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[smgsmc]

Hi.  There was a related post, but I can't find it.  Examiner issues a rejection based on prior art.  Practitioner does not traverse rejection.  Material becomes admitted prior art.  Situation:  Examiner rejects independent Claim 1.  I traverse.  Examiner rejects Claim 2, dependent on Claim 1.   I respond with the boilerplate:  "Claim 2 is allowable as being dependent on allowable independent Claim 1."  Is the boilerplate sufficient traversal to avoid future issues of admitted prior art for Claim 2?  Thanks. 

[Isaac]

Is the boilerplate sufficient traversal to avoid future issues of admitted prior art for Claim 2?  Thanks. 

Assuming that you are referring to a taking of "Official Notice"... probably not.  Most likely the examiner will confirm in the next OA that you have admitted the facts of which Official Notice was taken.

[mk1023]

Your question doesn't make a whole lot of sense to me. I suggest you rephrase.

[smgsmc]

Your question doesn't make a whole lot of sense to me. I suggest you rephrase.

Sorry about that.  Isaac's interpretation is correct.  In a First Office Action, the Examiner issues a rejection of a dependent claim.  The rejection includes the statement, "Official notice is taken that ___ was well known in the art at the time of applicant's invention."  Practitioner does not address this specific point, but responds with, "Claim 2 is allowable as being dependent on allowable independent Claim 1."  In a Second Office Action, the Examiner writes back, "Official notice was taken in a previous Office Action that ____ was well known in the art at the time of the applicant's invention.  Since applicant has not traversed the statements under Official notice, the statements have since become applicant admitted prior art." 

Let me expand the original question.  Do you need to traverse the specific statement, or is traversing the rejection adequate to avoid admitted prior art?  For example, 103 rejection based on Ref. A in view of Ref. B together with statement.  I traverse the rejection on the basis that Ref. A and Ref. B do not disclose what the Examiner says they disclose.  If I don't traverse the statement specifically as well, does the statement become admitted prior art?

[JustAnotherExaminer]

There's not a whole lot of material and insight on the procedures and law surrounding official notice.  That's why I use it as much as possible and in almost every FAOM.  I would guess that you would need to traverse the actual statement of official notice.

[JimIvey]

Generally, if Claim 1 is novel and non-obvious, every claim that depends on Claim 1 is also novel and non-obvious.

If you want to challenge Official Notice, you're supposed to do it seasonably, i.e., when it first comes up, I would think.  On occasion, I've written something like "The Examiner has taken Official Notice that pigs can fly.  Since Claim 2 is allowable for at least the reasons given above with respect to Claim 1, Applicant does not challenge the Examiner's Official Notice but reserves the right to seasonably do so should this Official Notice become directly relevant to the allowability of Claim 2."  That's never not worked, but I can't say for sure that it ever served its purpose.

Lately, I argue many claims, including limitation in the dependent claims, so I would probably challenge the Official Notice right away, unless the examiner is correct in taking the Official Notice.

Regards.

[Jonathan]

Fascinating (Spock eyebrow arch).

I just saw a pig flying.