Ex parte Fletcher

Informative decision only: persuasive authority, not binding precedent. When an examiner takes Official Notice in an Office Action and the applicant's next response contains no traversal within the proper time frame, the Board may treat the Official Notice as not properly traversed, and an appellant cannot later contest it on appeal without citing a specific traversal in the record. Here the Board also held, alternatively, that the notice was acknowledged correct for fungible goods and that extending it to non-fungible goods was an obvious, predictable modification. No prior Board precedent is named in the decision as addressing this issue; the decision cites no earlier Board authority on failure to traverse Official Notice. For examiners, the decision means an Official Notice finding stands unrebutted if the applicant's first response after the notice never traverses it, and the Board will check the response itself. For applicants and appellants, an argument raised for the first time on appeal that the Official Notice was incorrect for the claimed subject matter will fail unless the brief points to a specific traversal in a timely response, and conceding the notice for related subject matter hurts. The Board's obviousness analysis rested on KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and Graham v. John Deere Co., 383 U.S. 1 (1966), which frame the predictable-variation inquiry. LEGAL TEST OR STANDARD: The decision states no multi-factor test for traversal. The Board examined whether the appellants specifically traversed the Official Notice in the response to the Office Action in which it was taken, in the proper time frame. Obviousness was assessed under Graham and KSR, asking whether the modification is a predictable use of prior art elements according to their established functions. TRIGGERING FACTS: The examiner took Official Notice in the Office Action of February 20, 2007 that it was well known in e-commerce to inspect an item only after the purchase is complete. The appellants' May 9, 2007 response contained no traversal, and their Appeal Brief cited no specific traversal. They also acknowledged the notice was correct for fungible goods but argued it was incorrect for non-fungible goods. KEY QUOTE: "Regardless, a review of the Appellants’ May 9, 2007 response shows that no traversal was taken of the Official Notice by the Appellants in the proper time frame as required." (p. 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: Traverse any Official Notice specifically and expressly in the very next response after it is taken, and in the appeal brief cite the exact page of that traversal; do not rely on first raising the objection on appeal.