Unusual use of Official Notice?

[ThomasPaine]

"...because the rejection is not based an any evidence whatsoever, much less substantial evidence." 

Rejections have to be based on a preponderance of the evidence, as that is the standard (i.e. burden) of proof in the PTO.  Substantial evidence is a standard of review, not a standard of proof.

The ONLY requirement to "traverse" (or "properly traverse" or whatever nonsense the MPEP says) an examiner's taking of Official Notice is a request for documentary evidence.

[ThomasPaine]

"There are improper traversals."

Please provide an example of an "improper traversal" to an examiner's taking of Official Notice.

[memekit]

I received an Examiner is not persuaded or arguments not found persuasive, rejection of traverse, even though I showed the dependencies and relationships of the compounds (common activity + synergy). 
Reminded me of
                      "We are not amused," said the Queen.

[ThomasPaine]

"Problem #1 - most examiners have ZERO legal training, and don't understand what a 'burden' is in the legal sense."

If the examiners don't understand what the burden of proof is, who has it and when, then WTF are they being taught in the "training academy"?

Of course, to teach the examiners they would need "teachers" who know what it is.  Guess that answers my own question.

[Robert K S]

Rejections have to be based on a preponderance of the evidence, as that is the standard (i.e. burden) of proof in the PTO.  Substantial evidence is a standard of review, not a standard of proof.

Kind of "six to one, half-dozen to the other" when, to a PTO disinterested in the standard, the only standard of relevance is the one on appeal.  In In re Abbott Diabetes Care, Inc., 696 F.3d 1142 (Fed. Cir. 2012), for example, it took a CAFC appeal to get the PTO to acknowledge the standard when the Board declined to.

Other CAFC decisions respecting official notice: In re Beasley, 117 F. App'x 739 (Fed. Cir. 2004) (official-notice-based rejections reversed); In re Samuel S. M. Sun, 31 U.S.P.Q.2D (BNA) 1451 (Fed. Cir. 1993) (despite traversal, official-notice-based rejections affirmed where "appellants' own specification acknowledges that 'conventional' methods are used in obtaining the claimed DNA"); In re Gleizer, 356 F. App'x 415 (Fed. Cir. 2009) (rejections affirmed where, inter alia, appellant apparently failed to object to the examiner's notice).

The ONLY requirement to "traverse" (or "properly traverse" or whatever nonsense the MPEP says) an examiner's taking of Official Notice is a request for documentary evidence.

Precisely, but in my opinion the statement "the official notice is traversed" suffices to make such a request.  I don't know if that issue has been litigated to the CAFC but I can't see them looking fondly on "magic words" shenanigans by the PTO in view of all the other official notice jurisprudence out there.

Of course, it's even worse when the PTO takes official notice without stating so.  I have had to argue that was what was happening several times on appeal.  Such an argument didn't gain the appellant much traction in In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011).

[ThomasPaine]

"Kind of 'six to one, half-dozen to the other' when, to a PTO disinterested in the standard, the only standard of relevance is the one on appeal."

Why is the PTO "disinterested" in the standard of proof? 

Rejections that are not supported by a preponderance of the evidence are improper and must be withdrawn and/or reversed.  The Board is certainly interested in the standard of proof.  That's why so many PTAB decisions in ex parte appeals cite Ethicon v. Quigg.  It's why I cite Oetiker all the time. 

[Robert K S]

Why is the PTO "disinterested" in the standard of proof?

Why are they or why should they not be?  They are, I presume, out of a common predilection for not wanting to be bothered.  The conversation is of this general form:

Practitioner: "Hey, in this Office action, you do this thing, but you're not allowed to do this thing."
Examiner/supervisor: "We did it, and the action is final, so prosecution is closed."
Practitioner: "Prosecution can't be closed because you can't do the thing that 'closed' it."
Examiner/supervisor: "You don't like it, appeal."

[snapshot]

"There are improper traversals."

Please provide an example of an "improper traversal" to an examiner's taking of Official Notice.

Telling me I MUST provide an affidavit to support my taking of Official Notice (ignoring the fact that I can just provide evidence instead) would be one example that I've seen.

In spite of what Robert K S says, I consider not telling me why my finding of Official Notice is wrong is another.

As I've already said in the thread, an untimely traversal is also improper.

To be honest though, the vast majority of times I apply Official Notice (which isn't often), the response simply ignores it.

[Robert K S]

To be honest though, the vast majority of times I apply Official Notice (which isn't often), the response simply ignores it.

Which should be the result when official notice is used properly--traversing good official notice wastes everybody's time, so unless the practitioner is playing games, there's no point to it.  In a perfect world official notice is never traversed because it is always "capable of such instant and unquestionable demonstration..."

I consider not telling me why my finding of Official Notice is wrong is another.

I say this is wrong both because in many cases it is impossible and more importantly because it places a burden on the applicant that the law assigns to the examiner.

As for it being impossible, to take just one example, how on earth is the OP supposed to tell the examiner "why the Official Notice is wrong" in a way that is not merely tautological?  In other examples, where the examiner makes an official notice finding of fact, how is the applicant supposed to explain the incorrectness of the official notice finding in a way that is not mere contradiction ("this is so"/"no, it isn't"), particularly where the applicant has no knowledge of the alleged fact and cannot opine on the correctness or incorrectness of it?

And that brings to the second point, the inappropriate burden shifting.  If the examiner wants to use official notice, the examiner must be ready to back it up with evidence without fuss, and the applicant cannot be required to perform research of the literature or novel experimentation to gainsay the examiner.  Because in many cases an applicant is incapable of contradicting an examiner, an applicant must never be required to do so in order to question the examiner, must never be required to refute official notice in order to traverse it.  If the burden of examination is not to be shifted to the applicant arbitrarily and thus potentially discriminatorily, the applicant must always have the privilege of demanding the examiner carry the full burden of examination even where the wrongness of official notice cannot be articulated.  In other words, the applicant must always be able to say, "I don't know whether what you have said is right or wrong, but I nevertheless demand you prove it to me."

[ThomasPaine]

"I consider not telling me why my finding of Official Notice is wrong is another."

It's wrong because you are required to resolve all factual questions by a preponderance of the evidence.  And by taking Official Notice you are telling Applicant that 1) you have no evidence and 2) you won't bother producing any evidence unless Applicant raises some objection.

I agree with Robert K S.  There is no requirement that Applicant invoke some "magic words" to inform you that they are objecting to your reliance on Official Notice.  Simply responding, "With respect to the taking of Official Notice, Applicants object" is all that is required.  Or "Applicants traverse the taking of Official Notice."  This ain't England in the 1600's where you had to write, precisely, "This is an action in replevin...." or "This is an action for trespass against chattels..." in order to make your point.  And get the requested relief.  The United States got rid of "form pleading" many, many years ago.  For good reasons.  Whether Applicants gets what Applicants are entitled to doesn't depend on whether they invoke the magic words.

As to the timeliness of the objection/traversal/whatever, yeah I guess not challenging the taking of Official Notice the first time is a waiver of the issue.  If Applicant doesn't regard the resolution of the particular factual issue to be important to their case, there's no reason to object to the taking of Official Notice with respect to that issue.  But your position of "Well, I see you're somehow objecting to my taking of Official Notice but because you didn't explain why it's wrong in words that I expect to see written out precisely as I require, I'm gonna ignore your objection" is ridiculous. 

You know why it's wrong.  Stop being coy or deliberately obtuse and produce the evidence.  Again, as the facts are supposedly capable of instant and unquestionable demonstration as being beyond dispute, what's the problem in producing the evidence?

[Toot Aps Esroh]

"What have I wrought?", he lamented.




Thanks all for this vigorous discussion!

[Toot Aps Esroh]

Hi All,

I've finally gotten around to working on this one and the rejection is so sketchy from a "what the art teaches" (no it dudn't) standpoint that my primary argument will be explaining why Ref1 doesn't teach 2 of the things the OA said it does, why Ref2 doesn't teach at least one of the things the OA said it does, etc., such that the entire combination of A+B+C+C+E fails to teach at least 4 of my elements.

It appears the examiner just word-searched broadly, but many of the word hits in the art are demonstrably not what I'm claiming (e.g., a 'boot' on a car in England DNE a 'boot' on a cowboy).

A fifth feature in claim 1 relates to relative sizes of components, and the Examiner did the no-no of using a Figure in the art (which was only just box diagrams in the first place) to assert it anticipates the relative size requirements because it kinda looks like item 10 is larger than item 20.

Sorry for the long wind-up; here's the question: Do I argue motivation in this case?  Normally when I've got a really easy showing of failure to teach, I won't argue all the motivation issues. 

Instead, I say something like, "Without arguing or admitting the propriety or motivation of the above-mentioned combination, the Applicant respectfully submits that the combination of A in view of B, further in view of C, still further in view of D, and even still further in view of E still fails to teach or suggest the following elements of claim 1....".

However, remember in this case that in a couple of cases "Official Notice" was supplied as the motivation to combine. 

Is it possible that by failing to explicitly argue these recitations of O/N, I could be admitting that it is a proper statement for the combination rationale?

Thanks for reading and any thoughts.  Maybe I just mention this use of O/N in a catch-all, say it looks like bad juju to Applicant, and point to the MPEP's discussion of the proper use of O/N.