In Re Hitachi Metals, Ltd.

Docket No. 2014-1689

March 17, 2015


Brief Summary: Board decision that later-filed patent was invalid for double-patenting affirmed since “consisting essentially of” language (i.e., “can include those additional elements which do not materially affect the basic and novel characteristics of the claimed invention”) did not exclude impurities encompassed by the patent’s claims.

Summary: Hitachi appealed Board decision that its claims 1, 2, 6, 7 and 15-24 of US 5,645,651 filed June 7, 1995 relating to temperature dependency improvements in magnetic materials were invalid for obviousness-type double patenting over claims 1, 3, 13, 16, 29 and 34 of US 4,792,368 issued on Dec. 20, 1988. The ‘651 term extends almost nine years beyond the ‘368 expiration date. The ‘651 and ‘368 patents claim a crystalline compound based on an alloy system of the formula R(Fe,CO)B. The ‘368 patent includes additional elements defined as “R” and “M”. The ‘651 patent claims the additional elements “X”, “A” and “M”. The FC opinion explains that while “the patent disclosure may not be used as prior art” (In re Longi, FC 1985), “this does not mean that the court must close its eyes to the specification entirely…[it] may look to the specification to define terms found in the claims” and “the various embodiments described in the specification as they provide a tangible and more meaningful method to discern whether what is claimed was merely modified in an obvious manner” (Application of Vogel, CCPA 1970), concluding that “in limited circumstances, we may turn to the specification in the analysis of whether there is obviousness-type double patenting.” The FC panel concluded that “the only difference between the relevant claims in the ‘368 patent and the ‘651 patent is the additional of two elements, one from each of group X and A”. And it agreed “with the Board that, because the claims were drafted in the ‘consisting essentially of’ format, the scope of the claims can include those additional elements which do not materially affect the basic and novel characteristics of the claimed invention as specified in the ‘368 patent specification” (Application of Herz, CCPA 1976). Accordingly, while the ‘368 claims “do not explicitly include elements from X and A, [the] court construe[d] the claims to include the impurities carbon, phosphorus, copper, and fluorine” that “are all members of the ‘651 patent’s X group and fluorine is a member of the ‘651 patent’s A group.” Thus, it concluded “the relevant claims of the ‘368 patent include at least one claimed compound that would satisfy claim 1 of the ‘651 patent” and, therefore, “the relevant ‘651 patent claims at issue are not patentably distinct from the relevant ‘368 patent claims” and are invalid. The Board decision was therefore affirmed.

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