Ex Parte 5645651 et al

Patent Trial and Appeal Board

Dec 21, 2012

90010759 (P.T.A.B. Dec. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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 12/21/2012
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
12/21/2012 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 APPEAL

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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 final rejection of claims 1, 2, 5-7, and 15-24 (Appeal Brief filed July
25, 2011, hereinafter “App. Br.,” 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 of rejection 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 of Husch, Blackwell,
Sanders, Welsh, & Katz, LLP (Request for Ex Parte Reexamination filed
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 of Application 06/516,841 filed on July 25, 1983, now
United States Patent 4,792,368. The ‘651 Patent is also said to be a
continuation-in-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 relates to magnetic materials said to have improved
temperature dependency properties. (Col. 1, ll. 20-25.)

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Claim 1 on appeal reads as follows (with paragraphing added for
clarity):
1. A crystalline R(Fe,Co)BXAM compound having a
stable tetragonal crystal structure having lattice constants of ao
about 8.8 angstroms and co about 12 angstroms,
in which R is at least one element selected from the
group consisting of Nd, Pr, La, Ce, Tb, Dy, Ho, Er, 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 of H, 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, Al, Sb, Ge,
Sn, Zr, Hf and Si.

(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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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 of Sagawa ‘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, 14, 24, 30, 32, and 34 of Sagawa ‘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 formula 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 amount of Co
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in the composition of claim 1 includes zero. (Ans. 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 determining that Sagawa ‘368 is prior art to
the ‘651 Patent?
DISCUSSION
Upon our review of the evidence of record, we agree with Patent
Owner that the Examiner erred in determining 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 “(Fe,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 formed of
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Fe-Co-B-R (or (Fe,Co)-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
formulas and discusses both as containing a substantially tetragonal crystal
structure. As pointed out by the Examiner, during the prosecution of the
application leading to the ‘368 Patent, Patent Owner stated that the term
(Fe,Co) indicates cobalt substitution for iron. (Ans. 4, citing Request, Ex.
31, page 11.) However, we disagree with the Examiner that the disclosures
in the ‘368 Patent specifying that the amount of Co is not zero (see Sagawa
‘368, col. 3, 11. 9, 22-23) require the presence of Co in all embodiments
associated with the (Fe,Co) notation.
As discussed above, the ‘368 Patent discloses that an aspect of the
invention relates to compounds having a substantially tetragonal system
crystal structure. The ‘368 Patent discloses: “In the compounds based on
the conventional binary compounds such as R-Fe, Fe-B and B-R, it is
thought that no tetragonal system compounds having such macro unit cells
as mentioned above occur. It is presumed that no good permanent magnet
properties are achieved by those known compounds.” (Col. 22, ll. 38-43.)
Table 6 of the ‘368 Patent contains compounds having a tetragonal major
structural phase, 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 with M based on the Fe-B-R
system exhibit the tetragonal system as well as the Fe-Co-B-R-M system
compounds.” (Col. 23, ll. 20-23.) Thus, the ‘368 Patent expressly
distinguishes between prior art binary compounds, which do not have a
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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 compounds
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 ‘651 Patent regarding the compounds in other tables as
well as the relevant passages describing the content of the tables. However,
as pointed out by Patent Owner, compounds 1-4 of Table 6 in the ‘651
Patent (and the ‘368 Patent), are compounds not containing cobalt that form
compounds having a tetragonal structure with the lattice constants recited in
claim 1. (Reply Brief filed May 1, 2012, hereinafter “Rep. Br.” at 8.) In
addition, we agree with Patent Owner, that while the compounds in Tables 1
and 3 have the same chemical formula, no structure information is given in
those tables. (Rep. Br. 8-9.) Thus, we do not subscribe to the Examiner’s
view that the examples in Tables 1 and 3 are determinative of whether
compounds 1-4 in Table 6 are comparative examples.
In addition, the Examiner cites to column 24, ll. 52-55 of the ‘651
Patent (reproduced above as col. 23, ll. 20-23 of the ‘368 Patent) as evidence
that Examples 3 and 4 of Table 6 are comparative examples. (Ans. 21-22.)
We discern no inconsistency between the separate listing of Fe-B-R added
with M and Fe-Co-B-R-M and the “(Fe,Co)” notation, as the Fe-B-R
notation would merely represent situations where no Co has been substituted
for iron.
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Thus, based on this record, the ‘651 Patent was entitled to claim
priority to the application resulting in the Sagawa ‘368. Therefore, the
Examiner erred in determining that Sagawa ‘368 is prior art to the ‘651
Patent. Accordingly, we reverse the Examiner’s decision to reject claims 1,
2, 6, and 7 as being anticipated by Sagawa ‘368.

Double Patenting
The Examiner’s position is that claims 1, 2, 6, 7, and 15-24 of the
‘651 Patent are not patentably distinct from claims 1, 3, 13, 16, 29, and 34 of
Sagawa ‘368, because the claims of Sagawa ‘368, which utilize the
transitional phrase “consisting essentially of,” are open to the inclusion of
other elements, specifically the X and A elements recited in the claims of the
‘651 Patent. The X and A elements are inevitable impurities, as shown by
the Specification of the ‘368 Patent. (Final Rejection, 9, 14-15; Ans. 15-16.)
The Examiner states that the Specification of the ‘368 Patent is being used to
determine the scope of the claims in order to judge whether the invention
claimed in the ‘651 Patent is an obvious variation of the claims in the ‘368
Patent. (Final Rejection, 14-15; Ans. 25-28.) The Examiner maintains a
similar position for the obviousness double patenting rejection based on
Sagawa ‘723. (Final Rejection 10, 15-16; Ans. 16-18, 27-28.)
Patent Owner contends that the Examiner has improperly turned to the
Specification of Sagawa ‘368 and, further, that the impurities disclosed in
the ‘368 Patent are not inevitable as asserted by the Examiner. (App. Br. 13-
18.) Patent Owner argues that the claims are clear and thus there is no need
to resort to the Sagawa ‘368 Specification. (App. Br. 22-23.) Patent Owner
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further contends that the embodiments recited in the Sagawa ‘368 fail to
provide a basis to include A or X elements and the Examiner has failed to
provide a reason to combine the teachings in the Specification of Sagawa
‘368 with the Sagawa ‘368 Patent claims. (App. Br. 23-27.) Patent Owner
relies on similar 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
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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. . . . 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.

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

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 that the
portions of the Specification of Sagawa ‘368 consulted by the Examiner do
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not support the claims because the claims of Sagawa ‘368 do not contain X
and A elements. (App. Br. 24.)
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.
Accordingly, we agree with the Examiner that the transitional phrase
“consisting essentially of” as recited in claims 1, 3, 13, and 16 of Sagawa
‘368 does not exclude the X and A elements recited in the claims of the ‘651
Patent. It is clear from the above discussion that such elements do not
materially affect the basic and novel characteristics of the materials recited
in the claims of Sagawa ‘368. In re Herz, 537 F.2d 549, 551-52 (CCPA
1976) (“‘consisting essentially of’ limits the scope of a claim to the specified
ingredients and those that do not materially affect the basic and novel
characteristic(s) of a composition.”) (emphasis in original)
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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 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. 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.
We recognize that our analysis differs from the Examiner’s position in
the Final Rejection and Examiner’s Answer. Accordingly, we designate our
rationale as a new ground of rejection pursuant to our authority under 37
C.F.R. § 41.50(b). As a result, we find it unnecessary to reach Patent
Owner’s argument that the Examiner presented a significant new rationale in
the Examiner’s Answer.
Double Patenting based on Sagawa ‘723
The obviousness type double patenting rejection based on Sagawa
‘723 stands on different footing. As pointed out by Patent Owner, Sagawa
‘723 fails to disclose any A elements. While the Examiner relies on the
general disclosure of impurities in Sagawa ‘723 (Ans. 18), none of those
impurities are identified in the Specification of Sagawa ‘723 as the A
elements recited in the claims of the ‘651 Patent. The Examiner does not
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cite to any other prior art that would identify A elements as common
impurities in magnetic materials containing Fe, B, R, and M. Thus, there is
insufficient basis on this record to conclude that the rejected claims of the
‘651 Patent represent obvious variations of the identified claims in Sagawa
‘723. Accordingly, we reverse the Examiner’s obviousness-type double
patenting rejection based on Sagawa ‘723.

CONCLUSION
On this 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 double patenting rejection of the claims; and
the Examiner‘s reliance on the Specification of Sagawa ‘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
ground of non-statutory obviousness-type double patenting as being
unpatentable over claims 1, 3, 13, 16, 29, and 34 of Sagawa ‘368 is affirmed.
The Examiner’s decision to reject claims 1, 2, 6, 7, and 15-24 under
35 U.S.C. § 102(b) is reversed.
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The Examiner’s decision to reject 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, 14, 24, 30, 32, and 34 of Sagawa ‘723 is
reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new 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, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(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.F.R. §41.50(b)

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ack

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