K/S HIMPP v. Hear-Wear Technologies

The casual observer will be struck that this case turns on the appeals court’s refusal to acknowledge that an electrical plug is a device well know to makers or hearing aids. But that is just a question of judicial restraint. Essentially, the court just focused on a missing element in the proofs submitted by a patent’s challengers.

The significant point in this opinion is that the examiner’s conclusory statement that “providing a plurality of prongs for the electrical connections or for the plugs is known in the art” did not constitute what the USPTO considers “official notice.” Official notice is a mechanism that examiners can use to save the time of proving facts that are thought to be easily provable. When an office action takes notice has of a fact, the applicant must challenge that notice in the next reply. If the applicant does not, the fact will be deemed admitted.

It is common practice, and best practice, not to make every possible argument or separately argue every claim when replying to an office action. Excessive argument creates estoppels, wastes client resources, and makes the relationship with the examiner more adversarial. A classic reply makes one or two effective arguments for each of the independent claims, with supporting amendments if deemed necessary. Redundant arguments are often withheld.

But rejections of dependent claims often include conclusory statements such as the ones that were at issue here. If those statements amount to official notice, they must be challenged in the next reply. If not challenged, they will be deemed admitted. If the grounds for rejection currently at issue can be easily overcome, must the applicant still parse every detail of the office action to avoid loss of rights? Must the applicant challenge every assertion the examiner has made, implicit or explicit, without regard to relevance? Thankfully, no.

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