In the patent prosecution process, official notice can play a supporting role in streamlining examination by allowing examiners to assume certain facts without requiring formal evidence. However, as with every tool in the examiner’s kit, there are limits to its proper use—limits that every practitioner should understand and vigilantly monitor.
Specifically, official notice refers to facts that the USPTO is permitted to accept as true without supporting evidence because they are either so well known or can be readily verified from reliable sources. The MPEP explains that examiners may take such facts as established for the record provided they meet the criteria of being capable of such instant and unquestionable demonstration as to defy dispute (MPEP §2144). This approach helps streamline the examination process by eliminating the need to prove widely recognized information.
An important procedural aspect of official notice is the requirement that applicants should raise objections to any officially noticed facts at the first opportunity and provide reasons in support of their traverse. If an applicant does not contest these facts, or does so without sufficient reasoning, they can be deemed established in the record for all subsequent proceedings.
While official notice is a powerful tool for examiners, it is not without its constraints. Generally, the facts that may be officially noticed must be indisputable and not subject to significant debate. They are meant to provide a baseline of information rather than serve as the sole foundation for a rejection. For example, it is generally improper for an examiner to rely on official notice as a basis for combining references under 35 USC Section 103. This is exactly the situation in a recent case before the PTAB.
The case is Appeal 2024-001839, Application 14/912,702. The claimed subject matter relates generally to a semiconductor device including an InGaAlN-based nitride semiconductor layer, wherein the nitride semiconductor is polycrystalline or amorphous. Claim 1 on appeal is as follows:
1. A field effect transistor, comprising:
a foundation layer;
a nitride semiconductor layer as an n-type channel, the nitride semiconductor layer consisting of a nitride semiconductor having a formula of In xGa yAl zN where x, y, and z satisfy x+y+z=l.0, 0.3 ≤ x ≤ 0.99, and 0 ≤ z <0.4, wherein the nitride semiconductor is polycrystalline or amorphous;
an insulating layer provided on a surface of the nitride semiconductor layer; and
a gate electrode provided on and directly bonded to a principal surface of the insulating layer and facing the nitride semiconductor layer such that the insulating layer is interposed between the gate electrode and the nitride semiconductor layer, wherein the nitride semiconductor layer is provided on and in direct contact with the foundation layer and has a thickness of from 1 nm to 10 nm, wherein the foundation layer is an insulating substrate, or an insulating amorphous layer provided directly between a substrate and the nitride semiconductor layer, and wherein the field effect transistor is a depletion type field effect transistor.
The Examiner provided the following reasoning in support of an obviousness rejection: “it would have been obvious . . . to provide an insulating amorphous layer directly between a substrate and the nitride semiconductor layer . . . in order to provide support to the device.” The PTAB considered this improper use of official notice:
We interpret this as the Examiner taking Official Notice. Typically, such official notice of facts is used to supplement or clarify the teaching of a reference disclosure or to justify a particular inference to be drawn from a reference teaching. Thus, facts “so noticed” serve to “fill in the gaps” which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection. However, it is improper to take official notice of facts which comprise the principal evidence upon which a rejection is based. In re Ahlert, 424 F.2d 1088, 1092 (CCPA 1970) (“[w]e know of no case in which facts judicially noticed comprised the principal evidence upon which a rejection was based or were of such importance as to constitute a new ground of rejection when combined with the other evidence previously used.”). Here, we find that the Examiner has improperly taken official notice on facts which comprise the principal evidence upon which the rejection is based. As such, we are constrained by the record before us to find that the Examiner erred …
Official notice can be a useful tool for examiners, but its scope is intentionally limited. The requirement that objections be raised, along with the clear reasons for the traverse, relies on applicants to police examiner’s overuse. Further, limits, such as those set forth in In re Ahlert, ensure that officially noticed facts cannot undergird a rejection on their own. By staying vigilant and challenging any overreliance on this doctrine, practitioners can put the USPTO to their proofs.