This week we look at a recent PTAB decision. I pulled one random case from the Board’s docket published over the last few days, where IP Copilot was not used.
In Ex parte Hagiwara & Sakurada, the PTAB affirmed §103 rejections for a ThMn₁₂/TbCu7-class magnet composition that included small-amount Be and B ranges. The Board agreed with the Examiner that prior art overlapped the claimed Be and B ranges and that the patentee hadn’t shown criticality or unexpected results commensurate in scope.
What unlocked the rejection
The winning combination was straightforward: (1) Hagiwara for the ThMn₁₂ main phase and boron content in a range “nearly coextensive” with the claim, and (2) WO’312 for adding beryllium to improve coercivity within a 0–14 at% range. As the decision summarizes, WO’312 teaches that “X is one or more elements selected from N, H, Be and C … [and] 0.0–14.0 at%,” with the coercive force improved when the element invades the main-phase lattice. See also the source references for Hagiwara and WO’312.
Where IP Copilot fits in
In a live matter, counsel needs to answer—fast—two questions: Is there art overlapping the ranges? and Does the record show lack of criticality? IP Copilot’s “Invalidity Chart” does the heavy lifting in minutes:
- Surface overlapping-range art: IP Copilot reliably lifts ThMn₁₂/TbCu7 compositions and process disclosures; the only manual nudge here is to bias search toward Be-doping keywords (“beryllium,” “invading element,” “coercivity,” “0–14 at%”) to capture WO’312-type teachings.
- Assemble legal framing: IP Copilot collects quotes to support a classic overlapping-ranges rationale (think Peterson), and counsel drops those next to claim text. The Board’s reminder—overlap → prima facie obviousness—was dispositive once criticality fell short.
- Pressure-test “unexpected results”: IP Copilot’s side-by-side tables make it easy to show why narrow examples aren’t commensurate with broad ranges—exactly the critique the Board adopted here.
What our 15-minute run found
In a quick pass, Copilot pulled dozens of ThMn₁₂/TbCu7 and melt-spinning/amorphization/crystallization references—useful context and many claim elements. One cited item even mentioned “beryllium-copper” (as a wheel material), underscoring how close you can get in 15 minutes without targeted hints.
The missing piece was the explicit Be-into-lattice teaching and 0–14 at% range, which WO’312 squarely provides.
“Overlap of prior-art and claimed ranges generally establishes prima facie obviousness.” (paraphrasing the decision’s reliance on In re Peterson.)
That said, in IP Copilot it was designed such that you can modify what we’re looking for, in this case we were missing the Be into lattice structure. With that we can modify the limitation feature discussion, in this case we added what we were looking for as it relates to Claim 1:
The search then reruns, and you can see the before and after of the search:
Before updates to the feature limitation
After updates to the feature limitation
And there we go! We found what we were looking for with a quick addition.
Takeaway
With a prompt tuned to Be-doping and coercivity, IP Copilot would have surfaced the same two pillars the Board relied on (Hagiwara + WO’312) and assembled a tidy §103 map in one sitting. That’s the real value: triage in minutes, then attorney judgment to close gaps, and assess whether any criticality evidence can carry the day. For examples of this workflow on other appeals, see our other weekly PTAB reviews.
Leave a Reply