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« Conference & CLE Calendar | Main | Otonomy, Inc. v. Auris Medical, AG (Fed. Cir. 2018) »

August 05, 2018


I will note here that the portion of the Berkheimer memo with advice concerning "taking Official Notice" is itself IN CONFLICT with the Memorandum For Taking Official Notice**.

The Berkheimer memo has a (weak) out in that it does provide that the mere assertion by an applicant against Official Notice means that the examiner MUST drop the Official Notice route and provide real (APA-demanded) evidentiary support.

But it is more than a bit disingenuous (and a trap for the unwary) to suggest that an examiner may take Official Notice improperly.

**It is not proper to take Official Notice of items to establish a "state of the art." While this has been geared to "state of the art" in terms of the traditional 102/103 factors, conventionality is ALSO a state of the art condition.

Sadly, this path by the Office merely means that my clients will have to pay extra for an additional examination cycle with examiners trying to "slip one by" only to then have to backtrack and do what they were supposed to do in the first instance when I challenge them.

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