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The author discusses the use by US patent examiners of admissions of prior art by patent applicants. Means of identifying admissions and determining their scope are outlined.

The doctrine of official notice may be involved when the US Patent & Trademark Office (PTO) rejects a patent application. Official notice has two rationales: to promote administrative efficiency and to take advantage of the PTO's technical expertise. Official notice may be taken either of widely notorious facts or of facts capable of prompt and indisputable verification. PTO Examiners should refrain from relying on official notice unless applicants have been forewarned.

Patent lawyers, examiners, and agents should familiarize themselves with the patent concept of teaching away and with other similar concepts from which it should be distinguished. The concept is used in litigation when lawyers or agents argue that prior art references would have discouraged persons of ordinary skills from making modifications or combinations. Understanding what teaching away is and is not and different ways of teaching away is important for clear argumentation during litigation processes.

Determining whether the decisions of a given federal court regarding ex parte patent prosecutions are binding on the US Patent and Trademark Office requires determining whether the court's jurisdiction includes appeals of patent matters. Decisions of the Supreme Court, the Court of Appeals for the Federal Circuit and the Court of Claims are all binding precedent under stare decisis. Decisions from the Court of Customs and Patent Appeals, other Courts of Appeals, the District Court for the District of Columbia, and the Board of Patent Appeals and Interferences may also be controlling.

The Federal Circuit's decision in Vas-Cath, Inc v. Mahurkar will be a useful guideline for determinations of whether patent applications can satisfy the requirements for a written description by using drawings. The court found that drawings may suffice if they meet the standards of In re Gosteli, and requirements for written descriptions are not the same as enablement. The court was correct to declare the drawings sufficient in the case.