More on Hitachi v. Alliance, 2017 U.S. App. LEXIS 12031

Relevant to Hitachi v. Alliance, 2017 U.S. App. LEXIS 12031 , the first four claims of US Patent 6537385 (granted March 25, 2003 ) state:


1. A method for manufacturing alloy powder for R—Fe—B rare earth magnets, comprising a first pulverization step of coarsely pulverizing an R—Fe—B alloy for rare earth magnets produced by a rapid cooling method and a second pulverization step of finely pulverizing the material alloy,
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wherein said second pulverization step comprises a step of removing at least part of the powder in which the concentration of rare earth element is greater than the average concentration of rare earth element contained in the entire powder.

2. The method of claim 1, said second pulverization step including a step of finely pulverizing the alloy using a high-speed flow of a gas.

3. The method of claim 2, wherein the gas comprises oxygen.

4. The method of claim 3, wherein the concentration of oxygen is adjusted to be in the range between 0.05% and 3% by volume.



The first four claims of US Patent 6,491,765 :



1. A method for manufacturing alloy powder for R-Fe-B rare earth magnets, comprising a first pulverization step of coarsely pulverizing a material alloy for rare earth magnets and a second pulverization step of finely pulverizing the material alloy,wherein said first pulverization step comprises a step of pulverizing the material alloy by a hydrogen pulverization method, and said second pulverization step comprises a step of removing at least part of fine powder having a particle size of 1.0 [mu] m or less to adjust the particle quantity of the fine powder having a particle size of 1.0 [mu] m or less to 10% or less of the particle quantity of the entire powder.
2. The method of claim 1, wherein the average concentration of the rare earth element contained in the fine powder having a particle size of 1.0 [mu] m or less is greater than the average concentration of the rare earth element contained in the entire powder.
3. The method of claim 1 or 2, wherein in said pulverization step, the alloy is finely pulverized in a high-speed flow of gas.
4. The method of claims 3, wherein the gas comprises oxygen.





Note the text in the CAFC decision:



We do agree with Hitachi that the Board applied internally inconsistent reasoning in rejecting Hitachi's evidence on the basis that "commercial [considerations] do[] not control the obviousness determination," id. at *20, while also finding that one of skill in the art would have been motivated to combine the references due to "design incen-tives," id. at *21. If the Board's analysis had stopped there, we might remand for further analysis that is not internally inconsistent.

(...)

Hitachi points to countervailing testimony by the same expert that, while a skilled artisan would have known to adjust the settings, they would not have known how to do so, as the "multi-parameter compositional experimentation" required would be beyond the capabilities of one of ordinary skill. J.A. 972. However, we do not "reweigh evidence on appeal." In re NTP, Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011). We must accept the Board's finding so long as a "reasonable mind might accept [the evidence upon which it relied] as adequate to support [its] conclusion." Consol. Edison Co., 305 U.S. at 217. The Board reviewed the competing evidence and made a factual determination that a skilled artisan would not have been demotivated by the potential reduction in yield. We see no error in that finding, which was a reasonable interpretation of the record evidence.

In light of the foregoing, the Board found that the claims were directed to nothing more than a "combination of prior art elements according to known methods to yield a predictable result." '385 Decision, 2016 Pat. App. LEXIS 1082, at *21, *24. The Supreme Court has advised that a combination of known elements is likely to be obvious when it yields predictable results. KSR, 550 U.S. at 416. And substantial evidence supports the Board's findings that the prior art elements were well-known, one of ordinary skill would have known how to combine them, and the results of so doing would have been predictable. See '385 Decision, 2016 Pat. App. LEXIS 1082, at *18, *20, *27, *39.


Of claim 4 of the '765 patent:



Hitachi separately argues that claim 4 would not have been obvious over Ohashi and Hasegawa. Hitachi contends that the Board improperly construed claim 4.
Hitachi argues that the specification contradicts the Board's construction—i.e., that a high-speed flow of gas for particle classification, as taught by Ohashi, satisfies the limitations of claims 3 and 4—because it distinguishes between the two sub-steps of fine pulverization and particle classification as separate steps, rather than one continuous step. Hitachi points to the language of claim 1, which recites that the "second pulverization step of finely pulverizing the material alloy . . . comprises a step of removing at least part of the fine powder,"'765 patent col. 13 ll. 24-31 (emphasis added), and argues that the fine pulverization step must be finished before the [*24] particle classification step, otherwise there would be no fine powder to remove. Furthermore, Hitachi argues, the written description repeatedly distinguishes the act of fine pulverization conducted in the milling chamber of the apparatus from the particle classification performed in the classifier, and requires a high-speed flow of gas for the pulverization. Finally, Hitachi argues that Ohashi leads away from claim 4 by teaching that the pulverization should be conducted in a "non-oxidizing or inert gas" and oxygen is indisputably an oxidizing gas.
The Alliance responds that the Board properly interpreted the specification. First, the Alliance argues, claim 1 recites "a second pulverization step of finely pulverizing the material alloy, . . . wherein said second pulverization step comprises a step of removing at least part of the fine powder," id. col. 13 ll. 24-31 (emphasis added), and thus indicates that the particle classification (i.e., "remov[al]") is part of the "second pulverization step." Second, the Alliance contends that the written description repeatedly describes "fine pulverization" as including a step of removing the fine powder. See, e.g., id. Abstract ("In the second pulverization [*25] step, easily oxidized superfine powder . . . is removed . . . "); id. col. 4 ll. 56-62 ("In the method according to the present invention, after a material alloy . . . is coarsely pulverized and before a fine pulverization step is finished, at least part of R-rich superfine powder . . . is removed. . . .") (emphasis added).
We agree with Hitachi that the Board misconstrued claim 4. As an initial matter, the parties seem to agree that, as recited in claim 1, the fine pulverization and particle classification are sub-steps of the umbrella "second pulverization step." They disagree only as to whether claim 4's requirement of a high-speed flow of gas comprising oxygen pertains to the umbrella step or to the first sub-step. We agree with Hitachi that claim 4 requires the use of a high-speed flow of gas comprising oxygen for the first sub-step of claim 1—the fine pulverization—rather than the umbrella "second pulverization step."
The passages of the written description which the Alliance cite merely confirm that the particle classification step is a sub-step of the umbrella "second pulverization step," which, as we noted above, the parties do not dispute. The issue is whether claim 4 requires [*26] a high-speed oxygen-containing gas for the umbrella step, or for the first sub-step. We conclude that it refers to the latter; and the passages relied on by the Alliance do not contradict that interpretation.
The written description explains that "[i]n the second pulverization step, the alloy is preferably finely pulverized using a high-speed flow of gas" containing oxygen, id. col. 3 ll. 27-30, and that "[t]he alloys may be finely pulverized using a jet mill," id. col. 3 l. 46. Thus, it is clear that the high-speed gas is associated with the fine pulverization conducted in the jet mill. And the written description clearly distinguishes the jet milling apparatus from the particle classifier for performing the two distinct sub-steps—fine pulverization and particle classification, respectively. For example, the patent explains that "when a jet mill is used to perform fine pulverization under a high-speed flow of inert gas, a gas flow classifier . . . may be provided following the jet mill to enable effective removal of R-rich super-fine powder . . . . [A] jet mill is used for the fine pulverization." Id. col. 5 ll. 23-30 (emphases added). See also, e.g., id. col. 3 ll. 47-50 ("The alloys may be [*27] finely pulverized using a jet mill. In a preferred embodiment, a classifier is provided following the jet mill for classifying powder output from the jet mill." (emphases added)); id. col. 6 ll. 55-57 ("Next, the coarsely pulverized powder . . . is finely pulverized (or milled) with a jet mill. To the jet mill used in this embodiment, a cyclone classifier is connected for removal of the fine powder." (emphasis added)).


The term "broadest reasonable" does not appear in 2017 U.S. App. LEXIS 12031 .

Note also All. of Rare-Earth Permanent Magnet Indus., IPR 2014-01266, 2016 Pat. App. LEXIS 1083, (P.T.A.B. Feb. 8, 2016) ("'765 Decision")