iAddressing obviousness in the context of dimensional claim limitations, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a decision by the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), now the Patent Trial and Appeal Board (PTAB), reinstating an examiner’s reexamination decision of unpatentability. Rexnord Industries v. Kappos, Case No. 11-1434 (Fed. Cir., Jan. 23, 2013) (Newman, J.).
The case arises out of an inter partes reexamination of a patent assigned to Habasit Belting. The validity of the patent was challenged by third-party requester, Rexnord Industries, based on prior art including patents to Palmaer and Thompson, among others. On reexamination, the examiner determined all the reexamined claims to be unpatentable for anticipation and obviousness.
The reexamined patent was directed to a mechanical conveyor belt that is formed of rows of belt modules interlinked by transverse rods. The mechanical conveyor belt included, inter alia, spaces between the belt modules smaller than 10 mm in diameter at its maximum extension. Each piece of prior art disclosed a conveyor belt including modules that are assembled similarly to the claimed invention. However, none of the prior art disclosed the size of the space when the conveyor belt is at its maximum extension, although the prior art did discuss the problem of small objects getting caught in the space between the modules and did disclose embodiments having spaces that are completely closed. Citing to Palmaer and Thompson for showing a space sufficiently small to prevent pinching of small objects, the examiner concluded that it would have been obvious for a skilled artisan to combine the prior teachings to arrive at the reexamined claims. Habasit appealed to the Board.
On appeal, Habasit argued that the reexamined claims are patentable because none of the cited references stated the 10 mm maximum dimension of the space and that some reference belts have no space. Rexnord responded that a 10 mm maximum space was inherent in the prior art structures. Upon observing that the cited art did not disclose the dimensions of the space between the modules, the Board reversed and determined that the reexamined claims were not anticipated by and non-obvious over the prior art. Rexnord requested a rehearing, asking the Board to consider other grounds, such as design choices, that were before the examiner. In denying the request, the Board stated that Rexnord’s arguments on obviousness were not the rationale of the examiner’s rejection and inherency arguments were new on the appeal to the Board. Rexnord appealed to the Federal Circuit.
The Federal Circuit agreed (with the Board) that the prior art did not disclose the size of the space between modules and that the less than 10 mm size limitation is not inherent in any prior art belt, and therefore concluded that the reexamined claims were not anticipated. However, as to obviousness, the Court agreed with the examiner that, since the prior art is directed to the same problem as in the reexamined patent—preventing small objects from being caught in the conveyor belt—the disclosures of completely closed spaces between modules satisfy the less than 10 mm size limitation. The Federal Circuit reinstated the examiner’s determination of unpatentability of the reexamined claims over the prior art.
Additionally, noting Rexnord was not the appellant before the Board, the Court stated that on judicial review, Rexnord, an appellee, can defend the correctness of the decision appealed from, based on any ground supported by the record, regardless of whether or not the appellant raised it on appeal.
Practice Note: On inter partes reexamination or review, an appellee can rely on any ground supported by the record to defend the correctness of the decision appealed from.
