Quick Post: Board of Patent Appeals Chimes In on “Well-Known Prior Art”

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed an obviousness rejection that relied on an examiner’s bare assertion that a claim limitation was “well known in the art.” The case involved a web-browser invention and a limitation concerning information communicated by telephone or email.

The examiner did not cite a patent, article, or other tangible reference for that limitation. Instead, the rejection simply stated that customers commonly contact service representatives by telephone or email.

The Board found that this unsupported statement amounted to speculation rather than a factual finding capable of supporting obviousness. Under the standards governing official notice, a supposedly well-known fact must be capable of instant and unquestionable demonstration, and the record still needs concrete evidentiary support when the point is central to the rejection.

The practical lesson is to challenge “official notice” and “well-known prior art” assertions when the examiner has not supplied evidence. If the examiner cannot document the alleged knowledge or show that it is truly indisputable, the rejection may be vulnerable on appeal.