Rules And Practice Tips Regarding Official Notice At The U.S. Patent And Trademark Office

What is Official Notice?

MPEP §2103(VI) states that when a rejection is imposed, the "Office action should clearly communicate the findings, conclusions and reasons which support them." Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.

Occasionally, however, an Examiner may eschew documentary evidence on the record and instead opt to rely solely on his or her own opinion in support of a rejection. In such a situation, the Examiner might "take official notice" to establish the veracity of an assertion made by the Examiner that a particular claim limitation is well-known in the art.

Official notice allows an Examiner to support a rejection by making a declaration of facts not in the record, but instead based on "common knowledge" in the art, according to MPEP §2144.03. But only in very limited circumstances is taking official notice without documentary evidence to support an Examiner's conclusion permissible.

MPEP §2144.03 provides a general rule of thumb for determining when it is appropriate for the Examiner to take official notice in making a rejection: "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" (emphasis added). As an example, the court ruled in In re Fox, 471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973), that it was proper to take official notice "of the fact that tape recorders commonly erase tape automatically when new 'audio information' is recorded on a tape which already has a recording on it." In In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970), the court held it was proper to take official notice that "it is old to adjust intensity of a flame in accordance with the heat requirement."

Conversely, MPEP §2144.03 instructs that official notice is inappropriate when making assertions of "technical facts in the areas of esoteric technology or specific knowledge of the prior art." The court in In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973), ruled that facts "constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice." When taking official notice of facts asserted to be common knowledge, the Examiner must...