N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ HITACHI METALS, LTD. , Appellant

v.

ALLIANCE OF RARE

- EARTH PERMANENT MAGNET INDUSTRY, Appellee

______________________

2016

- 1824, 2016

- 1825

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board in No s

. IPR2014

- 01265, IPR2014

- 01266.

______________________

Decided: July 6, 2017

______________________

M ARC A. H EARRON , Morrison & Foerster LLP, Was hington, DC, argued for appellant. Also represented by B RIAN R OBERT M ATSUI , S ETH W. L LOYD ; M EHRAN A RJOMAND , Los Angeles, CA.

K IRK T. B RADLEY , Alston & Bird LLP, Charlotte, NC, argued for appellee. Also represented by M ICHAEL S. C ONNOR ; C HRISTOPHER B RANTLEY K ELLY , Atlanta, GA.

______________________HITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 2

Before L OURIE , T ARANTO , and C HEN , Circuit Judges.

L OURIE , Circuit Judge

. Hitachi Metals, Ltd. (“Hitachi”) appeals from final written decisions of the U.S. Patent and Trademark Office (“the PTO”) Patent Trial and Appeal Board (“the Board”) in two inter partes reviews (“IPRs”) , concluding that claims 1, 5, and 6 of U.S. Patent 6,537,385 (“ the ’385 patent ”) and claims 1

– 4, 11, 12, and 14

– 16 of U.S. Patent 6,491,765 (“ the ’765 patent ”) would have been obvious at the time of their respective inventions and that claim 1 of the ’385 patent was anticipated

. See All. of Rare

- Earth Permanent Magnet Indus.

, IPR 2014

- 012 65, 2016 Pat. App. LEXIS 1082 , at *41 (P.T.A.B. Feb. 8, 2016) (“ ’385 Decision ”); All. of Rare

- Earth Permanent Magnet Indus.

, IPR 2014

- 01266, 2016 Pat. App. LEXIS 1083 , at *56 ( P.T.A.B. Feb. 8, 2016) (“ ’ 765 Decision ”). For the reasons set forth below, we affirm in part and vacate and remand in part.

B ACKGROUND Hitachi owns the ’385 and ’765 patents (together, “the challenged patents”), which have almost identical written descriptions and are directed to a process for manufactu ring a powder used to produce rare

- earth magnets. See,
e.g. , ’765 patent col. 1 ll. 7

– 9. 1 Claim 1 of the ’385 patent is representative and reads as follows: A method for manufacturing alloy powder for R

– Fe

– B rare earth magnets, comprising a first pu lverization step of coarsely pulver izing a n R

– Fe

– B

1 Because the challenged patents have almost ide nti cal written descriptions, we will refer only to the ’765 patent written description for simplicity when discussing either patent.HITACHI METALS , LTD

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alloy for rare earth magnets produced by a rapid cooling method and a second pulveriz a tion step of finely pulverizing the material a lloy

, wherein said second pulverization step

com prises a step of removing at least part of the powder in which the conce ntration of r a re earth element is greater than the ave r age co n centration of rare earth ele ment co n tained in the entire powder

. ’385 patent col. 13 ll. 19

– 37. The “R

– Fe

– B” designation refers to a mixture of a rare earth element (R), i ron (Fe), and boron (B). Dependent claim 5 requires the further step of cooling “a molten material alloy at a cooling rate in a range between 10 2 o C./sec and 10 4 o C./sec. ” Id. col. 14 ll. 1– 4. Dependent claim 6 requires that the molten mater ial alloy be cooled by a “strip casting method.” Id. col. 14 ll. 5

– 6. Claim 1 of the ’765 patent is repr esentative and reads as follows: A method for manufacturing alloy powder for R

– Fe

– B rare earth magnets, comprising a first pu lverization step of coarsely pulveri zing a m a terial alloy for rare earth magnets and a second pulver ization step of finely pulverizing the m a terial alloy, wherein said first pulverization step co mprises a step of pulverizing the materia l alloy by a hydrogen pulveriza tion method, and

sa id second pulverization step comprises a step of removing at least part of fine
po w der having a particle size of 1.0 μ m

or less to adjust the particle quantity of the fi ne powder having a particle size ofHITACHI METALS , LTD

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1.0 μ m or less to 10% or less of the pa rticle quantity of the entire powder. ’765 patent col. 13 ll. 21

– 33. Dependent claim 3 requires that the fine pulverization step be performed “in a high

speed flow of gas,” which dependent claim 4 requires to be “oxygen.” Id. col. 13 ll. 39

– 43. Dependent clai ms 11 and 12 resemble claims 5 and 6, respectively, of the ’385 patent, as discussed above. Id. col. 14 ll. 16

– 21.

The Alliance of Rare

- Earth Permanent Magnet Indu stry (“the Alliance”) filed requests for IPR of the challenged patents, which the PTO grante d. The Board concluded that claims 1, 5, and 16 of the ’385 patent and claims 1

– 4, 11, 12, and 14

– 16 of the ’765 patent would have been obvious over various combinations of: (1) Japanese Patent 1993

- 283217 to Hasegawa (“ Hasegawa ”); (2) U.S. Patent 4,992,2 34 to Ohashi et al. (“ Ohashi ”); (3) U.S. Patent 5,383,978 to Yamamoto et al. (“ Yamamoto ”); and (4) Shuixiao He, Rare Earth Permanent Magnet Milling Equipment – Jet Mill Closed Loop System , 21 M AGNETIC M ATERIALS AND P ARTS , 48

– 51 (Oct. 1990) (“ He ”). The Boa rd also concluded that claim 1 of the ’385 patent was anticipated by He

. I. ’385 Patent
The Board concluded that claims 1, 5, and 6 of the ’385 patent would have been obvious over either Hasegawa , Ohashi , or He and Yamamoto

, and that cl aim 1 wa s anticipated by He

. In making its obviousness determin ations , the Board relied on Hasegawa

, Ohashi , and He for teaching every element of claim 1 except the “ rapid coo ling method, ” for which it relied on Yamamoto

. Hitachi did not dispute those findings. Hitachi argued only that one of ordinary skill in the art would not have been mot ivated to combine those references.HITACHI METALS , LTD

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A. Obviousness over Ohashi / Hasegawa and Yamamoto The Board, crediting the Alliance’s arguments, found that one of ordinary skill would have been motivated to combine Ohashi or Hasegawa with Yamamoto because it was understood that Yamamot o’ s rapid cooling method produces a more uniform alloy , so one of ordinary skill would have be en motivated to combine the references “ in order to pulverize a more uniform R– Fe

– B material alloy.” ’385 Decision

, 2016 Pat. App. LEXIS 1082 , at *16

– 17, * 21

– 22. Hitachi did not dispute that Yamamoto ’s rapid cooling method would result in a more uniform al loy, but rather argued that one of ordinary skill would not have be en motivated to pulverize a more uniform alloy because the consequence would have been a 50% or more reduction in yield. See i d. at *18

– 19

. The Board rejected Hitachi’s arguments, explaining that, even if Hitachi were correct that the com bination would have resulted in a significantly diminished yield, such commercial considerations “do[] not control the obviousness determination,” especially since the claims do not require a certain minimum yield. Id. at *21. Instead, the Board relied on the Alliance ’s evidence that the claimed steps were each known in the art and used for their known purpose and that the result of the combin ation would h ave been predictable. Id. at *21, *27

– 28. The Board found that a skilled artisan would have known how to combine the references because the ingot ( Ohashi and Hasegawa ) and strip casting ( Yamamoto ) methods were “interchangeable to those skilled in the art.” Id. at *13, *27. Furt hermore, the Board found that “design ince ntives,” such as “lower cost [and a] more productive [pr ocess] better suited for higher volume manufacturing,” would have led one of ordinary skill to pursue the comb ination. Id. at *21

– 22 , *27

– 28

. Hitachi did no t dispute that Yamamoto teaches the limitations of claims 5 and 6 of the ’385 patent

, and t heHITACHI METALS , LTD

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Board concluded that those claims would also have been obvious over Ohashi or Hasegawa and Yamamoto for the

same reasons as claim 1

. B . Obviousness over He and Yamamoto

The Board also concluded that claims 5 and 6 would have been obvious over He and Yamamoto . The Board relied on He for teaching every limitation except for the

coo l ing rate range of claim 5 and the “strip casting met hod” of claim 6, for which it relied on Yamamoto . Hitachi did not dispute that the references teach those limit ations, but rather argued that there would not have been a motivation to combine them . The Board rejected the Alliance’s argument that one of ordinary skill w ould have been motived to combine He with Yamamot o’s cooling rate because Yamamoto ’s method would result in a more uniform alloy. Id. at * 38

– 39. The Board found that the Alliance’s evidence was lacking because it did not explain how Yamamoto ’s particular cooling rate would differ from He ’s disclosed “quick quench ing, ” Joint Appendix (“J.A.”) 705. ’385 Decision

, 2016 Pat. App. LEXIS 1082 , at *38. However, the Board found persuasive the Alliance’s evidence that the claims encom pass nothing more than the “ combination of prior art elements according to known methods to yield a predictable result.” Id. at *39

– 40. Thus, the Board concluded that claims 5 and 6 would have been obvious over He and Yamamoto

. C . Anticipation by He

The Board found that He anticipated claim 1. T he dispute before the Board focused on whether He ’s di sclosed “quick quenching ,” J.A. 705, constitutes the claimed “rapid cooling meth od, ” ’385 patent col. 13 l. 22. Thus, the Board first construed “rapid cooling method .” ’385 Dec ision

, 2016 Pat. App. LEXIS 1082, at *10

– 11. Hitachi argued that a skilled artisan would have inte rpreted He ’s disclosed “quick quenching” method to be a “super

- rapid cooling,” rather than a “rapid cooling,”HITACHI METALS , LTD

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method. Specifically, Hitachi ar gued, one of o rdinary skill would have interpreted “quick quenching” as refer ring to “melt spinning,” a super

- rapid cooling method that e mploys cooling rates “in excess of 10 6 K s -1 ,” because strip casting methods were not known in 1990. Id. at *32

– 33. Hitachi argued that t he written description defines the range of cooling rates covered by the t erm “rapid cooling” as being between 10 2

– 10 4 o C./sec and thus He does not disclose the “rapid cooling method” as properly construed. The Board rejected Hitachi’s constructio n based on principles of claim differentiation

— it found that, because dependent claim 5 recites “a cooling rate in a range b etween 10 2 o C./sec and 10 4 o C./sec ,” claim 1’s recitation of “rapid cooling method” must “encompass a broader range of cooling rate s” and thus does not “necessarily exclude
super

- rapid cooling methods.” Id. at *10

– 11. U nder that construction, the Board found that He ’s disclosed “quick quenching” constitutes the claimed “rapid cooling method” and that claim 1 wa s anticipated by He

. Id. at *34.

II. ’765 Patent

A. Obviousness over Ohashi and Hasegawa

The Board concluded that claims 1

– 4, 14, and 16 of the ’765 patent would have been obvious over Ohashi and Hasegawa . In making its obviousness determination, the Board relied on Ohashi for teaching every element of claim 1

, except the requirement that the “first pulveriz ation step comprises a step of pulverizing the material alloy by a hydrogen pulverization method,” ’765 patent col. 13 ll. 26

– 28 (emphasis added)

, for which it rel ied on Hasegawa . Hitachi did not dispute those findings , but rather argued only that one of ordinary skill in the art would not have been motivated to combine the references. The Board found that one of ordinary skill would have been motived to employ H asegawa ’s hydrogen pulveriz ation method to “improve the coarse pulverization” taughtHITACHI METALS , LTD

. v. ALLIANCE OF RARE

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by Ohashi because the Alliance’s evidence shows that hydrogen pulverization “more easily crush[es] the mater ial alloy

. ” ’ 765 Decision

, 2016 Pat. App. LEXIS 1083 , at *16–1 8. The Board credited the Alliance ’s evidence that hydrogen pulverization allows the process to occur “in

one

- fourth of the time required by [ Ohashi ’s] mechanical pulveriza tion ” and that it also “improves pulverization yield and pulverization efficiency.” Id. at *29, *30 (inte rnal quotation marks omitted). Further, the Board found that one of ordinary skill would have had a reasonable expectation of success in combining the references, which disclose “well

- known and common technique[s],” and that the results would have been predictable. Id. at *29.

As for dependent claims 2, 3, 14, and 16, Hitachi made no additional arguments and the Board concluded that those claims would have been obvious over Ohashi and Hasegawa for the same reasons as claim 1. Id. at *31.

Hitachi did , however, assert separate arguments relating to the Board’s obvious ness determination of claim 4, which depends from claim 3 and requires that the “pulverization step ” be conducted “in a high

- speed flow of gas” (claim 3), “wherein the gas comprises oxygen” (claim 4). ’765 patent col. 13 ll. 39

– 43. Hitachi argued that Ohashi teaches the use of a high

- speed flow of gas (i.e., an “air stream ,” J.A. 699 ) for particle classification only, not for finely pulverizing the alloy , as required b y claim 4

. The Board rejected that argument, deter mining that claim 1

, from which claim 4 depends, comprises two pulverization steps: (1) a first pulverization step of coarse pulverization ; and (2) a second pulverization step, which in turn comprises the two “sub

- step [s] ” of (i) fine pulver iza tion, a.k.a. “milling,” and (ii) particle classification , i.e. removal of particles having a particular size

. ’ 765 Dec ision

, 2016 Pat. App. LEXIS 1083 , at *37. The Board concluded that the two sub

- steps constitute one contin u-HITACHI METALS , LTD

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ous process under the umbrella “ second pulverization step ”—t hus, a reference teaching the second sub

- step necessarily teaches the umbrella “ second pulverization step. ” Id. at *35

– 37. And the Board interpreted claim 4 as requiring a high

- spe ed flow of oxygen for the umbrella step , not the first sub

- step. Id. at *37

– 38

. Under that interpretation, t he Board found that Ohashi teaches

“ pulverization ” using a “high

- speed flow of [oxygen] gas

, ” as recited in claim 4, because it teaches using an “air stream” for particle classification (i.e., the second sub

step) and an “air stream” necessarily includes some amount of oxygen gas. Id. at *38.

B. Obviousness over Ohashi

, Hasegawa , and Yamamoto

The Board concluded that d ependent claims 11 and 12 would have been obvious over Ohashi

, Hasegawa , and Yamamoto . Hitachi again disputed only the combinability of those references for the same reasons it had previously articulated . The Board rejected those argu ments, finding a motivation to combine Ohashi and Hasegawa for the same reasons as for claim 1 of the ’765 patent and a motivation to combine either Ohashi or Hasegawa with Yamamoto for the same reasons as for claim 1 of the ’385 patent

. Hitachi timely appealed to thi s court. We have juri sdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

D ISCUSSION We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. In re Gar tside , 203 F.3d 1305, 1316 (Fed. Cir. 2000). A finding is
suppo rted by substantial evidence if a reasonable mind might accept the evidence as adequate to support the conclusion draw n therefrom

. Consol. Edison Co. v. NLRB , 305 U.S. 197, 217 (1938). Obviousness is a que stion of law based on underlying facts. Apple In c. v. Sa msung Elecs. Co. , 839 F.3d 1034, 1047 (Fed. Cir. 2016) (enHITACHI METALS , LTD

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banc). What the prior art teaches, whether a person of ordinary skill in the art would have been motivated to combine references, and whether a reference teaches away from the claimed inve ntion are questions of fact. Id. at 1047

– 48; In re Mouttet , 686 F.3d 1322, 1330 (Fed. Cir. 2012). On appeal, Hitachi argues that the Board erred in: (1) finding a motivation to combine the references in its obviousness determinations for both of the challenged patents ; (2) constru ing “rapid cooling method” and fin ding, under that construction, that He anticipates claim 1 of the ’385 patent; and (3) construing claim 4 of the ’765 patent and thus in its obviousness determination of that claim . We discuss each of the challenged patents in turn.

I. ’385 Patent

A. Obviousness over Ohashi or Hasegawa and Yamamoto The Board concluded that claims 1, 5, and 6 of the ’385 patent would have been obvious over Hasegawa or Ohashi in view of Yamam oto

. Hitachi makes almost identical arguments for both of the combinations relied upon by the Board

— namely, that one of skill in the art would not have been motiv at ed to combine Ohashi or Hasegawa with Yamamoto because the result s of pulverizing the more uniform alloy produced by Yamamot o ’s rapid cooling method would be a 50% or more reduction in yield and a lower quality ma gnet

. Hitachi argues that the Board erred in dismissing its evidence regarding the potentially lower yield as a “co mmercial [consideration that] does not control the obviou sness determination.” ’ 38 5 Decision

, 2016 Pat. App. LEXIS 1082 , at *20. Hitachi notes the apparent contradiction between that reasoning and the Board’s subsequent finding that one of skill in the art would be motivated to combine the references due to “design incentives,” such as “lower cost [and a] more productive [process] better suitedHITACHI METALS , LTD

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for higher volume manufacturing.” Id. at *21

– 22
, * 27,

* 28. Hitachi also disputes the Board’s findings that all of the claims would have been obvious because they “repr esent the combination of prior art elements according to known methods to yield a predictable result.” S ee, e.g. , i d. at *21 (citing KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 4 16 (2007) ) . Hitachi argues that those findings are mer ely “boilerplate” recitations that state a conclusion , not a

reason to combine the references. The Alliance responds that the factual findings u nderpinning the Board’s obviousness determinations were supported b y substantial evidence.

We conclude that the Board did not err in determining that claims 1, 5, and 6 of the ’385 patent would have been obvious over Ohashi or Hasegawa in view of Yamamoto

. We do agree with Hitachi that the Board applied interna lly 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 r eferences due to “design ince ntives,” id. at *21 . If the Board’s analysis had stopped there, we might remand for further analysis that is not internally inconsistent

. How ever, the Board made additional finding s to su pport its obviousness determinations

, including that one of skill in the art would have know n to mitigate the alleged reduc tion in yield by adjusting the jet mill settings during pulverization. See, e.g.

, id. at *19, * 28 (citing expert testimony that “a person of ordinary skill would have kn own to adjust basic, fundamental jet milling settings to accommodate the uniform particle size and shape distr ib ution of the strip cast alloy” (internal quotation marks and brackets omitted))

. That finding was supported by substantial record evidence. Se e J.A. 788.HITACHI METALS , LTD

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Hitachi points to countervailing testimony by the same expert that, while a skilled artisan would have know n to adjust the settings, they would not have know n how to do so, as the “multi

- parameter compositional experimentation” required would be beyond the capabil ities 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 m ust 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 dete rmination 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 yiel ds 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 resu lts of so doing would have been predictable

. See ’385 Decision

, 2016 Pat. App. LEXIS 1082 , at *18, * 20,

* 27, * 39.

B. Obviousness over He and Yamamoto

The Board found that claims 5 and 6 would have also been obvious over He and Yamamoto

. As for those claims

, Hitachi repeats several of its arguments regarding the Board’s determinations of obviousness over Ohashi or Hasegawa and Yamamoto . Namely, Hitachi disputes the Board’s finding that the claims are directed to nothingHITACHI METALS , LTD

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more than the “combinati on of prior art elements accor ding to known methods to yield a predictable result.” Id. at *39– 40. Hitachi argues that such findings are merely boilerplate recitations that state a conclusion , not a

reason to combine the references. Furthermore, Hitach i challenges the credibility of the Alliance’s expert declar ation, relied upon by the Board, as making bald assertions that lack evidentiary support.

We affirm the Board’s conclusion that claims 5 and 6 would have been obvious over He and Yamamoto for th e reasons discussed above regarding the obviousness of claim 1, 5, and 6 over Ohashi / Hasegawa and Yamamoto

. We see no legal error in the Board’s analysis, and we do
not re weigh evidence on appeal.

C. Anticipation by He

The Board found that He anticipated claim 1. On a ppeal, Hitachi challenges the Board’s construction of “rapid cooling method,” arguing , as it did before the Board, that one of ordinary skill would have under stood “rapid cooling method” to be distinct from “super rapid cooling .” Hitachi asserts that

, at the time of the invention, one of ordinary skill would have recognized three categories of methods for preparing alloys for sintered rare

- earth magnets: (1) traditional cooling methods, such as ingot casting; (2) rapid cooling methods, such as strip casting; and (3) super

- rapid cooling methods, such as melt spinning. Hitachi submitted evidence

— expert testimony and other printed publications

— indicating that one of ordinary skill would have understood the three categories to be dis tinct, such that “rapid cooling” refers to a method that is faster than ingot casting, but not so fast that it enters the d omain of super

- rapid cooling. Hitachi argues that the written description defines the range of cooling rates covered by the term bec ause it states: “In the rapid coo ling method, the molten alloy is cooled at a rate in the range between 10 2 o C./sec and 10 4 o C./sec .” ’38 5 patentHITACHI METALS , LTD

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col. 1 ll. 4 6– 47. In contrast, Hitachi argues, super rapid cooling methods were understood by those of skill in the art as exceeding 10 6 degrees per second. Therefore, Hitachi argues, one of skill in the art would have unde rstood He ’s disclosed “quick quenching” to be a “super rapid cooling” method rather than the claimed “ rapid cooling method ” and thus He did not anticipate claim 1. The Alliance responds that the Board correctly co nstrued “rapid cooling method .” T he Alliance argues that the written description prov ides a clear definition of the term when it describes rapid cooling as “typified by a strip casting method,” wherein “ a molten material alloy is put into contact with a single chill roll, twin chill rolls, a rotary chill disk, a rotary cylindrical chill mold, or the like, to be rapidly cooled thereby producing a solidified alloy thinner than an ingot cast alloy.” Id. col. 1 ll. 39

– 45. The Alliance contends that the Board correctly adopted that definition, finding in it no exclusion of rates in excess of 10 6 o C./sec . Furthermore, the Alliance argues, claim 5, which depends from claim 1, recites “a cooling rate in a range between 10 2 and 10 4 o C./sec ,” id. col. 14 l. 4, and claim 6, which depends from claim 5, specifies that the rapid cooling method is a “strip casting method,” id. col. 14 l. 6. Thus, the Alliance maintains, claim 1’s recitation of “rapid cooling method” must encompass rates outside of the range recited in claim 5 and methods other than the strip casting recited in claim 6 , and therefore claim 1 was anticipated by He

. W e agree with the Alliance that the doctrine of claim differentiation require s that the scope of “rapid cooling method” cove red by claim 1 be broader than the range specified in dependent claim 5 ( 10 2

– 10 4 o C./sec ). See id. col. 14 ll. 1

– 4. Hitachi argues that, even if claim differe ntiation require s the range of claim 1 to be slightly broader than 10 2

– 10 4 o C./sec , it does not require the range to be so broad as to include rates in excess of 10 6 degrees perHITACHI METALS , LTD

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second, which one of ordinary skill would understand to constitute super

- rapid cooling. However, nowhere does the written description accord with Hitachi’s ar gument , n or does it anywhere indicate that “rapid cooling” must exclude cooling at rates in excess of 10 6 degrees per second

. Rather, the written description states that “[i]n a preferred embodiment , the material alloy for rare earth magnets is obtained b y cooling a molten material alloy at a cooling rate in the range between 10 2 o C./sec and 10 4 o C./sec .” Id . col. 3 ll. 51

– 54 (emphasis added). The patent expressly refers to the range recited by claim 5 as a “preferred embodiment.” Id. Thus, “rapid cooling method,” as recited in claim 1, must encompass a broader range than that recited in claim 5 and nowhere does the specification cap the range at 10 6 degrees per second. Consequently , the Board’s construction of “rapid cooling method” as not excluding “super rapid cooling” is supported by the intrinsic record and we affirm that construction. Hitachi premises the remainder of its challenges to the Board’s anticipation finding on its proposed constru ction of “rapid cooling method.” Thus , because we affirm the Board’s construction, we affirm its finding that He anticipate d claim 1. Accordingly, the Board was correct in concluding that claim 1, as properly construed, was anti cipated by He

. II. ’765 Patent

A. Obviousness over Ohashi an d Hasegawa

The Board concluded that claims 1

– 4, 14, and 16 of the ’765 patent would have been obvious over Ohashi and Hasegawa

. Hitachi challenges the Board’s findings that one of ordinary skill would have been motiv at ed to employ Hasegawa ’s hydrogen pulverization to “improve the coarse pulverization” taught by Ohashi because the Alliance’s evidence shows that hydrogen pulverization “more easilyHITACHI METALS , LTD

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crush[es] the material alloy,” and hydrogen pulverization was a “well

- known and common technique ” that would have yielded predictable results when substituted for Ohashi ’s mechanical pulverization

. ’765 Decision

, 2016 Pat. App. LEXIS 1083

, at *16

– 18, * 29 (internal quotation marks omitted).

Hitachi contends that t he Board erred in accepting the bal d assertions of the Alliance’s expert that lacked supporting evidence. Hitachi points to its evidence that, in order to substitute Hasegawa ’s hydrogen pulverization for Ohashi ’s mechanical pulverization, the solid alloy must accordingly be changed to the proper microstru cture, but changing the microstructure of the solid alloy would completely alter Ohashi ’s operating principle. Thus , Hitachi argues, the combination would have r equired more than ordinary skill. Furthermore, Hitachi contends that the Boar d improperly shifted the burden by requiring Hitachi to show that the combination would have been beyond the capability of one of ordinary skill. The Alliance responds that substantial evidence su pports the Board’s finding of a motivation to combine

. We agree with the Alliance that substantial evidence supports the Board’s findings for claim s 1, 2 , 14, and 16. The Board credited the Alliance’s evidence that one of ordinary skill would have been motived to employ Hasegawa ’s hydrogen pulverization to “improve the coarse pulverization” taught by Ohashi because the Alliance’s evidence shows that hydrogen pulverization “more easily crush[es] the material alloy,” i d. at *16

– 18; hydrogen pulverization allows the process to occur “in one

- fourth of the time required by [ Ohashi ’s] mechanical pulveriz ation,” id. at *29; hydrogen pulverization “improves pulve rization yield and pulverization efficiency” over mechanical pulverization, i d. at *29 (internal quotation marks omi tted); one o f ordinary skill would have had a reasonable expectation of success in combining the references, whichHITACHI METALS , LTD

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disclose “well

- known and common technique[s],” id. at *29; and the results would have been predictable, id . We conclude that the foregoing constitutes substantial ev idence to support the Board’ s determination

. Hitachi primarily disputes the credibility of the All iance’s evidence and presents its own competing evidence. But we do not reweigh the evidence considered by the Board and , in this case, we conclude that its interpret ation of the evidence was reasonable.

B. Obviousness of Claim 4 Hitachi separately argues that claim 4 would not have been obvious over Ohashi and Hasegawa . Hitachi co ntends that the Board improperly construed claim 4. Hitachi arg ues that the specification contradicts the Board’s construc tion— 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 pul verization 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 part icle classification step, otherwise there would be no fine powder to remove . Furthermor e, 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.HITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 18

The Alliance responds that the Board properly inte rpreted 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 r emoving the fine powder. See, e.g.

, id. Abstract (“In the second pulverization step, easily oxidized super

- fine powder

. . . is removed

. . . ”); id. col. 4 ll. 56

– 62 (“In the method according to the present invention, after a ma terial alloy

. . . is coarsely pulverized and before a fine pulverization step is finished , at least part of R

- rich super

fine powder

. . . is removed.

. . .”) (emphasis added). We agree with Hitachi that the Board misconstrued claim 4. As an initial matt er, the parties seem to agree that, as recited in claim 1, the fine pulverization and particle classification are sub

- steps of the umbrella “se cond pulverization step.” They disagree only as to whether claim 4’s requirement of a high

- speed flow of gas compri sing 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 “sec ond pulveriza tion step.” The passages of the written description which the A lliance 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 di spute. The issue is whether claim 4 requires 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.HITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 19

The written description explains that “[i]n the second pulverization step, the alloy is preferably finely pulve rized using a high

- speed flow of gas” containing oxygen, id

. col. 3 ll. 27

– 30, and that “[t]he alloys may be finely pu lve r ized using a jet mill,” id. col. 3 l. 46. Thus, it is clear that the high

- speed gas is associated with the fine pulve rization conducted in the jet mill . And the written descri ption 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. ” I d. col. 5 ll. 23

– 30 (emphases added). See also , e.g. , id. col. 3 ll. 47

– 50 (“The alloys may be finely pulverized us ing 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 mill ed) with a jet mill . To the jet mill used in this embo diment, a cyclone classifier is connected for removal of the fine powder.” (emphasis added)). In fact, in every instance where the written descri ption re fers to pulverization using a high

- speed flow of gas, it refers to the milling apparatus, i.e., “jet mill” or “pulve rizer,” rather than the particle “ classifier. ” See, e.g.

, id. col. 5 ll. 23

– 26 (“[W]hen a jet mill is use d to perform the 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

. . . .” (emphasis added)); id. col. 6 l. 58

– col. 7 l. 13 (discussing Figure 2, which shows the jet milling chamber, i.e., “pu lveri zer 14,” and the “classifier 16,” and explaining that the “material [is] pulverized with the pulverizer 14HITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 20

[and]

. . . classified with the cyclone classifier 16,” wherein

“ pulverizer 14 includes

. . . nozzle fittings 28 for receiving nozzles through which an inert gas

. . . is jet at high speed ” (emphases added)) ; id. col. 8 ll. 15

– 20 (“The material to be pulverized fed into the pulverizer 14 is rolled up with high

- speed jets of inert gas

. . . and swirl[ed] together with high

- speed gas flows inside the pulverizer 14 . While swirling, the particles of material are finely milled by mutual collision with each other.” (emphases added)) ; id. col. 10 l. 47

– 53 (referring to “the jet mill and the cyclone classifier connected to each other” and “ a high speed flow
ga s for the jet mill .” (emphasis added) ).
Thus, we reverse the Board’ s construction of claim 4 and conclude that it require s a high

- speed flow of gas (claim 3) comprising oxygen (claim 4) for the “fine pulver ization” that occurs in the first sub

- step

— for example, by “pulverizer 14” shown in Figure 2

. Under the correct construction, the Board’s obviousness determination as to claim 4 must therefore be vacated . The Board premised its finding that Ohashi ’s use of an air stream for particle classificati on (the second sub

- step) taught the limitations of claim 4 on its interpretation that claim 4 requires a high

- speed flow of gas for the umbrella step and that the two sub

- steps constitute one continuous process under the umbrella step. Under that interpre tation, the Board found that Ohashi ’s disclosure of a high

- speed flow of gas for the second sub

- step constituted a teaching of gas for the entire umbrella step. But t he correct construction precludes such a finding. Ohashi ’s use of an air stream for part icle classification only cannot meet the limitation of claim 4, which requires the use of a high

- speed flow of gas comprising oxygen for fine pulverization

. Therefore, because we reverse the Board’s claim co nstruction, we vacate its obviousness determina tion as to claim 4 and remand for further consideration under the proper construction

. We note that, on appeal, Hitachi did not argue claim 3 separately from claim 1, as it did forHITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 21

claim 4. However, our conclusion with respect to the construction of clai m 4 necessarily raises a question with respect to the construction and obviousness of claim 3. Thus, because we reverse the Board’s construction of claim 4, we also vacate its obviousness determination as to claim 3.

We also suggest that, on remand, the Board consider Hitachi’s argument that Ohashi teaches away from the invention of claim 4 because Ohashi teaches that the pulverization should be conducted in a “non

- oxidizing or inert gas,” and oxygen, even under the Board’s definition of “oxidizing gas,” see, e.g. , ’765 Decision

, 2016 Pat. App. LEXIS 1083 , at *21

– 22 , is undeniably an oxidizing gas. In fact, the written description explains that oxygen is employed to intentionally oxidize the alloy and thus “control[]

. . . the oxygen content of the finely pulverized alloy powder.” ’ 765 patent col. 9 ll. 30 (“The finely pulve rized powder particles are coated with an oxide layer as described above.” (emphasis added) ). Although Hitachi raised that argument before the Board, the Board’s explanation in rejecting it was see mingly non

- responsive

. See ’765 Decision

, 2016 Pat. App. LEXIS 1083 , at * 38

– 39. In fact, the Alliance acknow ledged during oral argu ment that the Board did not a ddress Hitachi’s argument and asserted that, if we reverse the Board’s cl aim construction, we should remand for the issue to be decided by the Board. Oral argument at 18:30

– 19:50
, Hitachi Metals, Ltd. v. All. of Rare

- Earth Permanent Magnet Indus. , No s . 16

- 1824,

- 1825 (Fed. Cir. June 8, 2017) (“At APPX53 is where the Board addresses the argument and doesn’t reach it.”)

, available
at http://oralarguments.cafc.uscourts.gov/default.aspx?fl= 2016

- 1824.mp3

.

C . Obviousness over Ohashi

, Hasegawa , and Yamamoto The Board concluded that dependent claim s 11 and 12 would have been obvious over Ohashi

, Hasegawa , andHITACHI METALS , LTD

. v. ALLIANCE OF RARE

- EARTH 22

Yamamoto

. Hitachi makes the same arguments regar ding the combinability of Ohashi and Hasegawa with Yamamoto that it a sserts in connection with the ’385 patent, as discussed above. Thus, we af firm the Board’s obviousness determinations as to claims 11 and 12 for the

same reasons we stated above

. In sum, we affirm the Board’s conclusion that claims 1, 5, and 6 of the ’385 patent would have been obvious

over Ohashi

, Hasegawa , or He and Yamamoto

, and that claim 1 wa s anticipated by He . We also affirm the Board’s conclusion that claims 1

, 2, 14, and 16 of the ’765 patent would have been obvious over Ohashi and Hasegawa and that claims 11 and 12 would have been obvious over Ohashi

, Hasegawa , and Yamamoto . However, we reverse the Board’s construction of claim 4 of the ’765 patent and thus vacate its obviousness determination as to claim s 3 and 4 and remand for further consideration consistent with this opinion

. C ONCLUSION
We have considered the re maining arguments but find them to be unpersuasive. For the foregoing reasons, we affirm

- in

- part and vacate

- in

- part the decision of the Board and remand for further consideration consistent with this opinion

. AFFIRMED

- IN

- PART, VACATED

- IN

- PART , AND REMANDE D

C OSTS
No costs