Ex Parte 5645651 et al

Patent Trial and Appeal Board

Aug 29, 2013

90010759 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,759 01/22/2010 5645651 0304497-8 4233
30734 7590 08/30/2013
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304
EXAMINER
JOHNSON, JERRY D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/30/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651
Technology Center 3900
____________

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

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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

2

This is a decision on a request for rehearing filed by Hitachi Metals,
Ltd., the owner (hereinafter the “Patent Owner”) of the Patent under
reexamination (hereinafter the “‘651 Patent”), under 37 C.F.R. § 41.52
(“Request”) of our decision mailed, December 21, 2012 (“Decision”) in
which we affirmed the Examiner’s decision to reject 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 of Sagawa ‘368,
1
and
designated the affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
Patent Owner contends that the Decision does not articulate sufficient
findings of fact or conclusions of law to support the obviousness-type double
patenting rejection at issue. (Request 1-2, 11-12.) Patent Owner further
contends that it is entitled to a decision which applies MPEP § 804.II.B.1 to
support the double patenting rejection. (Request 2-3.) Patent Owner argues
that the Decision improperly turned to the Specification of Sagawa ‘368 to
interpret the claims therein. (Request 4-8.) Patent Owner also contends that
the Board improperly construed the transitional phrase “consisting
essentially of” used in the claims of Sagawa ‘368. (Request 8-9.) Patent
Owner argues that the Decision concludes that the claims of Sagawa ‘368
include X and A elements as impurities without any evidentiary support.
(Request 13.)
We are not persuaded that we misapprehended or overlooked the
points set forth by Patent Owner in the Request.

1
Sagawa, U.S. Patent No. 4,792,368, issued December 20, 1988.

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

3

Initially, we disagree with Patent Owner that the Decision did not
undertake a proper analysis for obviousness-type double patenting as further
explained below. To the extent Patent Owner cites MPEP § 804.II.B.1, that
section of the MPEP appears to set forth the Graham factors as a framework
of the proper analysis, and, as Patent Owner acknowledges, it is not required
that the Decision discuss each factor (Request 3, FN2, citing In re Basell
Poliolefine Italia S.P.A., 547 F.3d 1371, 1379 (Fed. Cir. 2008)). The MPEP
states that an obviousness-type double patenting rejection make clear (A) the
differences between the invention defined by the conflicting claims and (B)
the reasons why a person of ordinary skill in the art would conclude that the
invention defined in the claim at issue would have been an obvious variation
of the invention defined in a claim in the patent. The MPEP also discusses
the application of In re Vogel, 422 F.2d 438 (CCPA 1970). The Decision
met the MPEP requirements and appropriately applied Vogel as also
explained below. Thus, we do not discern any inconsistency between the
analysis set forth in the Decision and the analysis set forth in the cited
section of the MPEP.
We are not persuaded by Patent Owner’s contention that we
misapprehended or overlooked aspects of the case law cited in Patent
Owner’s briefs and in the Decision. The purpose of obviousness-type
double patenting is to prevent a second patent claiming an obvious variant of
the same invention to issue to the same owner. In re Berg, 140 F.3d 1428,
1431-32 (Fed. Cir. 1998). With that purpose in mind, we turn to the case
law to address Patent Owner’s contentions as to whether we appropriately
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

4

relied on the Specification of Sagawa ‘368 in assessing whether the claims
of the ‘651 Patent represent obvious variants of the claims of Sagawa ‘368.
We are not persuaded that we overlooked aspects of Vogel in the
Decision. That is, we do not discern any inconsistency between the court’s
holding in Vogel and its application set forth in the Decision. We reproduce
the quotation from Vogel including substantive text previously omitted in the
Decision:
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 used at all.
As pointed out above, in certain instances it may be used as a
dictionary to learn the meaning of terms in a claim. It may also
be used as required to answer the second analysis question
above. We recognize that it is most difficult, if not
meaningless, to try to say what is or is not an obvious variation
of a claim. A claim is a group of words defining only the
boundary of the patent monopoly. It may not describe any
physical thing and indeed may encompass physical things not
yet dreamed of. How can it be obvious or not obvious to modify
a legal boundary? The disclosure, however, sets forth at least
one tangible embodiment within the claim, and it is less
difficult and more meaningful to judge whether that thing has
been modified in an obvious manner. 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 of the
invention claimed in the patent may be examined.

Vogel, 422 F.2d at 441-442 (internal citations omitted).
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

5

Thus, according to Vogel, the Specification of the patent forming the
basis of the double patenting rejection may be used to 1) interpret the claims
and 2) to answer the question of whether the claim is an obvious variant. In
this regard, Vogel instructs us to look at the tangible embodiments of the
claims set forth in the Specification in order to determine what constitutes an
obvious variant of the claims of the patent. While the court in Vogel rejected
consulting portions of the Specification directed to “meat” for patent claims
reciting “pork” in order to determine whether the application claims reciting
“beef” were obvious variants, the court stated with respect to application
claims reciting “meat,” that such claims were obvious variants of patent
claims reciting “pork.” Vogel, 422 F.2d at 442-443. The court in Vogel also
stated that: “It is further noted that viewing the inventions in reverse order,
i.e., as though the broader claims issued first, does not reveal that the
narrower (pork) process is in any way unobvious over the broader (meat)
invention disclosed and claimed in the instant application.” Id. In making
this statement, the court did not point to any other evidence beyond the
patent used as the basis for the obviousness double patenting rejection.
In referring to our citation of In re Basell Poliolefine Italia S.P.A., 547
F.3d 1371 (Fed. Cir. 2008), Patent Owner discusses In re Kaplan, 789 F.2d
1574 (Fed. Cir. 1986), which was distinguished in Basell. However, Patent
Owner fails to discuss the court’s distinguishing of Kaplan in Basell in
affirming the Board’s reliance on the disclosure of particular olefins in the
Specification to determine obvious variants:
Relying on In re Kaplan, 789 F.2d 1574 (Fed. Cir. 1986),
Basell asserts that the rejection must be reversed because the
Board improperly read limitations from the ‘987 specification
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

6

into the claims in concluding that the claims are not patentably
distinct. We disagree. While we stated in Kaplan that it is
impermissible to treat a “patent disclosure as though it were
prior art” in a double patenting inquiry, we further reaffirmed
the holding in In re Vogel, 57 C.C.P.A. 920, 422 F.2d 438
(CCPA 1970), that certain instances may exist where a patent's
disclosure may be used. Kaplan, 789 F.2d at 1580. 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.2d at
441-42. The court stated that the disclosure may be used to
learn the meaning of terms and in “interpreting the coverage of
[a] claim.” Id. at 441. It may also be used to answer the
question whether claims merely define an obvious variation of
what is earlier disclosed and claimed.

Basell, 547 F.3d at 1378. (See Decision 10.) Further, as the court in Kaplan
acknowledged: “Each double patenting rejection has to be decided on its
own facts. Vogel dealt with one difficult-to-analyze situation, this case
presents a different one.” 789 F.2d at 1580-81. That is, even the court in
Kaplan acknowledged the complexity of analyzing double patenting
situations and the fact-dependent nature of the inquiry. As a result, we do
not discern any points misapprehended or overlooked from the court’s
decision in Kaplan.
The Court in Basell also stated in discussing Vogel:
The court stated that the disclosure “sets forth at least one
tangible embodiment within the claim, and it is less difficult
and more meaningful to judge whether [something] has been
modified in an obvious manner.” Id. at 442. The court further
stated that “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
of the invention claimed in the patent may be examined.” Id. As
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

7

such, we conclude that the Board did not err in referring to the
specification of the ‘987 patent when it determined whether the
claims were patentably distinct from the claims of the ‘687
patent.

Basell, 547 F.3d at 1378.
Accordingly, the court in Basell reaffirmed the use of the portions of
the specification supporting the claims to answer the obvious variant
question. In view of the court’s distinguishing of Kaplan in Basell and the
court’s further discussion of Vogel and Kaplan, we are not persuaded by
Patent Owner’s discussion of Kaplan as limiting the use of the Specification
in the manner argued.
Regarding Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 689 F.3d
1368 (Fed. Cir. 2012), we disagree that this case “casts grave doubts on the
correctness of the Board’s approach to the new double patenting rejection.”
(Request 5-6.) Eli Lilly involved a completely different set of facts, where
there was an intermediate/final product relationship between the two sets of
claims and where the two compounds “exhibit substantial structural
differences, and neither embodies or subsumes the other.” 689 F.3d at 1380.
The Court also referenced the fact that the final product could be made by
several different techniques that did not involve the intermediate. Id.
Therefore, the portion of the Specification supporting the claims in the
patent that are used as a basis for obviousness double patenting may be used
to both interpret claim terms and to determine whether or not the claims of
the patent that is subject to the obviousness double patenting rejection
represent obvious variants of the claims of the patent that are used as the
basis for the rejection.
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

8

Thus, because we properly applied the relevant case law as further
discussed below, we discern no particular points misapprehended or
overlooked in turning to the Specification of Sagawa ‘368 to interpret claim
1 of Sagawa ‘368. That is, consulting the Specification of Sagawa ‘368 was
necessary in order to 1) ascertain the scope of the claims; and 2) to
determine if those portions of the Specification that supported the claims
provided any information as to whether the claims of the ‘651 Patent were
obvious variants of the claims of the Sagawa ‘368.
As to point 1, claim 1 of Sagawa ‘368 uses the transitional phrase
“consisting essentially of” to refer to the anisotropic magnetic material
further defining that at least 50% by volume of the material is occupied by a
“ferromagnetic compound having an (Fe,Co)-B-R type tetragonal crystal
structure.” Thus, it was necessary to consult the Specification in order to
understand whether claim 1 of Sagawa ‘368 was closed to the presence of
the X and A elements recited in the claims of the ‘651 Patent. That is, we
consulted the Specification in order to determine whether the X and A
elements materially affect the basic and novel characteristics of the
invention, and concluded based on the teachings of the Specification of the
‘368 Patent that they did not. Accordingly, we did not misapprehend or
overlook using the Specification of Sagawa ‘368 in order to interpret claim 1
of Sagawa ‘368.
Regarding point 2, we do not agree with Patent Owner that it was
inappropriate to consult the parts of the Specification of Sagawa ‘368
supporting the claims in order to determine whether the claims of the ‘651
Patent were obvious variations thereof. Indeed, as further discussed above,
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

9

Vogel and Basell specifically support consulting the portions of the
Specification of Sagawa ‘368 to conduct the inquiry as to whether the claims
of the ‘651 Patent represent obvious variants of the claims of the Sagawa
‘368 Patent. We are of the opinion that given the facts of this case, it was
appropriate to consult the Specification of Sagawa ‘368 in order to answer
the obvious variation question.
As we stated in the Decision:
The parts of Sagawa ‘368 that support the claims are
those parts related to “a ferromagnetic compound having an
(Fe,Co)-B-R type tetragonal crystal structure.” Such portions
include column 23, ll. 27-30 (see Ans. 16), which discusses the
“aforementioned tetragonal system compounds,” i.e., the
compounds in Table 6. As discussed above, Table 6 includes
compounds of (Fe,Co)-B-R which have a tetragonal crystal
structure even when containing the A elements, “H, Li, Na, K,
Be, Sr, Ba, Ag, Zn, N, F, Se, Te, and Pb.” (Col. 23, ll. 27-30;
See Ans. 16.) Further, Sagawa ‘368 discloses that iron (Fe) and
neodymium (Nd) include impurities, specifically, the X
elements of S, P, Cu, and C, as well as the A element F. (Col.
9, ll. 15-27; see Ans. 16.) Such disclosures in the Specification
of Sagawa ‘368 support the express recitation of Fe and Nd in
the claims of Sagawa ‘368.
(Decision 11.)
Additionally, the Specification of Sagawa ‘368 expressly states that in
the experimental procedures used to produce the alloy compositions
presented in Table 6, the iron, boron, R element, and cobalt are not
completely pure. (See col. 21, ll. 55-60; Fe (purity 99.9%), B (purity 99%),
R (purity 99.7%), Co (purity 99.9%).) Accordingly, the tangible
embodiments supporting the claimed formula have impurities present in the
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

10

recited elements Fe, B, R, and Co, and there is no indication in Sagawa ‘368
that such impurities are removed. (See Sagawa ‘368, Fig. 15.)
Patent Owner also challenges the Decision’s characterization of the
elements in Sagawa ‘368 corresponding to the X and A elements as
impurities. We are not persuaded that we misapprehended the disclosure of
Sagawa ‘368. Specifically, as we stated in the Decision as reproduced
above, Sagawa ‘368 expressly characterizes several of the X and A elements
as impurities in column 9. Although Sagawa ‘368 does not refer to the A
elements in column 23 as impurities, Sagawa ‘368 does not provide any
other disclosures as to how the A elements are introduced into the
compounds. Nowhere in the portions of the Specification of Sagawa ‘368
supporting the claims does the Specification of Sagawa ‘368 indicate any
particular benefit or advantage for including the X and A elements. As a
matter of fact, the Specification of Sagawa ‘368 expressly discloses that the
X and A elements do not have an effect on the tetragonal structure of the
claimed compound. (See Sagawa ‘368, col. 8, l. 65 – col. 9, l. 27; col. 23, ll.
27-31.) Thus, one of ordinary skill in the art would have understood that
such elements are impurities introduced either by use of starting materials
that are not completely pure or during preparation of the compounds.
In analyzing whether the claims of the ‘651 Patent are obvious
variants of the claims of Sagawa ‘368, we stated:
As a result, the claims of the ‘651 Patent represent
obvious variants of the claims of Sagawa ‘368, the only
difference being the express recitation of impurities as the X
and A elements in the ‘651 Patent claims. The presence of the
additional X and A elements would have been obvious in the
compounds recited in the claims of Sagawa ‘368, as the X and
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

11

A elements represent residual impurities based on the selection
of Fe and Nd materials, such selection of materials expressly
stated in Sagawa ‘368 as having no effect on the desired
characteristics of the claimed (Fe,Co)-B-R type materials or the
claimed tetragonal crystal structure.
(Decision 12.)

Thus, we identified the differences between the claims of the ‘651
Patent and the claims of Sagawa ‘368, and determined that the differences
between the claims amounted to an obvious variant as ascertained by
referring to the parts of the disclosure in Sagawa ‘368 supporting the claims.
Unlike Eli Lilly, the claims of Sagawa ‘368 subsume the claims of the ‘651
Patent. Namely, the claims of the ‘651 Patent recite the impurities which
already would have been included in the compounds claimed in Sagawa
‘368.
Accordingly, we properly relied on the Specification of Sagawa ‘368
in order to answer the question of whether the claims of the ‘651 Patent were
obvious variants of the claims of Sagawa ‘368 following the guidance of
Vogel and Basell.
We also provided a rationale as to why such impurities would have
been included in the materials recited in the claims of the ‘651 Patent.
The selection of such impurity containing materials
would have been obvious to one of ordinary skill in the art as a
way to provide a cheaper source of the compounds recited in
the claims.
(Decision 12.)
As to Patent Owner’s argument that there is insufficient evidence to
support the reasoning that materials containing impurities would have been
cheaper than completely pure materials, we are of the position that one of
Appeal 2012-008632
Reexamination Control 90/010,759
Patent 5,645,651

12

ordinary skill in the art would have appreciated purifying either the starting
materials or the resulting magnetic material, would have resulted in
increased costs in the form of additional procedures necessary to remove the
impurities. Such appreciation by one of ordinary skill in the art is no more
than a matter of common sense. See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 403 (2007)
Therefore, we decline to make any changes in the Decision mailed,
December 21, 2012. Accordingly, the Request for Rehearing is denied.

FOR PATENT OWNER:
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT AVE. N.W.
WASHINGTON, DC 20036-5304

FOR THIRD-PARTY REQUESTER:

HUSCH BLACKWELL SANDERS, LLP
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
lb