Addressing the issue of whether the Board of Patent Appeals and Interferences (the Board) must consider evidence submitted by the applicant during the appeal to rebut a position taken by the Board that was not presented during prosecution, the U.S. Court of Appeals for the Federal Circuit held the applicant "was entitled to respond to the evidence adduced sua sponte by the Board." In re Kumar, Case No. 04-1074 (Fed. Cir. Aug. 15, 2005) (Newman, J.).
The claims of Kumar’s application are directed to aluminum oxide particles of submicron size. The product claims recited particles having a specified size range and size distribution. Kumar appealed the final rejection of his product claims to the Board. After engaging in calculations not continued in the prior art or examination record, the Board held the claims unpatentable on the ground of obviousness in view of the Rostoker patent, concluding Rostoker disclosed a range which overlapped the claimed range. On appeal to the Federal Circuit, Kumar conceded the Rostoker particles overlapped the claimed particles in average particle size but argued they did not overlap the claimed particle-size distribution.
The issue on appeal related to the Board’s procedure of engaging in calculations that were not made by the examiner and relying on those calculations to assert the Rostoker particle parameters overlapped the claimed particle parameters. In response to the evidence adduced sua sponte by the Board, Kumar requested reconsideration in view of a declaration by Dr. Singh in which Dr. Singh opined that the claimed particle parameters could not be obtained based on the Rostoker disclosure. The Board refused to consider Dr. Singh’s declaration, ruling Kumar had not given a sufficient reason why it was not presented earlier.
The Federal Circuit held the Board’s calculations, which resulted in values not contained in the prior art or examination record, were effectively a new ground of rejection. The Federal Circuit, citing Dickinson v. Zurko, held the Board failed to abide by its own rules (37 C.F.R. §1.196(b)) in not providing Kumar an opportunity to respond to these calculations and offer whatever evidence if felt appropriate in rebuttal.
The U.S. Patent and Trademark Office (UPSTO) argued that, procedural error aside, the Singh declaration was insufficient to obviate the obviousness determination. The Federal Circuit responded that the merits of the Singh declaration were not properly debated in the first instance on appeal and such determination on the merits is a question of fact to be determined on the record. In this regard, the Federal Circuit held that all evidence, including previously submitted declarations found to be insufficient, must be reconsidered in light of the new ground of rejection and the Singh declaration.
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