K/S Himpp v. Hear-Wear Technologies, LLC

United States Court of Appeals
for the Federal Circuit
______________________

K/S HIMPP,
Appellant,

v.

HEAR-WEAR TECHNOLOGIES, LLC,
Appellee.
______________________

2013-1549
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,022.
______________________

Decided: May 27, 2014
______________________

ROBERT GREENE STERNE, Sterne, Kessler, Goldstein &
Fox PLLC, of Washington, DC, argued for appellant.
With him on the brief were JON E. WRIGHT and JASON
EISENBERG.

SHEILA KADURA, Fulbright & Jaworski L.L.P., of Aus-
tin, Texas, argued for appellee. With her on the brief was
JONATHAN S. FRANKLIN, of Washington, DC.
______________________

Before LOURIE, DYK, and WALLACH, Circuit Judges.
2 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

Opinion for the court filed by Circuit Judge LOURIE.
Dissenting Opinion filed by Circuit Judge DYK.
LOURIE, Circuit Judge.
K/S HIMPP (“HIMPP”) appeals from the decision of
the United States Patent and Trademark Office (“PTO”)
Board of Patent Appeals and Interferences (“Board”) in an
inter partes reexamination affirming the Central Reexam-
ination Unit (“CRU”) Examiner’s decision not to reject
claims 3 and 9 of U.S. Patent 7,016,512 (the “’512 patent”)
owned by Hear-Wear Technologies, L.L.C. (“Hear-Wear”). *
See K/S HIMPP v. Hear-Wear Techs., L.L.C., No. 2012-
004028, 2012 WL 2929630 (B.P.A.I. July 13, 2012)
(“Board Opinion”). Because the Board did not err in
holding that claims 3 and 9 would have been obvious, we
affirm.
BACKGROUND
Hear-Wear owns the ’512 patent, which is directed to
a hearing aid with three main parts: a behind-the-ear
audio processing module, an in-the-canal module, and a
connector between the modules. ’512 patent col. 1 ll. 17–
20.
Dependent claims 3 and 9, directed to the connector
between the modules, are the only claims on appeal and
read as follows:

* The Leahy-Smith America Invents Act amended
the inter partes reexamination provisions. See Leahy-
Smith America Invents Act, Pub. L. No. 112–29, § 6, 125
Stat. 284, 299–305 (2011) (“AIA”). Those amendments do
not apply here because the request for inter partes reex-
amination in this case was filed before the date of enact-
ment, September 16, 2011. Id. We thus express no
opinion on the applicability of the AIA provisions to the
current case.
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 3

3. The at least partially in-the-canal module for
a hearing aid of claim 2 wherein said insulated
wiring portion is terminated by a plurality of
prongs that provide a detachable mechanical and
electrical connection to an audio processing mod-
ule.
9. The hearing aid of claim 8 wherein said insu-
lated wiring portion is terminated by a plurality of
prongs that provide a detachable mechanical and
electrical connection to said behind-the-ear mod-
ule.
Id. col. 23 ll. 41–45; col. 24 ll. 36–39.
During prosecution of the ’512 patent, the Examiner
initially rejected claims 3 and 9 because they would have
been obvious. For claim 3, the Examiner found that
“providing a plurality of prongs for the electrical connec-
tions or for the plugs is known in the art.” J.A. 4282.
Hear-Wear never challenged the Examiner’s finding of
“known in the art,” but instead focused on the independ-
ent claims. All claims were allowed.
The PTO then granted a third party request by
HIMPP for inter partes reexamination of the ’512 patent.
HIMPP argued in its request that claims 3 and 9 would
have been obvious because “such detachable connections
were known at the time of the alleged invention as con-
cluded by the Examiner during prosecution.” Id. at 138–
40. HIMPP also argued that modifying Patent Coopera-
tion Treaty Publication Number WO 99/07182 of Shennib
(“Shennib”), a primary reference, to include detachable
connections for a signal cable “would have been no more
than the predictable use of prior art elements according to
their established functions.” Id. at 138–41. The CRU
Examiner refused to adopt HIMPP’s proposed rejection
because HIMPP failed to provide evidence in support of
that contention. The CRU Examiner ultimately main-
4 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

tained the patentability of claims 3 and 9, inter alia. Id.
at 709.
After the CRU Examiner issued the Right of Appeal
Notice in the inter partes reexamination, HIMPP filed a
request for ex parte reexamination of claims 3 and 9.
HIMPP asserted that one basis for the ex parte reexami-
nation was U.S. Patent 3,123,678 of Prentiss (“Prentiss”),
which HIMPP contended explicitly taught all of the
features recited in claims 3 and 9. HIMPP tried to merge
the inter partes reexamination with the ex parte reexami-
nation, but the PTO declined to merge the two proceed-
ings, noting that the inter partes reexamination had
already advanced to the appeal stage.
Hear-Wear appealed to the Board from the inter
partes reexamination under 35 U.S.C. §§ 134(b) and
315(a) and HIMPP cross-appealed under 35 U.S.C.
§§ 134(c) and 315(b). Board Opinion at 2. Only HIMPP’s
cross-appeal of claims 3 and 9 in the inter partes reexami-
nation is at issue here. The Board found that although
HIMPP argued that the content of claims 3 and 9 was
“well known,” HIMPP failed to direct the Board “to any
portion of the record for underlying factual support for the
assertion.” Id. at 24. The Board stated that it was “not
persuaded that the record before [it] adequately conveys
that the particular distinct connection structures set forth
in those claims are disclosed.” Id. The Board also found
that during the original prosecution the Examiner never
took official notice with respect to the “plurality of prongs”
feature of claims 3 and 9, and that there was no further
indication that Hear-Wear acquiesced to the alleged
position of official notice so as to qualify the limitations of
the claims as admitted prior art. Id. at 23–24. Thus, the
Board did not agree with HIMPP that there was a suita-
ble basis for concluding that the particular structural
features of claims 3 and 9 were known prior art elements.
Id. at 24. Accordingly, the Board affirmed the CRU
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 5

Examiner’s decision not to adopt HIMPP’s proposed
obviousness rejections of claims 3 and 9. Id.
HIMPP timely appealed. We have jurisdiction pursu-
ant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
tion of law, based on underlying factual findings. Gra-
ham v. John Deere Co., 383 U.S. 1, 17–18 (1966); KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007). A claim
is invalid for obviousness if, to one of ordinary skill in the
pertinent art, “the differences between the subject matter
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made . . . .” 35 U.S.C. § 103(a)
(2006); see also KSR, 550 U.S. at 406–07.
I
HIMPP argues that the CRU Examiner and the Board
failed to consider the knowledge of a person having ordi-
nary skill in the art solely because HIMPP did not provide
documentary evidence to prove purportedly well-known
facts. HIMPP asserts that refusing to consider the
knowledge of a person having ordinary skill in the art
because of a lack of record evidentiary support is contrary
to the Supreme Court’s supposed admonishment in KSR
against the overemphasis on the importance of published
articles and the content of issued patents.
Hear-Wear responds that HIMPP’s assertions of
“known in the art” cannot substitute for the factual evi-
6 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

dence required to conclude that a structural element is a
known prior art element. Hear-Wear argues that the
Board acted within its discretion when it declined to enter
new rejections against claims 3 and 9 because HIMPP
failed to identify the factual evidence necessary to support
its contention that the claims would have been obvious.
We agree with Hear-Wear that the Board was correct
to require record evidence to support an assertion that the
structural features of claims 3 and 9 of the ’512 patent
were known prior art elements. The patentability of
claims 3 and 9 with the limitation “a plurality of prongs
that provide a detachable mechanical and electrical
connection” presents more than a peripheral issue. See In
re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001) (“[Board]
expertise may provide sufficient support for conclusions
as to peripheral issues.”). The determination of patenta-
bility of claims with this limitation therefore requires a
core factual finding, and as such, requires more than a
conclusory statement from either HIMPP or the Board.
See id. (“With respect to core factual findings in a deter-
mination of patentability, however, the Board cannot
simply reach conclusions based on its own understanding
or experience . . . .”). HIMPP must instead “point to some
concrete evidence in the record in support of these find-
ings.” Id.
The requirement that evidence on the record is neces-
sary to support the “plurality of prongs” limitation is not
inconsistent with KSR’s caution against the “overempha-
sis on the importance of published articles and the explicit
content of issued patents.” KSR, 550 U.S. at 419. In
KSR, the Supreme Court criticized a rigid approach to
determining obviousness based on the disclosures of
individual prior art references that were already on the
record, with little recourse to the knowledge, creativity,
and common sense that an ordinarily skilled artisan
would have brought to bear when considering combina-
tions or modifications. Id. at 415–22. But the present
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 7

case does not present a question whether the Board
declined to consider the common sense that an ordinarily
skilled artisan would have brought to bear when combin-
ing or modifying references.
Instead, it is about whether the Board declined to ac-
cept a conclusory assertion from a third party about
general knowledge in the art without evidence on the
record, particularly where it is an important structural
limitation that is not evidently and indisputably within
the common knowledge of those skilled in the art. Cf.
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir.
2013) (Board’s failure to consider evidence of the
knowledge of one of skill in the art was plainly prejudi-
cial).
Here the Board refused to adopt HIMPP’s proposed
rejection of claims 3 and 9 because it found that there was
not a suitable basis on the record “for concluding that the
particular structural features of claims 3 and 9 [were]
known ‘prior art’ elements.” Board Opinion at 24. The
Board’s decision was correct because an assessment of
basic knowledge and common sense as a replacement for
documentary evidence for core factual findings lacks
substantial evidence support. Zurko, 258 F.3d at 1385–
86. Accordingly, the Board’s holding is not inconsistent
with KSR’s caution against the overemphasis on publica-
tions and patents for combining or modifying prior art
that are already on the record. See, e.g., Leapfrog Enter.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007) (“Indeed, the common sense of those skilled in the
art demonstrates why some combinations would have
been obvious where others would not.”) (citing KSR, 550
U.S. at 416). In contradistinction to KSR, this case in-
volves the lack of evidence of a specific claim limitation,
whereas KSR related to the combinability of references
where the claim limitations were in evidence.
8 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

The PTO examination procedure further supports
Hear-Wear’s position. Although a patent examiner may
rely on common knowledge to support a rejection, that is
appropriate only in narrow circumstances. See M.P.E.P.
§ 2144.03 (“It 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.”) (emphasis in original). In this
case, neither the Board nor the Examiner determined that
the facts at issue met the standard justifying official
notice. If an examiner chooses to rely on personal
knowledge to support the finding of what is known in the
art, and the applicant adequately traverses that asser-
tion, then the examiner must provide an affidavit or
declaration setting forth specific factual statements and
explanations to support that finding. 37 C.F.R.
§ 1.104(d)(2); M.P.E.P. § 2144.03(c). Thus, the CRU
Examiner did not err in rejecting HIMPP’s contention
that the structural features of claims 3 and 9 were known
prior art elements because HIMPP failed to point to any
evidence on the record.
We recognize that the Board has subject matter ex-
pertise, but the Board cannot accept general conclusions
about what is “basic knowledge” or “common sense” as a
replacement for documentary evidence for core factual
findings in a determination of patentability. Zurko, 258
F.3d at 1385–86. To hold otherwise would be to embark
down a slippery slope which would permit the examining
process to deviate from the well-established and time-
honored requirement that rejections be supported by
evidence. It would also ultimately “render the process of
appellate review for substantial evidence on the record a
meaningless exercise.” Id. at 1386 (citing Baltimore &
Ohio R.R. Co. v. Aberdeen & Rockfish R.R. Co., 393 U.S.
87, 91–92 (1968)). Because HIMPP failed to cite any
evidence on the record to support its contention that
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 9

claims 3 and 9 were known prior art elements, we affirm
the Board’s decision to refuse to adopt HIMPP’s obvious-
ness contention.
II
Alternatively, HIMPP asks that we take judicial no-
tice: (1) that use of a multi-pronged plug to form a detach-
able mechanical and electrical connection at the end of an
insulated wire would have been known to a person having
ordinary skill in the art at the time of the invention or (2)
of the Prentiss reference cited by HIMPP in the ex parte
reexamination.
We decline to exercise our discretion to take judicial
notice of any “multi-pronged plug” knowledge for the
same reasons mentioned above that it was reasonable for
the Board and Examiner to decline to take official notice.
See Murakami v. U.S., 398 F.3d 1342, 1354–55 (Fed. Cir.
2005) (application of judicial notice is discretionary).
We also decline to take judicial notice of the Prentiss
reference and to expand the scope of our review beyond
the grounds upon which the Board actually relied. In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing SEC v. Chenery Corp., 332 U.S. 194, 196
(1947)). The PTO’s rules make clear that an inter partes
reexamination requester may not, except in limited
circumstances, submit new prior art evidence that was
not cited in the reexamination request. 37 C.F.R. § 1.948
(listing exceptions not applicable here). The scope of the
inter partes reexamination is otherwise limited to the
prior art that raises a substantial new question of patent-
ability as determined by the Director. Belkin Int’l, Inc. v.
Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012). Prentiss
was a part of the ex parte reexamination, but the PTO, as
was within its discretion, explicitly declined to merge the
two proceedings. Since HIMPP did not cite the Prentiss
reference in its request for inter partes reexamination and
the Director did not cite the reference for the substantial
10 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

new question of patentability, we decline to consider the
Prentiss reference. Id.; 37 C.F.R. § 1.948.
CONCLUSION
Because HIMPP failed to cite any evidence on the rec-
ord to support its contention that claims 3 and 9 of the
’512 patent contained only known prior art limitations, we
affirm the Board’s decision to decline to adopt HIMPP’s
obviousness contention.
AFFIRMED
 United States Court of Appeals
for the Federal Circuit
______________________

K/S HIMPP,
Appellant,

v.

HEAR-WEAR TECHNOLOGIES, LLC,
Appellee.
______________________

2013-1549
______________________

Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Reexamination
No. 95/001,022.
______________________
DYK, Circuit Judge, dissenting.
This should be an easy case, reversing the quite odd
decision of the United States Patent and Trademark
Office (“PTO”) that it could not consider whether multi-
pronged electrical connections were well known in the
prior art. But the majority does not reverse. It affirms. In
my view, this case raises important questions regarding
the role of the PTO in making obviousness determina-
tions.
The majority holds that patent examiners, in address-
ing questions of obviousness, may not rely on their expert
knowledge and common sense about what is well known
in the art except “in narrow circumstances” involving
peripheral issues. The narrowness of this exception is
2 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

illustrated by the holding in this case. Although the claim
limitation—a plurality of prongs that provide a detacha-
ble mechanical and electrical connection—was well known
as of the patent’s 2001 priority date, the majority holds
that the examiner could not resort to the common
knowledge of one skilled in the art, but rather was con-
fined to considering only the evidence of record.
In my view, the majority’s holding is inconsistent with
the Supreme Court’s decision in KSR International Co. v.
Teleflex Inc., 550 U.S. 398 (2007), and will have substan-
tial adverse effects on the examination process. The
majority adopts a “[r]igid preventative rule[] that den[ies]
factfinders recourse to common sense” even though the
Court held such rules “neither necessary under our case
law nor consistent with it.” Id. at 421. Precluding examin-
ers from using their knowledge and common sense signifi-
cantly impairs their ability to review applications
adequately and undermines the purpose of post-grant
agency review. I respectfully dissent.
I
The claimed invention is a hearing aid with separate
behind-the-ear and in-the-canal components. See ’512
patent col. 5 ll. 4–6; id. col. 1 ll. 17–20. During the initial
prosecution of the ’512 patent, the examiner rejected all
claims as obvious in view of multiple prior art references.
With respect to dependent claims 3 and 9, which recite
wiring portions “terminated by a plurality of prongs that
provide a detachable mechanical and electrical connec-
tion,” id. col. 23 ll. 43–44, col. 24 ll. 37–38, the examiner
stated that “providing a plurality of prongs for the electri-
cal connections or for the plugs is known in the art,” and
concluded it “would have been obvious to one skilled in
the art to provide the prongs for the electrical connec-
tions . . . for providing [] better electrical connections.”
J.A. 4282. The applicant did not contest the examiner’s
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 3

findings. In response to the rejection, the applicant
amended the “cushion tip” element of independent claims
1 and 7 to recite “a cushion tip . . . wherein during deflec-
tion said tip portion assumes an offset angle relative to
said tubular body and said speaker module.” J.A. 4294.
The applicant’s patentability argument hinged on the
novelty of the tip portion. The PTO allowed the claims
based on the alleged novelty of the tip portion.
Appellant K/S HIMPP (“HIMPP”) requested inter
partes reexamination. The examiner and Board rejected
all claims as obvious—except dependent claims 3 and 9—
and found the claims to a hearing aid device with the
recited tip portion obvious in view of multiple prior art
references. HIMPP argued that claims 3 and 9 were
similarly obvious. The only difference between those
claims and the rejected claims was “a plurality of prongs
that provide a detachable mechanical and electrical
connection,” and HIMPP argued that “such detachable
connections were known at the time of the alleged inven-
tion as concluded by the Examiner during prosecution.”
J.A. 138, 140. The examiner in the inter partes reexami-
nation declined to adopt the rejection on the ground that
K/S HIMPP submitted “no evidence in support of re-
quester’s contention.” J.A. 415. The Board affirmed the
examiner, explaining that “although HIMPP asserts that
the content of claims 3 and 9 is ‘well known,’ notably,
HIMPP does not direct us to any portion of the record for
underlying factual support for the assertion.” J.A. 25. The
Board cited no authority for the proposition that examin-
ers cannot rely on common knowledge and common sense.
Neither the examiner nor the Board even addressed
the question of whether a plurality of prongs used to
make a detachable connection was well known in the art
at the time of the patent’s 2001 priority date. Before the
examiner, before the Board, and in this court, the patent-
ee never argued that the pronged connection was novel or
4 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

uncommon. In fact, during oral argument here, the pa-
tentee conceded that “if you think about it as just an
electrical plug, it is well-known.” Oral Argument Tr.
15:28–32, available at http://www.cafc.uscourts.gov/oral-
argument-recordings/all/himpp.html. Every purchaser of
electrical devices in the United States for the past 50
years or more is familiar with multipronged electrical
connections. The majority here nonetheless sustains the
claims based on the PTO’s conclusion that there was no
record evidence showing such a connection to be known in
the prior art.
II
The question is whether the PTO was obligated to
utilize its expert knowledge to determine whether the
connection was well known in the prior art. As the Su-
preme Court has recognized, “the primary responsibility
for sifting out unpatentable material lies in the Patent
Office.” Graham v. John Deere Co., 383 U.S. 1, 18 (1966).
The assumption that PTO examiners will use their
knowledge of the art when examining patents is the
foundation for the presumption in 35 U.S.C. § 282(a) that
issued patents are valid. See Microsoft Corp. v. i4i Ltd.
P’ship, 131 S. Ct. 2238, 2243 (2011) (quoting Am. Hoist &
Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359
(Fed. Cir. 1984) (holding that § 282 codified the common
law presumption of validity based on “the basic proposi-
tion that a government agency such as the [PTO] was
presumed to do its job.” (citing Morgan v. Daniels, 153
U.S. 120, 124 (1894) (the PTO is “a special tribunal,
intrusted with full power in the premises”)))).
Just as the PTO’s expert knowledge is the foundation
for the presumption of validity, in Dickinson v. Zurko, the
Court held that the agency’s expert knowledge was the
foundation for the substantial evidence standard of appel-
late review. 527 U.S. 150, 162 (1999). That holding rested
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 5

on the recognition that “the PTO is an expert body, or
that the PTO can better deal with the technically complex
subject matter, and that the PTO consequently deserves
deference.” Id. at 160. The Court explained that the PTO’s
technical expertise was the type of “reason[] that courts
and commentators have long invoked to justify deference
to agency factfinding.” Id. (citations omitted); see also
Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012) (recognizing
that the “PTO has special expertise in evaluating patent
applications”).
Deference to the agency’s expert knowledge is particu-
larly important with respect to obviousness. “Throughout
[the Supreme] Court’s engagement with the question of
obviousness, [its] cases have set forth an expansive and
flexible approach . . . .” KSR, 550 U.S. at 415. The Court
emphasized that “[r]igid preventative rules that deny
factfinders recourse to common sense . . . are neither
necessary under our case law nor consistent with it.” Id.
at 421. The Court specifically rejected the approach that
the majority adopts here, stating that “[t]he obviousness
analysis cannot be confined by . . . overemphasis on the
importance of published articles and the explicit content
of issued patents.” Id. at 419. Publications and patents
are not sufficient by themselves because “[i]n many fields
it may be that there is little discussion of obvious tech-
niques or combinations.” Id.
III
The majority’s narrow approach to obviousness here
relies primarily on our court’s decision, In re Zurko, 258
F.3d 1379, 1386 (Fed. Cir. 2001), which predates the
Supreme Court’s decision in KSR. In Zurko, we held that,
as to core (as opposed to peripheral) issues, “the Board
cannot simply reach conclusions based on its own under-
standing or experience—or on its assessment of what
would be basic knowledge or common sense.” Id. That
6 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

statement is contrary to the Court’s holding in KSR that
“[o]ften[] it will be necessary for a court to look to . . . the
background knowledge possessed by a person having
ordinary skill in the art” when examining obviousness,
550 U.S. at 418 (emphasis added), and that “[r]igid pre-
ventative rules that deny factfinders recourse to common
sense . . . are neither necessary under our case law nor
consistent with it.” Id. at 421. 1 The majority’s approach
here is inconsistent with KSR itself and also with our
post-KSR approach. Following KSR, we recognized that
the Court “expanded the sources of information for a
properly flexible obviousness inquiry to include . . . the
background knowledge, creativity, and common sense of
the person of ordinary skill.” Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009).
Consequently, obviousness inquiries “include recourse to
logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require
explication in any reference.” Id.
The majority’s approach is also contrary to case law of
our predecessor court, which, prior to Zurko, repeatedly
held that an examiner could rely on verifiable facts within
his knowledge to reject claims. The court expressly held
that the Board “may take notice of facts beyond the record
which, while not generally notorious, are capable of such
instant and unquestionable demonstration as to defy
dispute.” In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)
(citing In re Knapp Monarch Co., 296 F.2d 230 (CCPA
1961)). The court explained that, in the context of patent
examination, judicial notice principles are “designed with
the purpose in mind of fully utilizing the independent and
specialized technical expertise of the Patent Office exam-

1 To the extent that the MPEP § 2144.03 reiterates
the holding of Zurko, it is also inconsistent with KSR.
K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC 7

iners while balancing the applicant’s rights to fair notice
and an opportunity to be heard.” Id. at 1092.
Under that approach, the court repeatedly affirmed
rejections based on the examiner’s knowledge that a
limitation was well known in the art. See, e.g., In re Fox,
471 F.2d 1405, 1407 (CCPA 1973) (affirming rejection
where examiner took “[o]fficial notice of the existence in
the art of such recording and re-recording steps” for
copying the contents of one audio tape onto another); In re
Larson, 340 F.2d 965, 968 (CCPA 1965) (affirming rejec-
tion because “the use of a one piece construction instead of
the structure disclosed in [the prior art] would be merely
a matter of obvious engineering choice”); In re Soli, 317
F.2d 941, 946 (CCPA 1963) (examiner stating that “a
control is standard procedure throughout the entire field
of bacteriology” did not have to cite supporting prior art);
In re Dulberg, 289 F.2d 522, 524 (CCPA 1961) (upholding
rejection of claims where prior art did not disclose limita-
tion of lipstick holder but it was “obvious and common to
remove obstructions from the interior of tubular articles
by pushing them out by means of an inserted member”);
In re Stevens, 212 F.2d 197, 198–99 (CCPA 1954) (adjust-
able fishing rod handle was not patentable as substitution
was obvious over prior art).
The majority’s concerns about potential unfairness in
relying on the examiner’s specialized knowledge are not
well taken in view of recognized safeguards. First, to
ensure meaningful challenge and review, we have held
that examiners must state on the record that they are
relying on a fact well known in the art and provide their
rationale for doing so. In Perfect Web, we explained that
“to invoke ‘common sense’ or any other basis for extrapo-
lating from prior art to a conclusion of obviousness, a
district court must articulate its reasoning with sufficient
clarity for review.” 587 F.3d at 1330; see also TriMed, Inc.
v. Stryker Corp., 608 F.3d 1333, 1342 (Fed. Cir. 2010)
8 K/S HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC

(“Although reliance on common sense does not require a
specific evidentiary basis . . . a district court must articu-
late its reasoning with sufficient clarity for review.”)
(internal quotation marks omitted).
Second, we have held that applicants must have the
opportunity to challenge the examiner’s determination
that particular features were common knowledge in the
art. See Ahlert, 434 F.2d at 1091 (requiring that appli-
cants be given “the opportunity to challenge the correct-
ness of the assertion or the notoriety or repute of the cited
reference”); MPEP § 706 (“The goal of examination is to
clearly articulate any rejection early in the prosecution
process so that the applicant has the opportunity to
provide evidence of patentability and otherwise reply
completely at the earliest opportunity.”); MPEP
§ 2144.04(C) (“To adequately traverse such a finding, an
applicant must specifically point out the supposed errors
in the examiner’s action, which would include stating why
the noticed fact is not considered to be common knowledge
or well-known in the art.” (citing 37 C.F.R. § 1.111(b))).
I respectfully dissent from the majority’s affirmance of
the Board. I would reverse the Board’s decision and
remand for proceedings consistent with the Supreme
Court’s decision in KSR.