Appeal No. 2002-0984
Application 09/246,179
requirement that appellants make arguments which cast reasonable
doubt on the "Examiner's Notice" evidences a misunderstanding of
the law. It is the examiner's burden to make out a prima facie
case of obviousness of the claimed subject matter based on a
preponderance of the evidence. Appellants were not required to
rebut the examiner's mere conclusion of obviousness where that
conclusion was not supported by any evidence, let alone a
preponderance of the evidence. Further, it is of no moment that
appellants did not respond to the examiner's continued reliance
on the "Examiner's Notice" in their response to the final
rejection. What is relevant is that appellants have made that
argument in their brief.
Further, it may be appropriate under certain circumstances
to take official notice of a fact so notorious that it is capable
of instant and unquestionable demonstration. The boiling point of
water or the fact that under normal ambient conditions hydrogen
is a gas are examples of such facts. However, as the court
observed in In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420,
421 (CCPA 1970):
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. (citations
omitted) Allegations concerning specific "knowledge" of the
prior art, which might be peculiar to a particular art
should also be supported and the appellant similarly given
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