Ex Parte Kumar et al

Board of Patent Appeals and Interferences

Jul 20, 2009

09136483 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SUJEET KUMAR, HARIKLIA DRIS REITZ,
XIANGXIN BI and NOBUYUKI KAMBE
____________

Appeal 2009-002499
Application 09/136,483
Technology Center 1700
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Decided:1 July 21, 2009
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Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002499
Application 09/136,483

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1-3, 5-8, 11-16, and 19-22 (Final Office
Action, mailed Oct. 17, 2007). Claims 17 and 18, also pending, are allowed.
(Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The claimed invention is directed to highly uniform submicron
aluminum oxide particles (claims 1 and 19) and to polishing compositions
using the particles (claim 11). Claim 1 is illustrative of the subject matter on
appeal, and is reproduced from the Claims Appendix to the Appeal Brief
(“App. Br.”), filed Mar. 20, 2008:
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.

The Examiner relies on the following evidence to establish
unpatentability (Paper 20080609):
Rostoker 5,389,194 Feb. 14, 1995
Farkas 6,001,730 Dec. 14, 1999
Shimizu 4,842,837 Jun. 27, 1989
Chiruvolu 09/969,025 Oct. 01, 2001 (filing date)

Appellants request review of the following grounds of rejection (App.
Br. 6-7):
1. claims 1-3, 5-8, and 19-22 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Rostoker; and
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Application 09/136,483

2. claims 11-16 under 35 U.S.C. § 103(a) as unpatentable over
Rostoker in view of Farkas; and
3. claims 1-3, 5-8, and 19-22, provisionally, on the ground of
nonstatutory obviousness-type double patenting over the claims of
copending Application No. 09/969,025.
ISSUES
We identify the following issues as dispositive of the Appeal:
Have Appellants produced sufficient evidence to rebut the
presumption of operability of the Rostoker patent?
Have Appellants shown reversible error in the Examiner’s
determination that the ordinary artisan would have had a reasonable
expectation of success in producing Appellants’ claimed collection of
particles?
We answer these questions in the affirmative.
FINDINGS OF FACT (“FF”)
1. The Examiner relies on Rostoker’s claims and Example 3 for a
teaching of Appellants’ claimed collection of particles. (Examiner’s Answer
(“Ans.”), mailed Jun. 4, 2008, 4-5.)
2. Appellants contend that Rostoker is not enabled because the
ordinary artisan would not have known how to make a collection of particles
having Appellants’ claimed particle size distribution. (App. Br. 21-22.)
Appellants rely, inter alia, on the Section 132 Declaration of Dr. Rajiv K.
Singh (“Singh Dec.”) to establish that, at the time of Appellants’ invention,
there was no known method of making the claimed particles. (See e.g.,
Reply Brief (“Rep. Br.”), filed Aug. 4, 2008, 4-5.)
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3. As evidenced by his Declaration, Dr. Singh is an expert in the
field of nano-particle science and technology and has been working in this
field since at least 1989. (See generally, Singh Dec. ¶¶ 1-8 and attached
Summary of Accomplishments; see also, Ans. 11 (conceding that Dr. Singh
is an expert in the field).)
4. In describing the invention, Rostoker states: “[r]ecently,
methods have been developed for controllably producing ultrafine-grained,
or nanocrystalline, materials (typically, about 1-100 nm grain diameters).”
(Col. 6, ll. 25-27.) However, the only “method of making nanocrystalline
alpha alumina” explicitly identified and described by Rostoker is that of US
5,128,081 (“Siegel”) which Rostoker incorporates by reference. (Rostoker,
col. 6, ll. 25-51.) Rostoker does not include any actual examples wherein
Siegel’s method, or any other method, was used to produce the disclosed
alpha alumina particles (e.g., the particles of Example 3). (See generally,
Rostoker.)
5. Dr. Singh testified that “Siegel . . . does NOT describe the
formation of submicron particles.” (Singh Dec. ¶ 10.) At the time of his
Declaration (i.e., Dec. 2001), Dr. Singh also testified that he had “not seen
materials comparable to the materials claimed” (Singh Dec. ¶ 14, first
occurrence), and that other than Appellants’ process, he was not aware of
any other methods of forming Appellants’ claimed particles (Singh Dec. ¶
10; see also, ¶¶ 11-13 (discussing known processes)).
6. In response to Appellants’ arguments and evidence in support
thereof, the Examiner maintains that “Appellants have not presented any
evidence that would clearly show that no other methods were known to
produce the taught particles.” (Ans. 13.) The Examiner relies on US
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4,842,837 (“Shimizu”) as evidence of a known “method for forming silica
articles [sic] of 100 nm or less.” (Id.) “[I]t is the examiners [sic] position
that the skilled artisan would have appreciated that it is applicable to
alumina particles, as well.” (Id.)
7. Shimizu is not positively recited in a ground of rejection. The
Answer does not include a finding that Shimizu discloses one of the recently
developed methods referred to in Rostoker (supra FF 4). (See generally,
Ans.) Nor does the Answer include a finding that Shimizu’s method is
capable of producing particles having the particle size distribution defined in
the appealed claims. (Id.)
8. Appellants maintain that “[t]he Patent Office has presented
absolutely no legally or factually relevant counter evidence.” (Rep. Br. 4.)
PRINCIPLES OF LAW
In order to anticipate, a prior art reference must not only disclose all
of the limitations of the claimed invention, but must also be enabled. Elan
Pharms., Inc. v. Mayo Found., 346 F.3d 1051, 1054 (Fed. Cir. 2003)
(citations omitted). A reference is enabled when its disclosures are
sufficient to allow one of skill in the art to make and use the claimed
invention. Id.; see also, In re Gleave, 560 F.3d 1331, 1336 (Fed. Cir. 2009).
“[A]nticipation is a question of fact,” Id. at 1334-35, but “[w]hether a prior
art reference is enabling is a question of law based upon underlying factual
findings,” Id. (quoting Minn. Mining & Mfg. Co. v. Chemque, Inc., 303 F.3d
1294, 1301 (Fed. Cir. 2002)).
During “prosecution the examiner is entitled to reject application
claims as anticipated by a prior art patent without conducting an inquiry into
whether or not that patent is enabled.” Amgen Inc. v. Hoechst Marion
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Application 09/136,483

Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). When the Examiner
cites a patent disclosure which expressly anticipates an applicant’s claimed
invention, the burden is on the applicant to rebut the presumption of
operability of the prior art patent by a preponderance of the evidence. Id.
(citing In re Sasse, 629 F.2d 675, 681 (CCPA 1980)).
Inoperability of a patent can be established by demonstrating that the
invention disclosed therein cannot be made without undue experimentation.
See Elan, 346 F.3d 1055 (“It is insufficient to name or describe the desired
subject matter, if it cannot be produced without undue experimentation.”); In
re Borst, 345 F.2d 851, 855 (1962) (“[T]he disclosure must be such as will
give possession of the invention to the person of ordinary skill. Even the act
of publication or the fiction of constructive reduction to practice will not
suffice if the disclosure does not meet this standard.”); but see In re
Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985) (explaining that enablement
can be established if the ordinary artisan could have made the claimed
invention by combining the patent’s description of the invention with his
own knowledge to make the claimed invention).
The factors relevant to whether experimentation is undue are
discussed in, e.g., In re Wands, 858 F.2d 731, 737 (Fed. Cir.
1988), and include the quantity of experimentation that was
actually needed, the amount of guidance provided in the
reference, the presence or absence of actual examples of the
experimental procedure, the state of the knowledge already
available concerning the subject matter at issue, and the
predictability or unpredictability in the specific area of science or
technology.

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1085 (Fed. Cir. 2008).
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Application 09/136,483

“[N]on-enablement does not preclude a finding of obviousness.”
Amgen, 314 F.3d at 1357. Rather, in considering the question of the
obviousness, we are guided by the basic principle that the question under 35
U.S.C. § 103 is not merely what the references expressly teach, but what
they would have suggested to one of ordinary skill in the art at the time of
the invention. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not . . . that the claimed invention must be
expressly suggested in any one or all of the references.”). “For obviousness
under § 103, all that is required is a reasonable expectation of success.” In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (citations omitted).
ANALYSIS
Rejection of claims 1-3, 5-8, and 19-22 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Rostoker
and
Rejection of claims 11-16 under 35 U.S.C. § 103(a) as unpatentable
over Rostoker in view of Farkas

Having considered the Examiner’s and Appellants’ respective
arguments and evidence in light of the factors set forth in In re Wands, 858
F.2d at 737, we determine that Appellants have rebutted the presumption of
operability of the Rostoker patent by a preponderance of the evidence. Dr.
Singh, an expert in the field (FF 3), testified that the ordinary artisan would
not have been able to produce Appellants’ claimed particle collection using
the only method specifically identified in Rostoker, i.e., the Siegel method
(FF 5). The Examiner has not specifically identified another method capable
of producing particles having the claimed distributions (FF 1, 6, 7), and
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Rostoker is devoid of any working examples showing actual preparation of
the disclosed particles (FF 4). In contrast, Appellants have produced
persuasive evidence, i.e., the testimony of Dr. Singh (see FF 2, 3), that the
ordinary artisan would not have been able to produce Appellants’ claimed
particle collection using known methods available at the time of Rostoker’s
invention (FF 5).
Because Rostoker is inoperable, it cannot anticipate. Accordingly, we
do not sustain the rejection of claims 1-3, 5-8, and 19-22 under 35 U.S.C. §
102(b) as anticipated by Rostoker.
Turning now to the rejections under 35 U.S.C. § 103(a), we note that a
reference which is non-enabled may still be relied upon to establish
obviousness. In this case, however, we are in agreement with Appellants
(see Rep. Br. 2) that the evidence of record is insufficient to support the
Examiner’s obviousness determinations. For the reasons discussed above,
we find that the ordinary artisan would not have had a reasonable
expectation of success in producing Appellants’ claimed particle collection.
Therefore, we do not sustain the § 103(a) rejections of claims 1-3, 5-8, and
19-22 as unpatentable over Rostoker and claims 11-16 as unpatentable over
Rostoker in view of Farkas.
Provisional rejection of claims 1-3, 5-8, and 19-22 on the ground of
nonstatutory obviousness-type double patenting over the claims of
copending Application No. 09/969,025
A notice of abandonment of Application No. 09/969,025 was mailed
on Jul. 10, 2009. Accordingly, we procedurally reverse this ground of
rejection.
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Appeal 2009-002499
Application 09/136,483

CONCLUSION
The decision of the Examiner rejecting claims 1-3, 5-8, 11-16, and 19-
22 is reversed.

REVERSED

tc

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