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.

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 distributions 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....

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 refused appellant response, so Kumar et al appealed to the Federal Circuit (CAFC 04-1074).

Here's the CAFC hammering the Board for its caprice -

The values identified by the Board's calculations were not contained in the prior art or any examination record, but appeared for the first time in the Board's opinion. Although the PTO argues that the calculations the Board included in its decision were not new evidence, but simply an additional explanation of the Board's decision, these values produced and relied on by the Board had not previously been identified by the examiner or the Board. Kumar was entitled to respond to these calculations, and the Board committed procedural error in refusing to consider the evidence proffered in response. See In re DeBlauwe, 736 F.2d 699, 706 n.9 (Fed. Cir. 1984) ("Where the board makes a decision advancing a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence"). The PTO regulations so require. See 37 C.F.R. '1.196(b) ("when the Board . . . makes a new rejection of an appealed claim, the appellant may . . . submit . . . a showing of fact . . . and have the matter reconsidered").

In accordance with the Administrative Procedure Act, the agency must assure that an applicant's petition is fully and fairly treated at the administrative level, without interim need for judicial intervention. See Dickinson v. Zurko, 527 U.S. 150, 154 (1999) (the PTO is an agency subject to the Administrative Procedure Act). The Board's rules are in accord. See 37 C.F.R. '1.196(b) (when the Board relies on a new ground of rejection, it is appropriate to provide the applicant with an opportunity to respond to that ground).

When a rejection for obviousness is based on overlapping values in the prior art, identification of the values deemed to overlap is material to the rejection. In this case the overlapping values were identified for the first time in the decision of the Board, and are not themselves set forth in Rostoker or any other reference. In calculating the overlapping values, the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) ("the ultimate criterion of whether a rejection is considered 'new' in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection").

We conclude that the Board's calculations and its decision based thereon constituted a new ground of rejection, and should have been so treated. See In re Waysmouth, 486 F.2d 1058, 1060-61 (CCPA 1973) (holding that a new rejection had occurred where the examiner and the board rejected a claim for different reasons).

The PTO argues that as long as Rostoker enables the Rostoker invention, Rostoker renders the Kumar invention obvious, even if Kumar shows that Rostoker does not enable the Kumar invention. That is incorrect. To render a later invention unpatentable for obviousness, the prior art must enable a person of ordinary skill in the field to make and use the later invention. Beckman Instruments, Inc., 892 F.2d at 1551; Payne, 606 F.2d at 314. Thus the relevant inquiry is not whether the Rostoker patent was invalid for lack of enablement, but whether Rostoker enabled persons skilled in this art to produce particles of the size and distribution claimed by Kumar.

After the Board adduced its calculations of particle size and distribution, Kumar was entitled to offer evidence in rebuttal, for consideration by the Board or on return to an examiner. The entirety of the evidence must be reviewed in order to determine whether the claimed invention as a whole would have been obvious to a person of ordinary skill in the field. See Rinehart, 531 F.2d at 1052.

CAFC put some helpful information into its ruling with regard to §103(a) obviousness rejection.

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 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 Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

An applicant may rebut a prima facie case of obviousness by providing a "showing of facts supporting the opposite conclusion." Such a showing dissipates the prima facie holding and requires the examiner to "consider all of the evidence anew." Piasecki, 745 F.2d at 1472; In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). Rebuttal evidence may show, for example, that the claimed invention achieved unexpected results relative to the prior art, In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997); that the prior art teaches away from the claimed invention, id. at 1471; that objective evidence (e.g., commercial success) supports the conclusion that the invention would not have been obvious to a skilled artisan, Piasecki, 745 F.2d at 1475; or that the prior art did not enable one skilled in the art to produce the now-claimed invention, In re Payne, 606 F.2d 303, 314-15 (CCPA 1979).

Although published subject matter is "prior art" for all that it discloses, in order to render an invention unpatentable for obviousness, the prior art must enable a person of ordinary skill to make and use the invention. Beckman Instruments, 892 F.2d at 1551. Thus when a prima facie case of obviousness is deemed made based on similarity to a known composition or device, rebuttal may take the form of evidence that the prior art does not enable the claimed subject matter. See Payne, 606 F.2d at 314-15 ("the presumption of obviousness based on close structural similarity is overcome where the prior art does not disclose or render obvious a method for making the claimed compound"); In re Hoeksema, 399 F.2d 269, 274 (CCPA 1968) ("the absence of a known or obvious process for making the claimed compounds overcomes a presumption that the compounds are obvious, based on close relationships between their structures and those of prior art compounds").

The applicant has the burden of coming forward with evidence in rebuttal, when the prior art includes a method that appears, on its face, to be capable of producing the claimed composition. This burden may be met by presenting sufficient reason or authority or evidence, on the facts of the case, to show that the prior art method would not produce or would not be expected to produce the claimed subject matter.