-
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.)
2
Case: 14-1689 Document: 1-2 Page: 20 Filed: 12/12/2013 (22 of
39)
-
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")
3
Case: 14-1689 Document: 1-2 Page: 21 Filed: 12/12/2013 (23 of
39)
-
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
Case: 14-1689 Document: 1-2 Page: 22 Filed: 12/12/2013 (24 of
39)
-
Appeal 2012-008632 Reexamination Control 90/010,759 Patent
5,645,651
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
Case: 14-1689 Document: 1-2 Page: 23 Filed: 12/12/2013 (25 of
39)
-
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
Case: 14-1689 Document: 1-2 Page: 24 Filed: 12/12/2013 (26 of
39)
-
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
-
Appeal 2012-008632 Reexamination Control 90/010,759 Patent
5,645,651
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
Case: 14-1689 Document: 1-2 Page: 27 Filed: 12/12/2013 (29 of
39)
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
Case: 14-1689 Document: 1-2 Page: 28 Filed: 12/12/2013 (30 of
39)
-
Appeal 2012-008632 Reexamination Control 90/010,759 Patent
5,645,651
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.
13
Case: 14-1689 Document: 1-2 Page: 31 Filed: 12/12/2013 (33 of
39)
-
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)
14
Case: 14-1689 Document: 1-2 Page: 32 Filed: 12/12/2013 (34 of
39)
-
Appeal 2012-008632 Reexamination Control 90/010,759 Patent
5,645,651
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
15
Case: 14-1689 Document: 1-2 Page: 33 Filed: 12/12/2013 (35 of
39)