Administrative Patent...Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P. GUEST,...

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte Hitachi Metals, Ltd., . Patent Owner and Appellant

Appea12012-008632

Reexamination Contro190/010,759

Patent 5,645,651

Technology Center 3900

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Admin.istrative Patent Judge.

DECISION ON .t\PPEAL

Case: 14-1689 Document: 1-2 Page: 19 Filed: 12/12/2013 (21 of 39)

Appeal 2012~008632 Reexamination Control 90/010,759 Patent 5,645~651

Hitachi Metals~ Ltd., the owner of the Patent under reexamination

(hereinafter the "'651 Patent"), appeals under 35 U.s.c. §§ 134(b) and 306

from a flnal rejection of claims 1, 2~ 5-7, and 15-24 (Appeal Brief flied July

25,2011, hereinafter "'App. Hr.," at 3-4; Final Office Action mailed January

21,2011). We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.

We AFFIRM-IN-PART and enter a new ground ofrejection pursuant

to our authority under 37C.F.R. §41.50(b).

STATEMENT OF THE CASE

This reexamination proceeding arose from a third-party request for ex

parte reexamination filed by Steven E. Feldman ofHusch, Blackwell,

Sanders. We1sh~ & Katz, LLP (Request for Parte Reexalllination fued

December 7,2009). The '651 Patent issued to Setsuo Fujimura, Yutaka

Matsuura, and Masato Sagawa on July 8, 1997 from Application 08/485,183

filed on June 7, 1995, which through several continuation applications, is

said to be a divisional ofApplication 06/516~841 rued on July 25, 1983, now

United States Patent 4,792,368. The '651 Patent is also said to be a

continuation-ill-part of Application 07/224,411 filed on July 26; 1988, now

United States Patent 5,096,512, which is a division of Application

07/013,165 filed on February 10, 1987, now United States Patent 4~770,723.

We heard Patent Owner's oral arguments on September 5, 2012, a

written transcript of which was entered into the record on October 4,2012.

The '651 Patent re1ates to magnetic materials said to have improved

temperature dependency properties. (Col. 1,11.20-25.)

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Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651

Claim 1 on appeal reads as follows (with paragraphing added for

clarity):

1. A crystalline R(Fe,Co)BXAM compOlmd having a stable tetragonal crystal structure having lattice constants of flo about 8.8 angstroms and Co about 12 angstroms,

in which R is at least one element selected from the group consisting ofNd, Pr, La, ee, Tb, Dy, Ho, Br, Eu, Sm, Gd, Pm, Tm, Yb, Lu and Y,

X is at least one element selected from the group consisting of S, C, P and Cu,

A is at least one element selected from the group consisting ofR, Li, Na, K, Be, Sr, Ba, Ag, Zn, N, F, Se, Te and Pb, and

M is at least one element selected from the group consisting of Ti, Ni, Bi, V, Nb, Ta, Cr, Mo, W, Mn, AI, Sb, Ge, Sn, Zr, Hf and S1.

(Claims App'x, App. Br. 31.)

The Examiner relied upon the following as evidence of,

unpatentability (Examiner's Answer mailed March 1,2012, hereinafter

"Ans.," 3):

Sagawa 4,770,723 September 13, 1988

(hereinafter "Sagawa '723")

Sagawa 4,792,368 December 20, 1988

(hereinafter "Sagawa '368")

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i\ppea12012-008632 Reexamination Control 90/010,759 Patent 5,645,651

The Examiner rejected claims 1,2,5-7, and 15-24 as follows:

I. Claims 1,2,6, 7, and 15-24 under 35 U.S.C. § 102(b) as

anticipated by Sagawa '368 (Ans. 12-13);

II. Claims 1,2,6, 7, and 15-24 on the ground of non-statutory

obviousness-type double patenting as being unpatentable over

claims 1,3,13,16,29, and 34 ofSagawa '368 (Ans. 14-16);

and

III. Claims 1,2,5,6, and 15-24 on the ground of non-statutory

obviousness-type double patenting as being unpatentable over

claims 1,3, 12, l4, 24, 30,32, and 34 ofSagawa (723 (Ans. 16

18).

Anticipation

ISSUE

Regarding Rejection I, Patent Owner does not dispute the merits of

the Examiner's rejection, that is, whether the Examiner properly found that

Sagawa '368 discloses the features of the claims that stand rejected. (See

App. Br. 4-11.) Rather, Patent Owner disputes the Examiner's position that

Patent Owner is not entitled to claim the benefit of its priority applications

including the application that issued as Sagawa '368, because in the (Fe,Co)

notation of the R(Fe,Co)BXAM fonnula recited in the claims, the concept

that the amount of Co may be zero was not present in the priority

applications. (App. Br. 4.)

In this regard, the Examiner stated that in view of claim 5, which

recites that cobalt (Co) is not present in the composition, the arnmmt of Co

4



in the composition of claim 1 includes zero. CAns. 5.) The Examiner further

stated that the inventive compounds of the '651 Patent including the notation

"(Fe,Co)" require the presence of Co, and the concept that Co was not

introduced until an amendment filed during the prosecution of the

application leading to the '651 Patent on October 3, 1996. (Ans. 6-11.)

In response to the Examiner's position, :patent Owner points to Table

6 of the'651 Patent, which according to Patent Owner, is also present in all

the intervening applications in the priority chain, and which allegedly

discloses inventive compounds without Co. (App. Br. 7-9.)

Thus, the dispositive issue with respect to the anticipation rejection is:

Did the Examiner err in detennining that Sagawa '368 is prior art to

the '651 Patent?

DISCUSSION

Upon our review oftlle evidence of record, we agree with Patent

Owner that the Examiner erred in detennining that Sagawa '368 is prior art

to the '651 Patent. We reiterate that the '651 Patent claims priority to

Sagawa '368 through a series of continuation applications. Thus, in order to

resolve the above issue, we limit our discussion to whether the '368 Patent

adequately supports the concept that the "(F e, Co)" notation may include

compounds that do not contain cobalt.

We do not share the Examiner's view that the '368 Patent fails to

disclose that compounds represented by the notation "(Fe,Co)" may include

compounds that do not contain cobalt. Specifically, the '368 Patent

discloses: "a magnetic material comprising Fe, B, R (at least one of the rare

earth elements including Y) and Co, and having its major phase fanned of

5


Appeal2012-0Q8632 Reexamination Control 90/0 1O~7S9 Patent SJ645,651

Pe-Co-B-R (Of (Fe,CQ)-B-R) type compound that is of the substantially

tetragonal crystal structure." (CoL 2, L 66 coL 3) L 2.) Thus, the '368

'Patent discloses Fe-Co-B-R and (Fe,Co)-B-R as alternative compound

fonnulas and discusses both as containing a substantially tetra,gonal crystal

structure. As pointed out by the Examiner, during the prosecution of the

application leading to the '368 Patent, Patent Owner stated,that tbe term

(Fe~Co) indicates cobalt substltut10n for iron. (Ans. 4) citing Request, Ex.

31; page 1t) However. we disagree with the Examiner that the disolosures

in the '368 Patent specifying that tl1eamount of Co is' not zero (see Sagawa

'3:68? 001, 3, 11. 9, 22-l3) require the presence ofCa in all embodiments

associated with the (Fe,Co) notation.

Ae diseuss~d ~bov~, the '36$ Patent discloses that an aspect of the

invention relates to compounds having a substantially tetragonal system

.crystal structure. The '368 Patent discloses: "In the ,conrpounds based on

the conventional binary compounds sU'chas R-Fe, Fe-B and B-R, it is

thQught that no tetragonal system compounds having such macro unit cells

as mentioned above occur. It is presumed that negood permanent magnet

properties ate achieved.'by those known compounds." (CoL 22, 11. 38-43.}

Table 6 ofthe '~6& Patent contains compounds having a tetragonal major

stroctur.aLphase. which do not include any Co; and contain Fe, R and B

elements, (Col. 22, lines 44-61, No. 1-4.) The '368 Patent discloses: "As

apparent from Table 6 the compounds added withM based on the Fe-B-R

system exhibit the tetragonal system as well ,as the. Fe-Co-B-R-M system

compounds," (Cal.l3, 11. 20-23.) Thus, the ~368 Patent expressly

distingpishes between prior: art binary compounds, which do not have a

6


Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5~645,651

tetragonal system, with those compounds in Table 6 that contain the M

element and do have a tetragonal system.

The Examiner states that compounds 1-4 in Table 6 of the '651 Patent

are comparative examples, relying in part on the position that compOl.mds

having the same or similar chemical formulas are indicated in Tables 1 and 3

as comparative examples. (Ans. 20-22, comparing No.2 in Table 6 with

Tables 1 and 3, No.2,) Here, we note that the '368 Patent contains identical

disclosures to the


Thus, based on this record, the

Appea12012-008632 Reexamination Contro190/010,759 Patent 5,645,651

further contends that the embodiments recited in the Sagawa '368 fail to

provide a basis to include A or X elements and the Examiner ha.'i failed to

provide a reason to combine the teachings in the Specification ofSagawa

'368 with the Sagawa '368 Patent claims. (App. Br. 23-27.) Patent Ov-mer

relies on sinillar arguments for Sagawa '723~ and additionally argues that

Sagawa '723 is completely silent as to the presence of A elements. (App.

Br.27.29.) In their reply brief, Patent Owner contends that in the

Examiner's Answer, the Examiner has presented "a significant new

argument" in support of the double patenting rejections by relying on the

transitional phrase "consisting essentially of' in the claims of Sagawa '368

and Sagawa '723 in order to refer to the specifications of those patents to

interpret the claims, which Patent Owner maintains was improper. (Rep. Br.

1-3,20-26.)

ISSUE

In view of the above discussion, the dispositive issue pertaining to the

double patenting rejections is: did the Examiner appropriately rely on the

Specifications of Sagawa '368 and Sagawa '723 to support the obviousness

double patenting rejections of the claims?

PRINCIPLES OF LAW

If the same invention is not being claimed twice, a second question must be asked. The second analysis question is: Does any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent? In considering the question, the patent disclosure may not be used as prior art. This does not mean that the disclosure may not be

9


http:Br.27.29

Appeal 2012-008632 Reexamination Control 90/010;759 Patent 5.645.651

used at all .... As pointed out above, in certain instances it may be used as a dictionary to learn the meaning of tenns in a claim. It may also be used as required to answer the second analysis question above .... It must be noted that this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure ofthe invention claimed in the patent may be examined.

In re Vogel, 422 F.2d 438,441-442 (CCPA 1970)

rnIn re Basel! Poliolejine Italia S.P.A.) 547 F.3d 1371 (Fed. Cir.

2008), our reviewing court stated:

Indeed. our predecessor court stated that a patent's disclosure may be used to determine whether an application claim is merely an obvious variation of an invention claimed in a patent. Vogel, 422 F.2dat 441-42. The court stated that the disclosure may be used to learn the meaning of terms and in Hinterpreting the coverage of[a] claim." Id. at 441. It may also be used to answer the question whether claims merely define an obvious vanation of what is earlier disclosed and claimed.

Basell, 547 F.3d at 1378.

DISCUSSION

Double Patenting based on Sagawa '368

We agree with the Examiner, that the rejected claims in the '651

Patent represent obvious variations of the aforementioned claims of Sagawa

'368. In this regard, we are of the opinion that the Examiner properly

consulted the specification of Sagawa '368 in order to answer the question

of whether or not the claims of the '651 Patent were an obvious variant of

the claims of the '368 Patent We disagree with Patent Owner thaHhe

portions ofthe Specification ofSagawa '368 consulted by the Examiner do

10



not support the claims because the claims of Sagawa '368 do not contain X

and A elements. (App. Br. 24.)

The parts of Sagawa

Appea12(}12-008632 Reexamination Contro190/010~759 Patent 5~645,651

As a: result, the claims of the.

Appeal 2012-008632 Reexamination Contro190JOlO j 759 Patent 5,645.,651

~ite to ,any oth~r prior art that would identify A elements as conunon

impurities in magnetic materials containing Fe, B, R, and M. Thus, ther.e is

insufficient basis on this record to ?onc1ude that the rejected claims oftbe

'651 Patentrepresent obvious variations oftheidentified claims in Sagawa

'723. Ac€ordingly, we reverse the Examiner' s obviousness-type double

patenting rejection based on Sagawa '723.

CONCLUSION

On thi$ record:

the Examiner erred in determining that Sagawa '368 is prior art to the

~651 Patent;

the Examiner appropriately relied on the Specification of Sagawa '368

to- support the obviousness dQuble patenting rejection of the. olaims; and '

the Exatniner's reliance on the Specification ofSagawa '723 does not

adequately support the position that the compounds containing A elements

recited in the claims on appeal are an obvious variation of the. compounds

recited in the claims of Sagawa '723.

DECISION

The Examiner's decision to reject claims, 1,2,6. 7, and 15-24 on the

gr~und ofnon.-statutory obviousuess~type double patenting as heing

unpa~table over claims 1, 3, 13~ 16,29, and 34 ofSagawa '368 is affinned.

The Examiner's decision to reject claims 1, 2, 6" 7~and 15-24.under

35 U.S;C. § l02(b} is reversed.

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Appea12012-00S632 Reexamination Control 90/010;759 Patent $,645,651

'The Exa:rnine.r~·s decision to reject claims 1,2,5,6, and 15-24 on the

ground o{non-statutory (Jbviousness~type double patenting as being

unp~entable over claims 1, 3" 12, 14,24,30, 32, and 34 of Sagawa '723

reversed.

Requests for extensions of time in this exparte reexamfi+ation

proceeding are governed by 37 C.F.R. §,1.550(c). See 37 C.F.R § 4L50(f).

This decision contains anew ground ofrejection pursuant to 37

C.F.R. § 41.50(b). 37 C.F.R §41.50(b) provides "[a] ne-w ground of

rejection pursuant to this paragraph shall not be considered.final for judicial

review.?'

37 C.F.R. § 41.50(b) also provides that the Appellant, WITBJN TWO

MONTHS FROM THE DATE OF THE DECISION, must exercise one of

the following twooption& with respect to the new grOlmd ·of rejection to

avoid temlinatioil of the appeal as to the rejected claims:

(1) Reopen prose6ution. Submit an appropriate amendment of the

claims su rejected or neW eVidenoe relating to the claims so rejected. OT both,

alid have the l11Atler reconsidere.d by the examine.r. in which event the

proceeding will be remanded t~ the exatninet, ...

(2) Request rehearing. Request that the proceeding be reheard under

§ 41.52 by the Board upon the same record ....

AFFIRMED-IN-PART; NEW GROUND OF REJECTION UNDER 37 c.p.R. §41.50(b)

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ack

FOR PATENT OWNER:

BAKER & HOSTETLER LLP WASIDNUTONSQUARE, SUlTE 1100 1050 CONNECTICUT AVE.N.W. WASHINGTON, DC 20036-5304

FOR TIllRD-PARlY REQUESTER:

HUSCH BLACKWELL SANDERS, LLP 120 S RIVERSIDE PLAZA 22NDFLOOR CmCAGO, IL 60606

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Administrative Patent...Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and RAE LYNN P. GUEST,...

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