Board discusses double-patenting in Hitachi case

The applicant in Ex parte Hitachi Metals, Ltd. escaped a prior art rejection over applicant's prior work:

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.

As to double-patenting:

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. . . . 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)

AND

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.

AND

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)

And, here's the practice point:

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.

Bottom line:

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.