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".