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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 2 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.) Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 3 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”) Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 4 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 5 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 6 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 7 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. Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 8 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 9 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 10 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 11 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) Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 12 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 Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 13 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. Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 14 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) Appeal 2012-008632 Reexamination Control 90/010,759 Patent 5,645,651 15 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