In a previous post, we explored the limitations on the use of Official Notice in patent prosecution, emphasizing that while this tool can expedite examination, it is only appropriate when the noticed fact is truly capable of instant and unquestionable demonstration. But what happens when the Applicant disagrees with the use of Official Notice? In this post, we turn our focus to the procedural expectations around traversing Official Notice — and how some examiners may improperly try to sidestep their evidentiary responsibilities by imposing an unreasonably high burden on the Applicant.
As a refresher, Official Notice is a procedural shortcut that allows an examiner to assert a fact without citing documentary evidence, but only when that fact is capable of instant and unquestionable demonstration as being well-known. According to MPEP § 2144.03, if the applicant adequately traverses a statement of official notice, the examiner must support the finding with evidence.
If the Applicant disagrees with the Examiner's reliance on Official Notice, the Applicant must timely traverse the statement to avoid waiver. But the MPEP is clear that the standard for traversal is low. Per MPEP § 2144.03:
A general allegation that the claims define a novel and unobvious invention is not sufficient to traverse a finding of ‘official notice.’ However, a demand for documentary evidence of the alleged fact or a specific denial of the noticed fact is sufficient to traverse the taking of official notice.”
Once the Applicant traverses, the ball is in the Examiner’s court — the Examiner must then provide supporting evidence. Despite this clear guidance, some Examiners reject traversals by asserting they are “insufficient,” allowing them to maintain reliance on Official Notice without supplying evidence. This improper burden-shifting can be seen in a recent PTAB decision — and provides a reminder of the correct standard. The case is Application No. 16/787,115
The application, titled “Methods for Forming Liquid Flow Paths on a Surface of a Structure,” included the following independent claim:
1. A method comprising:
providing a structure having a surface;
treating a portion of the surface to modify a wettability of the portion of the structure, wherein said treating comprises one or more of printing on the portion, chemically etching the portion, or superficial foaming the portion; and
forming at least one liquid flow path on the surface through said treating.
The Examiner rejected the claim based in part on Official Notice, asserting without evidence that it was well known to treat surfaces to form hydrophilic and hydrophobic regions. The Applicant traversed the Official Notice not once, but multiple times — both during prosecution and again in the Appeal Brief. Below is the initial traversal in the response filed immediately after the Official Notice was made.
The PTAB was unequivocal in its analysis, noting that it “disagree[d] with the Examiner’s position that Appellant failed to traverse the Official Notice with ‘specific facts.’ … As a result, the Examiner has failed to respond sufficiently to Appellant’s traversal of Official Notice.” The Board affirmed that an adequate traversal “must contain sufficient information or argument to create on its face a reasonable doubt regarding the circumstances justifying the Examiner’s notice of what is well known to one of ordinary skill in the art.” (internal citations omitted).
Despite the multiple traversals, the Examiner never came up with the necessary evidence, but rather just dug in their heels and stated the traversals where insufficient. In the end, the Board concluded that the Examiner “failed to provide documentary evidence to support the finding that treating a surface via printing, chemically etching, and superficial foaming to form hydrophobic and hydrophilic regions are known in the art. … Accordingly, the Examiner erred in taking Official Notice and then treating the related findings as AAPA.”
Some takeaways for practitioners:
be precise and explicit in your traversal. Refer to the claims and demand documentary evidence. That should be enough.
however, it may also be prudent to add a further specific argument unique to the claim elements and/or statements made by the Examiner if the examiner persists in objecting to the form of the traversal
and even if the Examiner claims your traversal is “insufficient,” quote the MPEP and appeal if necessary — as the Board confirmed, an Applicant’s traversal only needs to raise reasonable doubt, not prove the negative
keep the record clean. Multiple, consistent traversals (as in this case) strengthen your position and increase the odds of reversal on appeal.
Remember, Official Notice is intended as a procedural shortcut for the examiner — but only where there is no dispute. When an Applicant raises a reasonable challenge, the shortcut ends and the normal evidentiary rules resume. The PTAB’s decision illustrated above is a clear reminder that the burden lies with the Examiner once traversal is made, not with the Applicant.