Board finds no inconsistency with relying on Official Notice for a claimed feature while also asserting that this feature isn't supported by Applicant's sparse description

Takeaway: The Examiner denied the Applicant's priority claim to a provisional, for failure to adequately describe a claim limitation. According to the Examiner, some description was present, but not in the context claimed. The Examiner then used Official Notice for this same feature in an obviousness rejection. On appeal, the Applicant argued the "facial inconsistency" of these two positions: "asserting the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature." The Board was not persuaded by the inconsistency argument, and cited to Vas-Cath Inc. v. Mahurkar to explain that "a claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application." (Ex parte Timbadia, PTAB 2013.)

Details:
Ex parte Timbadia
Appeal 2010002877; Appl. No. 10/712,938; Tech. Center 3700
Decided: March 25, 2013

The application was directed to automated test-taking. During prosecution, the Applicant amended to add these limitations:

     delivering a changed state object at the same time that a triggering event occurs on the testing station;
     upon failure of the testing station, the [state objects] ... are used to recreate the examination on the testing station ... and
     wherein the user will not be penalized for the time that questions are not available.
(Emphasis added for limitations at issue.)

In response, the Examiner switched to a different secondary reference in the obviousness rejection (Ashley)of all independent claims. The Examiner relied on this secondary reference for the "at the same time" feature, and took Official Notice of the new "not penalized" feature. At the same time, the Examiner denied the priority claim because the newly added "at the same time" and "not penalized" features were allegedly not present in the provisional. However, Examiner did not reject any claims under written description or enablement.

In an After Final response, the Applicant argued that the Ashley reference was not prior art because the Applicant's provisional did provide an enabling disclosure for the newly claimed features. In support of this argument, the Applicant pointed to to specific passages in the provisional and explained their relevance. The Applicant also traversed the Official Notice as follows:

Applicants cannot fail to note that this portion of the claims so evidently and precisely enabled by the provisional application is also the same portion of the claims for which the Examiner has relied upon official notice. Per MPEP 2144.03, Applicants thus traverse such taking of official notice as improper as lacking sufficient documentary evidence. Citation of a post-dated alleged prior art reference by the Examiner is erroneous not only for the obviousness rejection presented, but also as grounds for taking official notice that the claimed feature is of such notorious character as capable of instant and unquestionable demonstration as to defy dispute. See In re Zurko, 258 F.3d at 1386.

The Applicant appealed. In the Brief, the Applicant specifically traversed the issue of the priority claim. The Applicant explained that the provisional application described using a test state to recover an exam after testing station failure, and this test state includes an elapsed test time that takes into consideration the amount of time that a test is unavailable to the user. Thus, Ashley was not prior art. In the obviousness section of the Brief, the Applicant also argued that Ashley did not teach the "at the same time" limitation. Notably, this section did not discuss the "not penalized" claim limitation or the Examiner's reliance of Official Notice for this feature.

In the Answer, the Examiner maintained the obviousness rejection of all independent claims. The Examiner discussed the denial of priority in the obviousness rejection. The Examiner acknowledged that the "not penalized" claim language was present in the provisional, but noted this was in the context of accounting for transmission latency rather than in the context of a recovery function (as claimed). In a Response to Arguments section, the Examiner noted there were "significant modifications" and "stark differences" between the provisional and the application on appeal. Also, the Applicant had failed to adequately traverse the Official Notice during prosecution, thus admitting that the "not penalized" feature was well-known.

The Applicant filed a Reply Brief which included a section titled "the Examiner's use of Official Notice was properly traversed, is improper and is Squarely Inconsistent with the Office's Contention that Subject Matter at Issue is Not Supported by Applicants'Own Provisional Application." The Applicant argued that the traversal was proper, as follows:

[T]he traversal highlighted the facial inconsistency in the examiner's logic of asserting that the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature.

On appeal, the Board made findings with regard to "Claims 1 and 13 – Written Description Support" since this issue was contested and impacted the obviousness rejection. The Board found that all features recited in claims 1 and 13 were adequately described in the provisional, so that Ashley was not prior art. With regard to the "not penalized feature," the Board found that the Examiner’s interpretation of what the provisional application describes was "unreasonably narrow." The Examiner incorrectly focused on the provisional's teachings about accounting for transmission latency, but a person of ordinary skill reading the document as a whole "would conclude that recreating the test based on the state of the test at the time of a testing station failure would require not penalizing the user for time lost due to this failure."

Since Ashely was not prior art for claims 1 and 13, the Board reversed the obviousness rejection of these claims. However, claim 20 used slightly different language to describe the "initial state object" feature, which the Board found was not adequately described in the provisional. The Board therefore considered the obviousness rejection of claim 20 on the merits, and affirmed.

With regard to the "at the same time" feature, the Board found no error in the Examiner's finding that Kershaw taught this feature. With regard to the "not penalized" feature, the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not "explain why the noticed fact is not considered to be common knowledge or well-known in the art" (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971)).

The Board also commented on the Applicant's inconsistency argument – that the Notice'd feature was completely missing in the reference yet textually supported by Applicant's provisional:

Appellants have not provided persuasive argument as to why the Examiner’s findings are inconsistent. A claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).

Finally, the Board noted that any alleged inconsistency was resolved by the Board's finding that the subject of the Official Notice ("not penalized" feature) was indeed properly supported in the provisional application.


My two cents: The Applicant's inconsistency argument has intuitive appeal, but is ultimately flawed. The argument goes like this: "Surely the Examiner's characterization of a feature as 'well-known' indicates that very little description is needed, in which case a sparse description of the same feature by the Applicant shouldn't result in a denial of the priority claim." However, this argument is flawed because it confuses enablement and written description.

A reference has only to enable. Since this can take into account the background knowledge of a POSITA, a sparse description may indeed be enough for enablement. On the other hand, the Applicant's spec has to comply with both the enablement and the written description requirement. And written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc)).

Unfortunately, when you have a sparse description of a particular embodiment that falls within the claim scope, then try to argue that a POSITA can fill in the rest, the case law on written description goes against you:

The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Lockwood v. American Airlines, Inc., 107 F. 3d 1565 (Fed. Cir. 1997).

Or, put another way:

A description of one method . . . does not entitle the inventor . . . to claim any and all means for achieving that objective."
LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).