Ex parte Chung et al. (PTAB, July 7, 2017) (Appeal No. 2016-007104, in Application Serial No. 12/814,025) (before Nappi, Deshpande and Kohut, APJ) (opinion by Deshpande, APJ).

In some rare circumstances, it is permissible for a patent examiner to take “Official Notice” without providing documentary evidence in support of a factual conclusion. However, Official notice unsupported by documentary evidence should only be taken by the examiner 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.” See M.P.E.P. § 2144.03(A) (citing In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970), and In re Knapp Monarch Co., 296 F.2d 230, 132 USPQ 6 (CCPA 1961)).

The issue of whether the Patent Office properly relied upon Official Notice was recently considered by the Patent Trial and Appeal Board in the decision of Ex parte Chung published on July 7, 2017.

The Examiner of the `025 Application rejected dependent claims reciting the use of so-called “private, read-only memory” in the claimed memory apparatus as being obvious. The Examiner justified the assertion of Official Notice, in part, because “A person of ordinary skill in the art would have recognized that storing starting and ending instructions in a private, read-only memory to ensure that the instructions are not tampered with and increase security of the code . . . would have been obvious to a person of ordinary skill in the art . . . .” (Final Rejection issued on January 23, 2015).

In affirming the rejections based on the Office Notice above, the Board relied upon the “reasonable doubt” standard articulated by the U.S. Court of Customs and Patent Appeals in In re Boon, 439 F.2d 724, 728, 169 U.S.P.Q. (BNA) 231 (CCPA, 1971). Under Boon, a satisfactory traverse of a finding of Official Notice “contain[s] adequate information or argument” to create on its face “a reasonable doubt regarding the circumstances justifying the . . . notice” of what is well known to a person of ordinary skill in the art. 439 F.2d at 728.

The Board in Ex parte Chung held that the applicants failed to establish a “reasonable doubt,” because the applicants did not include “a statement as to why the noticed fact is not considered to be indisputably and unquestionably well-known.” (p. 7). According to the Board, the applicants also failed to adequately and timely traverse the use of Official Notice by the Examiner.

The Manual of Patent Examining Procedure provides guidance for how to adequately challenge an Official Notice by the Patent Office, and how the Patent Office is required to respond. Section 2144.03(C) states that:

To adequately traverse such a finding, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. See 37 CFR 1.111(b). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241 (“[I]n the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention.”). A general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. 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).

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. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.