In re Kumar

Decision Date15 August 2005
Docket NumberNo. 04-1074.,04-1074.
PartiesIn re Sujeet KUMAR, Hariklia Dris Reitz, Xiangxin Bi, and Nobuyuki Kambe.
CourtU.S. Court of Appeals — Federal Circuit

Peter S. Dardi, Patterson, Thuente, Skaar & Christensen, P.A., of Minneapolis, Minnesota, for appellants. With him on the brief was Tye Biasco. Of counsel were Randall T. Skaar and Eric H. Chadwick.

John M. Whealan, Solicitor, Office of the Solicitor, of Arlington, Virginia, for the Commissioner of Patent and Trademarks. With him on the brief were James R. Hughes and Stephen Walsh, Associate Solicitors.

Before NEWMAN, Circuit Judge, ARCHER, Senior Circuit Judge, and DYK, Circuit Judge.

PAULINE NEWMAN, Circuit Judge.

Sujeet Kumar, Hariklia Dris Reitz, Xiangxin Bi and Nobuyuki Kambe (together "Kumar") appeal the decision of the Board of Patent Appeals and Interferences of the Patent and Trademark Office, rejecting claims 1-3, 5-16, and 19-22 of patent application Serial No. 09/136,483 entitled "Aluminum Oxide Particles" as obvious under 35 U.S.C. § 103. We vacate the Board's decision and remand for further proceedings.

BACKGROUND

The claims of Kumar's patent application are directed to aluminum oxide particles of submicron (nanometer) size,1 having a specified size range and size distribution. The specification describes the production of the particles by laser pyrolysis, but the claims at issue are directed to the particles themselves, independent of their method of production. Due to their very small size and high degree of uniformity, the particles are described as well suited for use in polishing compositions.

The examiner had rejected all of the product claims, and on appeal the Board treated claims 1 and 19 as representative. Process claims have been allowed, and are not at issue. Kumar agrees that all of the claims on appeal rise or fall with claims 1 and 19.

1. A collection of particles comprising aluminum oxide, the collection of particles having

an average diameter of primary particles from about 5 nm to about 500 nm and

less than about one in 106 particles have a diameter greater than about three times the average diameter of the collection of particles.

19. A collection of particles comprising aluminum oxide, the collection of particles having

an average diameter from about 5 nm to about 500 nm and

a distribution of particle sizes such that at least about 95 percent of the particles have a diameter greater than about 40 percent of the average diameter and less than about 160 percent of the average diameter.

The Board held the claims unpatentable on the ground of obviousness in view of U.S. Patent No. 5,389,194 (the Rostoker patent), which shows aluminum oxide particles of nanometer size. The Board found that the particle sizes and size distributions2 of the Rostoker particles and of Kumar's claimed particles are overlapping. Kumar concedes that the Rostoker particles overlap the Kumar particles in average particle size, but argues that they do not overlap in particle size distribution. The appeal relates primarily to the Board's procedure, wherein the values deemed to overlap appear for the first time in the Board's decision. Kumar states that he was unfairly precluded from replying to this evidence, and that the Board improperly refused to consider the responsive evidence submitted with Kumar's request for reconsideration.

The Board's calculations were derived from the Rostoker reference, which describes aluminum oxide having a particle size and size distribution as follows:

According to the invention, the alpha aluminum oxide particles used for polishing exhibit the following characteristics. Preferably, the particle size is "X" nm, and the distribution of particle sizes is controlled to within "Y" nm, and the particles used for polishing are "Z" percent (%) in the alpha phase, where:

"X" is 10-100 nm, such as 10, 20, 30, 40 or 50 nm, and is preferably no greater than 50 nm; and

"Y" is approximately "P" percent of "X", where "P" is 10%, 20%, 30%, 40% or 50%, and is preferably no greater than 50% to ensure a narrow (Gaussian) distribution of particle sizes about "X";

"Z" is at least 50%, including at least 60%, 70%, 80% and 90%, and as high as 100%.

A quality factor "Q" is inversely related to "Y", and is a measure of the distribution of particle sizes. "Q" can be calculated as the concentration of particles at the desired size "X", divided by the range of sizes of particles at 3 db (decibels) lower than "X". Preferably, the size distribution of alpha aluminum oxide particles used for polishing exhibits a "Q" of at least 10, including 10, 50, 100, 500, 1000, 5000, or 10,000 ("Q" is dimensionless).

Rostoker patent, col. 7, lines 4-27. The Board selected "X" and "P" values in the range disclosed by Rostoker, 10 nm and 10% respectively, to calculate a "Y" value of 1 nm (10 nm times 10% equals 1 nm), within which Rostoker's size distribution is controlled; this results in a particle size distribution range of 9-11 nm (10 nm ± 1). The Board found that this distribution range overlaps with the range in Kumar's claim 1, which the Board calculated to be 0-30 nm based on a particle size distribution controlled to within three times the average diameter (10 nm times 3 equals 30 nm). Thus the Board found that the Rostoker and Kumar distributions overlap.

Similarly, the Board selected "X" and "P" values in the range described by Rostoker, to calculate a "Y" value of 5 nm (10 nm times 50% equals 5 nm); this results in a Rostoker distribution range of 5-15 nm (10 nm ± 5). The Board found that this range overlaps with the range in Kumar's claim 19, which the Board calculated to be 4-16 nm based on the Kumar particle size distribution controlled to within 40-160% of the average diameter (10 nm times 40% and 160% equals 4 and 16 nm, respectively). The Board held that these overlapping values, and others shown by its calculations, established a prima facie case of obviousness of the Kumar particles.

These calculations had not been made by the examiner, and according to the record were not presented during the argument of the appeal to the Board. The Board apparently made these calculations during its decision of the appeal. The Board included these calculations in an Appendix to its decision, holding that they support a prima facie case of obviousness and that Kumar's evidence had not rebutted the prima facie case. Kumar's evidence included a declaration by co-inventor Dr. Kambe to the effect that Rostoker does not enable one of ordinary skill in the field of the invention to produce particles having Kumar's size range and distribution. Kumar cited Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed.Cir.1989), for the rule that "[i]n order to render a claimed apparatus or method obvious, the prior art must enable one skilled in the art to make and use the apparatus or method." See also Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1471 (Fed.Cir.1997); In re Payne, 606 F.2d 303, 314 (CCPA 1979). The Board rejected the Kambe declaration, finding that Mr. Kambe's assertions were conclusory and unsupported by evidence.

Kumar requested Board reconsideration, submitting the declaration of Dr. Rajiv Singh, Professor of Materials Science and Engineering at the University of Florida at Gainesville. Professor Singh explained that Rostoker's "Q" value defines size distribution, and criticized Rostoker's description of the "Q" value as internally inconsistent and not in conformity with standard representations of distribution functions. Professor Singh pointed out that Rostoker stated that he used the manufacturing method of Siegel, U.S. Patent No. 5,128,081, and opined that Siegel does not produce submicron particles. The Board refused to consider Professor Singh's declaration, ruling that Kumar had not shown good and sufficient reason why it was not earlier presented.

Kumar appeals, stating that a prima facie case of obviousness was not established, or if established was rebutted. Kumar objects to the tardy submission of the Board's calculations and states that he was entitled to consideration of Professor Singh's evidence. Kumar argues that the Singh evidence rebuts the prima facie case and that the Board should have either considered it or remanded to the examiner for that purpose.

DISCUSSION

Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); In re Oetiker, 977 F.2d 1443, 1444 (Fed.Cir.1992); In re Piasecki, 745 F.2d 1468, 1471 (Fed.Cir. 1984). We give plenary review to the Board's legal conclusion, whereas the underlying factual determinations are reviewed to ascertain whether they are supported by substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir. 2000). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938).

During examination, the examiner bears the initial burden of establishing a prima facie case of obviousness. Oetiker, 977 F.2d at 1445. The prima facie case is a procedural tool, and requires that the examiner initially produce evidence sufficient to support a ruling of obviousness; thereafter the burden shifts to the applicant to come forward with evidence or argument in rebuttal. Piasecki, 745 F.2d at 1475. When rebuttal evidence is provided, the prima facie case dissolves, and the decision is made on the entirety of the evidence. Oetiker, 977 F.2d at 1445; In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990); In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).

A

A prima facie case of obviousness may be made when the only difference from the prior art is a difference in the range or value of a particular variable. In re Peterson, 315 F.3d 1325, 1329 (Fed.Cir. 2003); In re...

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