Board Analyzes the Role of Extrinsic Evidence to Assert Inherent Facts Not Capable of Instant and Unquestionable Demonstration as Being Well-Known in an Inherency Rejection

February 10, 2012 – Blog Post

In Ex parte Erickson, et al. (Appeal 2009-009972 in U.S. application serial no. 10/722,712), the Board of Patent Appeals and Interferences analyzed whether finding an inherent teaching of a claim feature in a prior art reference is proper absent any citation of supporting extrinsic evidence.    

The patent application on appeal described embedded disc information (EDI) used to identify optical media associated with a blue laser embedded in a blue laser medium, but readable by a red laser.  This subject matter was recited in Claim 1 as “an optical medium identification module associated with the optical drive and operable to illuminate an optical medium with a first of the plural lasers to detect identification information embedded on the optical medium that identifies the optical medium as associated with a second of the plural lasers.”   

In rejecting Claim 1 as being anticipated, the Examiner found that prior art reference U.S. 2003/0095487 A1 to Nishizawa inherently teaches “identification information embedded on the optical medium that identifies the optical medium.”  The Examiner’s Answer in the Appeal specifically asserted that the “identification information” disclosed by Nishizawa is the “size itself” of pre-pits formed in an optical medium.  However, the Appellants countered by arguing that without a supporting reference that specifies a relationship between Nishizawa’s determination of tracking errors and the pre-pit size, the anticipation rejection cannot stand.     

The Appellants’ argument persuaded the Board, which reasoned:

[i]t would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known.  For example, assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art.  See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970).  See also MPEP 2144.03(A).  An assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support.  In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).

To the Board, the Examiner’s reliance on knowledge of one skilled in the art without a supporting reference to establish that the pre-pit size constitutes “identification information” correlating with the tracking error determinations amounted to taking Official Notice of the inherent facts without substantial evidence support.  The Board thus reversed the rejection of the claims on appeal because the Examiner erred in finding that Nishizawa inherently teaches “identification information embedded on the optical medium that identifies the optical medium,” absent providing any extrinsic supporting evidence.      

Accordingly, to advance a proper rejection based on inherency, Ex parte Erickson, et al. emphasizes the criticality of citing extrinsic supporting evidence to assert inherent facts that are not capable of instant and unquestionable demonstration as being well-known.