Unusual use of Official Notice?

[Toot Aps Esroh]

I have a 103 rejection where the examiner strung together several references to arrive at my claim elements.  For some, the examiner states a facially plausible rationale for the combination.  For others, it is simply alleged that "the skilled person would find it obvious to modify Smith according to the teaching of Wesson because Official Notice"; that is, the O/N is substituted for the rationale for why one skilled would make the combination.

This is a new one on me.  Most often I see O/N used for things that are hardly arguable, such as taking official notice that small arms ammunition often comprises a brass jacket material, so that the Office isn't required to find another reference for some dependent feature "wherein the jacket of said ammunition comprises brass".  Haven't seen O/N pinch hitting for the required reasoned statement for obviousness.

[Robert K S]

I would first want to be sure that "Official Notice" isn't used in the Office action as a throwback to something more fully explained elsewhere in the action.

If not (and perhaps even if so), this is the sort of thing that gets applicants and their representatives piping mad, because the PTO has been told by the Federal Circuit again and again it's exactly the sort of thing that's not allowed.  E.g., Van Os at 1631; Nuvasive at 1383.  I cannot speak to your case without all the facts (and would not do so even given all the facts!) but when I have been faced with stuff that's gotten me as mad as this would make me, my SOP is to take a breath, then begin the process of calling up the chain of command to politely demand explanation.

[fewyearsin]

Does the rejection literally just say "because Official Notice"?  Or does it say "because the examiner takes Official Notice that XYZ was well-known at the time of invention" or something like that? 

In the first instance, the examiner has most likely not properly taken Official Notice.  Official Notice should be used where "the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known."  If the first instance is the case, what facts were even asserted by the Examiner?  It will be hard for you to rebut the Official Notice if you don't have anything concrete to rebut. 

In the second instance, you can (and absolutely should, if there is any chance they are wrong) attack the facts that the Examiner says are Official Notice, and/or require the Examiner to provide evidence of the assertion.  NOTE that if you don't challenge the Official Notice in the next response, the Examiner can enter the Official Notice as admitted by the Applicant.  MPEP 2144.03(C) says "If applicant does not traverse the examiner's assertion of official notice or applicant's traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate."

This seems to be a perfect candidate for a phone call.

This may be (1) an experienced examiner improperly taking short cuts, (2) a new examiner who just found out about Official Notice and is giddy as can be because it is super easy to use, (3) an examiner in a rush just finishing off his Action with Official Notice where he hadn't found art yet, (4) an examiner who knows that the rejection is weak, but wants you to put something on the record that he can rely on to allow the claims, or (5) the Official Notice may be proper, and you need to re-read it one more time to see what the Examiner is saying.

Good luck!

[Toot Aps Esroh]

Thank you both for your comments.  Definitely to me does not appear to be a case of taking O/N of a fact.  It was simply provided for some of the combination rationales.  It was a 5-way combination against a main claim.

For A modified by B, there was recited some random favorable outcome mentioned in B's background, used for the rationale to combine.  For A (as now modified by B) further modified by C, there was no rationale stated, just "it would be obvious to further modify ABC with D AB with C".  Period.
[cut/paste error corrected]

Then for the modified ABC as further modified by D, and the thus-modified ABCD further modified by E, each just said "it would be obvious to do this combination - official notice".

I haven't spent much time with D and E as yet but would be surprised if the examiner couldn't have come up with some favorable outcome stated in them, to use as the rationale, that would have been at least as logical as the one that was taken from B.

Sounds like a case of running out of time.

Examiner has been there what would seem long enough to be a primary, but does not appear to be (didn't sign it that way).

[Robert K S]

The examiner doesn't have a leg to stand on and probably knows it, but for whatever reason, quotas or what-have-you, couldn't issue a (first-action?) allowance.  Perhaps a thoroughly argued traversal will result in an allowance.  Or you may need to take it to appeal.  In either case you could be wasting your time with an indignant set of phone calls.  I have often wondered if in some cases I have perhaps reduced, rather than increased, chances of allowance by getting an examiner who, in spite of a similarly ridiculous Office action, was otherwise disposed to withdrawing what the examiner knew to be flimsy rejections, by making the examiner think less favorably of me on a personal level in the course of an interview.  Respecting appeals they know they will lose, do examiners have a motto analogous to police officers' "You may beat the rap, but you can't beat the ride"?

[Toot Aps Esroh]

I don't tend to get mad or indignant about these sorts of things, other than the brief/initial WTH IS THIS GUY THINKING? type of reaction. 

All the times I've called and asked about really wacky stuff, I've always gotten the same answer:  The Devil SPE Made Me Do It.

[snapshot]

That's a terrible use of Official Notice. 

I will add that, from my time at the PTO, attorneys are just as bad at responding to Official Notice assertions as examiners are at properly applying it.

[ThomasPaine]

Most use of Official Notice is awful. 

And most replies to it are equally awful. 

It shouldn't be permitted.  If the "facts" noticed are capable of "instant and unquestionable demonstration as being true" then it shouldn't take an examiner any time to find the evidence to support the fact.  I make sure that examiners foolish enough to use it in cases I'm handling learn that.

[Robert K S]

I will add that, from my time at the PTO, attorneys are just as bad at responding to Official Notice assertions as examiners are at properly applying it.

As in, failing to traverse it at all, or what?

On rare occasion I do not traverse official notice because ultimately it would not be productive, but when I do, which is often, I use some form language that I vary as applicable.  Among other things, it cites 37 C.F.R. 1.104(d)(2) and requests an examiner affidavit if the examiner intends to rely on personal knowledge.  As we have hashed and rehashed many times on this forum, despite what it says in MPEP 2144.03(C), it is not actually necessary for the applicant to "stat[e] why the noticed fact is not considered to be common knowledge or well-known in the art," a requirement wholly unsupported by either of the MPEP's authority-citations (37 CFR 1.111(b) and Chevenard, 139 F.2d at 713), and one which, in any case, is illogical inasmuch as it purports to require proving a negative when it is the examiner who possesses the burden of proving unpatentability (In re Oetiker, 977 F.2d 1443, 1445), and is particularly impossible when the allegation of official notice is so vague as to not state what facts (as opposed to legal conclusions, which it should never be proper to "notice") are being officially noticed.  The MPEP might as well require the applicant to prove or disprove the existence of the Divinity.

[ThomasPaine]

What you said.

I have written volumes on what utter bullshirt MPEP 2144.03 is.  I'll cut and paste and revise as necessary.

[snapshot]

I will add that, from my time at the PTO, attorneys are just as bad at responding to Official Notice assertions as examiners are at properly applying it.

As in, failing to traverse it at all, or what?

Oh, where do I begin?

There's failing to traverse at all.

There's traversing late after I've made the finding of Official Notice final.

There's traversing when I haven't actually taken Official Notice.

There are improper traversals.

I can't remember the last time I had to actually back up a finding of Official Notice.  It's been many years.

[Robert K S]

There are improper traversals.

This is the category that concerns me.  Virtually every time I have traversed an official notice statement I have been told that my traversal was improper (see above).  To the contrary, I think it should be impossible, or virtually so, to make an improper traversal of official notice.  A simple statement that the official notice is traversed should be all that is necessary to throw the ball back in the examiner's court.  And if the official notice was made properly in the first place then it should involve almost no effort at all on the part of the examiner to respond since, as MPEP 2144.03(A) reflects, official notice should only be used for "facts beyond the record which... are capable of such instant and unquestionable demonstration as to defy dispute" (to quote the Federal Circuit's paraphrase of Wigmore on Evidence).

[fewyearsin]

There are improper traversals.

This is the category that concerns me.  Virtually every time I have traversed an official notice statement I have been told that my traversal was improper (see above).  To the contrary, I think it should be impossible, or virtually so, to make an improper traversal of official notice.  A simple statement that the official notice is traversed should be all that is necessary to throw the ball back in the examiner's court.  And if the official notice was made properly in the first place then it should involve almost no effort at all on the part of the examiner to respond since, as MPEP 2144.03(A) reflects, official notice should only be used for "facts beyond the record which... are capable of such instant and unquestionable demonstration as to defy dispute" (to quote the Federal Circuit's paraphrase of Wigmore on Evidence).

Problem #1 - most examiners have ZERO legal training, and don't understand what a "burden" is in the legal sense.  To them, they made a rejection, so it is up to Applicant to respond, and if Applicant responds "improperly," then the examiner wins!

Reality, as you know, is that the Official Notice rejection must meet a certain threshold to shift the burden from the examiner to the Applicant.  If the Examiner has not met that threshold, then the burden never shifts to Applicant, and no matter how poorly Applicant responds, the burden is still the Examiner's to properly establish Official Notice.

That is, many examiners think it is a game where they can latch on to a single deficiency in Applicant's response to absolve themselves of any of their own deficiencies.  Such is not (or should not be) the case.

[snapshot]

There are improper traversals.

This is the category that concerns me.  Virtually every time I have traversed an official notice statement I have been told that my traversal was improper (see above).  To the contrary, I think it should be impossible, or virtually so, to make an improper traversal of official notice.  A simple statement that the official notice is traversed should be all that is necessary to throw the ball back in the examiner's court.  And if the official notice was made properly in the first place then it should involve almost no effort at all on the part of the examiner to respond since, as MPEP 2144.03(A) reflects, official notice should only be used for "facts beyond the record which... are capable of such instant and unquestionable demonstration as to defy dispute" (to quote the Federal Circuit's paraphrase of Wigmore on Evidence).

I'm not sure how a mere statement of "I traverse your finding of Official Notice" is enough, especially in light of 37 CFR 1.111(b) (which the MPEP does mention in 2144.03(C)).  How does just saying "I traverse" point out the supposed error in the rejection?

[Robert K S]

Without exception, when official notice is traversed, the error in the rejection is that no prima facie case has been made because the rejection is not based an any evidence whatsoever, much less substantial evidence.  An applicant should scarcely need say this when "I traverse" is apparent shorthand for such statement.  "I traverse" in all cases means "prove it" which should be sufficient.

For the Patent Office to require more asks the impossible and breaks the functionality of the examiner-applicant relationship in terms of burden of production.  A PTO that can offer "official notice" for anything and everything, and thereby leave a vacuum of no substance in place of evidence and/or reasoning, and can refuse to countenance traversal that "fails to point out the error" in said vacuum, is a PTO that can never go wrong.