Appeal No. 2001-0121 Page 10
Application No. 08/212,185
do not agree with the examiner’s position that appellants have not challenged or
otherwise traversed the examiner’s position. As set forth in appellants’ (Brief,
page 16), “[t]he lone reference cited by the Examiner, Fu et al., does not contain
the teachings required to construct the methods as claimed. … The examiner
cannot cure these deficiencies solely by taking Official Notice.” Similarly,
appellants argue (Reply Brief, page 8), “the Examiner cannot establish the
requisite motivation and expectation of success to meet her burden for making a
prima facie case of obviousness by simply taking Official Notice, when the prior
art cited lacks both a critical component of the claim and the step of using that
component.”
Furthermore, we agree with appellants’ argument that the examiner has
improperly utilized the concept of Official Notice to supply a critical limitation of
appellants’ claimed invention that is missing in the prior art relied upon by the
examiner. As set forth in In re Ahlert and Kruger, 424 F.2d 1088, 1091, 165
USPQ 418, 420-21 (CCPA 1970) (Emphasis added):
the Patent Office … may take notice of facts beyond the
record which, while not generally notorious, are capable of such
instant and unquestionable demonstration as to defy dispute. In re
Knapp Monarch Co., 49 CCPA 779, 296 F.2d 230, 132 USPQ 6
(1961). This rule is not, however, as broad as it first might appear,
and this court will always construe it narrowly and will regard facts
found in such manner with an eye toward narrowing the scope of
any conclusions to be drawn therefrom. Assertions of technical
facts in areas of esoteric technology must always be supported by
citation to some reference work recognized as standard in the
pertinent art and the appellant given, in the Patent Office, the
opportunity to challenge the correctness of the assertion or the
notoriety or repute of the cited reference. Cf. In re Cofer, 53 CCPA
830, 354 F.2d 664, 148 USPQ 268 (1966), In re Borst, 52 CCPA
1398, 345 F.2d 851, 145 USPQ 554 (1965). Allegations
concerning specific “knowledge” of the prior art, which might be
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