As you have probably seen in your own practice, Official Notice is often taken by Examiners in obviousness rejections under 35 U.S.C. § 103, especially for rejections of
dependent claims. Sometimes, these rejections are applied to features that almost certainly are common knowledge, such as where a dependend claim for a software invention
recites that a computer-readable medium is a hard disk. However, in our experience, it is rare that Official Notice is applied correctly since the rules for a proper
application of Official Notice are fairly rigorous. A key motivation for the rigorous rules is likely to attempt to mitigate the temptation to apply Official Notice to
features that the Examiner cannot find in a claim that the Examiner intuivively feels is obvious. In the example used for this template, the Examiner took
Official Notice without providing a supporting reference. It may be beneficial to respond to such an application of Official Notice along the lines of the
following. However, requesting a reference will not prevent an Examiner from making a next Action final if the Examiner is able to provide such a reference.
With respect to the rejection of the claims, Applicant finds nothing, and the Office Action also did not provide a citation to the cited art in support of, an alleged
teaching or suggestion of the above-recited features of claim X. Rather, Office Action appears to be taking Office Notice that these features are allegedly obvious.
Applicant respectfully submits that the application of Official Notice in the outstanding Office Action is improper.
With respect to Official Notice, the MPEP states that “such rejections should be judiciously applied” (see MPEP § 2144.03). Applicant notes that contrary to the
caution advised by the MPEP, in this case, the Office Action liberally applied Official Notice to a majority of the claims for various conclusory reasons that are not
supported by the record. The MPEP goes on to mandate that “Official notice without documentary evidence to support an [E]xaminer’s conclusion is permissible only
in some circumstances” (see MPEP § 2144.03(A)). “It would not be appropriate for the [E]xaminer to take official notice of facts without citing a prior art reference
where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known” (see Id., emphasis added).
“For example, assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation
to some reference work recognized as standard in the pertinent art. In re Ahlert, 424 F.2d at 1091, 165 USPQ at 420-21” (Id., emphasis added). Applicant notes
that no such support has been provided in this case. Reviewing courts must rely on the record, and the Federal Circuit has always required that absent the case where
Official Notice is “instant and unquestionable”, the Office Action must provide support and reasoning for Official Notice to be proper.
In the instant case, the Office Action stated, in part, “[QUOTATION]”. However, per the above, the facts asserted as well-known must be capable of instant and
unquestionable demonstration as being well-known, and Applicant does not believe that such is the case here. If the Examiner continues to believe that the
above-recited features are well known in the art, Applicant respectfully requests that the Examiner provide a reference or references in the next Office Action
allegedly offering evidence that this is the case.
If applicant adequately traverses the examiner's assertion of official notice, the examiner must provide documentary evidence in the next Office action if the
rejection is to be maintained. See 37 CFR 1.104(c)(2). See also Zurko, 258 F.3d at 1386, 59 USPQ2d at 1697 (“[T]he Board [or examiner] must point to
some concrete evidence in the record in support of these findings” to satisfy the substantial evidence test). If the examiner is relying on personal knowledge to
support the finding of what is known in the art, the examiner must provide an affidavit or declaration setting forth specific factual statements and explanation to
support the finding. See 37 CFR 1.104(d)(2).
(MPEP § 2144.03(C)). The legal standard for applying Official Notice under MPEP § 2144.03 is rigorous, and Applicant respectfully submits that the present application of
Official Notice falls short of meeting this high standard.
Per the above, the cited documents, both individually and in combination, fail to teach or suggest all of the features of the above-rejected claims. Accordingly, it
is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.