How can an applicant challenge an examiner’s use of official notice?

How can an applicant challenge an examiner’s use of official notice?

An applicant can challenge an examiner’s use of official notice by following these steps:

1. Traverse the rejection: In the response to the Office action, explicitly traverse the examiner’s use of official notice.
2. Request evidence: Demand that the examiner provide documentary evidence to support the assertion.
3. Explain why it’s not well-known: Provide reasoning or evidence as to why the noticed fact is not considered to be common knowledge or well-known in the art.

The MPEP 2144.03(C) states:

“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.”

If the examiner fails to provide the requested evidence in the next Office action, the rejection should be withdrawn. However, if the examiner provides evidence supporting the official notice, the applicant must then present arguments or evidence rebutting the examiner’s position to overcome the rejection.

To learn more:

• official notice
• applicant challenge
• patent examination
• traverse rejection
• documentary evidence