Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's rejection based on the "well-known prior art" argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection.
Recall that M.P.E.P. §2144.03 states:
"Official notice without documentary evidence to support an examiner's conclusion is permissible only in some circumstances. While 'official notice' may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. 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."Thus, "official notice" should only be used in certain, well-defined circumstances. Note the requirement that the "well known prior art" must be capable of instant and unquestionable demonstration as being well-known. As a comparison, see my blog post from last year regarding the obligations that must be met by an Examiner when using an inherency rejection.
In today's Ex parte Chapman (Appeal No. 2009-010238) decision, the claims involved a web browser related invention. With regard to one claim element pertaining to information that is communicated via telephone or email, the Examiner's 35 U.S.C. §103 obviousness rejection included the statement:
"it is well known in the art that a customer contacts a customer service representative via telephone or email."That's all the Examiner had to say about that claim element. He did not cite to a patent, an article or any other tangible prior art reference. He simply stated it was well known prior art.
The Board did not agree with the Examiner's use of the "well known prior art" rejection. The Board decided:
"we find that simply asserting that 'it is well known in the art that a customer contacts a customer representative by phone or email' is unsupported speculation by the Examiner, which does not amount to a finding supportive of the Examiner's obviousness conclusion."
And thus, the BPAI reversed the Examiner's 103 obviousness rejection. I agree with this decision, especially in light of the In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) decision. On that topic, M.P.E.P. §2144.03 states:
It would not be appropriate for the examiner 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 ... It is never appropriate to rely solely on 'common knowledge' in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 ("[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.").
What does this mean for practitioners? This decision means that when you encounter rejections that include "official notice" or "well known prior art," you must ask yourself: Is the claim element being "officially noticed" or deemed "well known" capable of instant and unquestionable demonstration as being well-known? Note the bar is quite high. In the Ex parte Chapman case, the simple idea of a customer using a phone to deliver information to a customer service rep was deemed not to pass muster. This tells me it's difficult for an Examiner to defend "official notice" and "well known prior art" rejections. My advice is to challenge "official notice" and "well known prior art" rejections and demand that the Examiner provide some evidence to support his argument, as is required under In re Zurko and M.P.E.P. §2144.03. If no such evidence is provided, you may have good grounds for an appeal.