal conclusion is improper". That is, taking Official Notice of a fact is acceptable (in some circumstances) because a fact is a Premise from which a Conclusion is drawn, and taking Official Notice is a short cut to proving the fact with real evidence. But short-cutting the entire analysis by taking Official Notice of the Conclusion is not acceptable.
>Also, what's with the statement "it's pretty hard
ReplyDelete>to beat an Examiner's assertion of
>Official Notice"?
Your comment reveals that this part of my post was also misleading.
What I should have said is: It's pretty hard to traverse an assertion of O.N. in a way that convinces the Board that you've complied with MPEP 2144.03(c). I say that based on dozens of cases I've read where the Appellant traversed O.N. and the Board said the Appellant's traversal was inadequate.
>All that must be done is to
>traverse the official notice. MPEP 2144.03 (C).
Right: you must traverse in the manner required by law. MPEP 2144.03 says:
To adequately traverse such a finding, 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.
In my experience, this last part that is difficult -- it's kinda like proving a negative, right? I'd guess that at least half the time I traverse, the Examiner tells me that I haven't traversed as required, and therefore I've admitted.
If anyone is successful at traversing O.N., I'd love to know.
I do realize that the success rate of arguments against O.N. depends on what sorts of Noticed facts you're traversing. If you're constantly arguing against stuff like "Official Notice is taken that the earth revolves around the sun" .... well, then, I'd expect the success rate to be low.
>"it's pretty hard to beat an assertion
>of official notice after you've already
>let it go uncontested", which amounts to
>an admission?
Not what I meant, but you have a very good point: the MPEP is clear that Applicant has one shot at properly traversing O.N., otherwise you have admitted to the Noticed fact.