Rexnord Industries, LLC v. Kappos

United States Court of Appeals
for the Federal Circuit
______________________

REXNORD INDUSTRIES, LLC,
Appellant,

v.

DAVID J. KAPPOS, DIRECTOR,
UNITED STATES PATENT AND TRADEMARK
OFFICE,
Appellee,

AND

HABASIT BELTING, INC.,
Appellee.
______________________

2011-1434
______________________

Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
______________________

Decided: January 23, 2013
______________________

DAVID R. CROSS, Quarles & Brady, LLP, of Milwau-
kee, Wisconsin, argued for appellant. With him on the
brief was JOHANNA WILBERT.
2 REXNORD INDUSTRIES v. KAPPOS

MARY L. KELLY, Associate Solicitor, United States Pa-
tent and Trademark Office, of Alexandria, Virginia. With
her on the brief were RAYMOND T. CHEN, Solicitor, and
WILLIAM LAMARCA, Associate Solicitor.

MATTHEW T. BAILEY, McKeena Long & Aldridge, LLP,
of Washington, DC, argued for appellee. With him on the
brief was RANDALL C. PYLES.
______________________

Before NEWMAN, LOURIE, and PROST, Circuit Judges.

NEWMAN, Circuit Judge.
Rexnord Industries requested inter partes reexami-
nation of U.S. Patent No. 6,523,680 (the ’680 patent),
owned by Habasit Belting, Inc. The United States Patent
and Trademark Office (PTO) Board of Patent Appeals and
Interferences (Board) confirmed claims 1–14 of the ’680
patent. Rexnord appeals. We affirm that the claims are
not anticipated, and reverse the Board’s determination
that the claimed invention is not obvious in view of cer-
tain prior art.
BACKGROUND
In 2003 Habasit filed an infringement suit against
Rexnord in the United States District Court for the Dis-
trict of Delaware, Civil Action No. 03-185-JJF. Rexnord
then filed a request for reexamination of the ’680 patent,
and the district court stayed the infringement suit pend-
ing completion of reexamination. On reexamination, the
examiner held all of the claims in the ’680 patent un-
patentable for anticipation and obviousness. On appeal
by Habasit, the PTO Board reversed the examiner’s
decision and held the claims patentable. That decision is
appealed by Rexnord.
 REXNORD INDUSTRIES v. KAPPOS 3

The ’680 patent is for a mechanical conveyor belt
that is formed of rows of belt modules interlinked by
transverse rods. The interlinked modules form an endless
belt that is capable of following a curved path. The spaces
between the belt modules are blocked by plastic “webs” so
that the spaces are too small to pinch small items such as
a finger; the claims state that the spaces are smaller than
10 mm in diameter. Claim 1 is representative (boldface
added to the limitation here at issue):
1. A radius conveyor belt, comprising:
a plurality of belt modules having a plurality of
first link ends disposed in the direction of belt
travel and having a plurality of second link ends
disposed in the opposite direction, a cross-rib dis-
posed between the first and second link ends and
having a web, and a corrugated portion disposed
adjacent to the web, the first and second link ends
disposed such that a space capable of receiving a
link end is formed between each adjacent link
end, the space being open at one end and termi-
nating in rounded region at the opposite end, the
plurality of first link ends being offset from the
plurality of second link ends such that the first
link ends align with the space between the second
link ends such that adjacently positioned belt
modules are capable of intercalating so that the
first link ends of one belt module fit into the spac-
es defined therein, the slot disposed transverse to
the direction of belt travel and extending in the
direction of belt travel, the plurality of second link
ends having a transverse opening defined therein;
a pivot rod extending transverse to the direc-
tion of belt travel through the openings in the sec-
ond link end of one of the plurality of belt modules
4 REXNORD INDUSTRIES v. KAPPOS

and extending through the slotted openings in the
first link end of an adjacent belt module such that
the first and second link ends of the adjacent belt
modules are intercalated and the adjacent belt
modules are interlinked into adjacent hinged rows
capable of following a curved path;
wherein the web on the cross-rib extends in the
direction of belt travel such that, when the belt is
at maximum extension in the direction of belt
travel, a space bounded by the web, an outer
end of the first link ends and the sidewalls of
second link ends has a diameter less than 10
mm.
The belt modules are illustrated in the ’680 patent as
follows:

The link ends of the modules are intercalated and con-
nected by pivot rods to form a hinge. Patent Figure 7
shows the belt formed by the interlinked modules, with
the critical “space” limitation marked as “Example
Space,” also marked as space 200:
 REXNORD INDUSTRIES v. KAPPOS 5

The Habasit patent describes, and the claims state, that
the space between the link ends has a diameter of less
than 10 mm when the belt is at its maximum extension,
“to prevent fingers from penetrating the grid.” ’680
patent, col.1 l.60.
Rexnord cited four references for the reexamina-
tion: U.S. Patent No. 6,382,405 (Palmaer), U.S. Patent
No. 6,471,048 (Thompson), U.S. Patent 5,372,248 (Hor-
ton), and U.S. Patent No. 5,253,749 (Ensch). Each refer-
ence describes a conveyor belt comprising modules that
are assembled similarly to the modules in the ’680 patent.
The reference modules are pictured as follows:
6 REXNORD INDUSTRIES v. KAPPOS

______________________________________________________

______________________________________________________

______________________________________________________

Ensch Figure 6 (A781)
______________________________________________________
 REXNORD INDUSTRIES v. KAPPOS 7

Two of the reference patents, Palmaer and Thomp-
son, discuss the problem of objects such as fingers getting
caught in the space between the modules, and state that
the structure of their belt reduces the size of the space.
Neither Palmaer nor Thompson states the size, or maxi-
mum size, of the space when the conveyor belt is at its
maximum extension. Palmaer describes a solid deck 34,
which functions to reduce the space between the first and
second link ends by partially covering the gap between
the link ends. Palmaer states that the remaining gaps
between the solid deck are “substantially closed” by the
interdigitated link ends, “so that only relatively small
objects would be capable of falling through” when the belt
is at its maximum extension. Palmaer, col.1 l.64–col.2 l.2.
The remaining space is labeled gap 38 in Palmaer Figure
1:

Palmaer Figure 1
Thompson describes a conveyor belt of modules containing
a plate 51, which forms the boundaries of gap 37 along
with the first and second link ends, and prevents objects
from getting caught in gap 37. The Board found that
8 REXNORD INDUSTRIES v. KAPPOS

when the Thompson belt is at its maximum extension
plate 51 completely covers gap 37. A top view of the
Thompson belt is shown in Figure 11:

Thompson Figure 11
On Rexnord’s request for reexamination, the exam-
iner found that Horton shows all of the elements of inde-
pendent claims 1 and 8 of the ’680 patent except for “a
web adjacent the corrugated portion positioned such that
a space . . . has a diameter less than 10 mm.” J.A. 183.
The examiner cited Thompson for teaching a web between
modules to prevent pinching of objects between modules,
and cited Palmaer and Thompson for showing a space
sufficiently small to prevent pinching of small objects
such as a finger. The examiner concluded that it would
have been obvious for a person of ordinary skill in this
field to combine the Horton modules with the Thompson
web to create a space with a diameter less than 10 mm to
prevent pinching of small objects. The examiner summa-
rized in the Right of Appeal Notice:
 REXNORD INDUSTRIES v. KAPPOS 9

Thompson ’048 discloses the broad teaching of
providing a corrugated intermediate portion with
an adjacent web portion to prevent objects from
being pinched between adjacent modules where a
space bounded by the web, an outer end of the
first link end and the sidewalls of the second link
ends is completely closed. It would have been ob-
vious to one of ordinary skill in the art to [include
in] the modules of Horton ’248 . . . a web adjacent
the corrugated portion to prevent objects from be-
ing pinched between adjacent modules as taught
by Thompson ’048.
Right of Appeal Notice at 11 (Sept. 25, 2007).
Habasit appealed to the PTO Board. Habasit ar-
gued that the cited references were not properly com-
bined, because the Thompson and Horton conveyor belts
served different purposes, in the food industry and for
baggage handling. Rexnord responded that the references
all relate to conveyor belts, and argued that “[o]ne skilled
in the art looking to solve a problem of pinching objects
between belt modules of a plastic radius conveyor belt in
one application, such as the food industry, would look to
other applications of plastic radius conveyor belts, such as
in the baggage handling industry.” The Board did not
discuss this argument.
Habasit also argued to the Board that the 10 mm
maximum dimension of the space is not stated in any
reference, and that some reference belts have no space.
Rexnord responded that a 10 mm maximum space is
inherent in the structures described in the references, and
that “Thompson, Jr. et al. teaches solving this very prob-
lem by extending a web portion to at least partially cover
gaps between modules, which will prevent objects from
falling between modules and getting pinched. See col. 6,
10 REXNORD INDUSTRIES v. KAPPOS

lines 46–49 of Thompson, Jr. et al.” Rexnord Board Br.
75–76.
The Board stated that “the dispositive issue on ap-
peal is: did the examiner err in determining that both
Palmaer and Thompson, Jr. disclose a space having a
diameter of less than 10 mm as recited by the claims?”
Board Op. 6. The Board observed that the references do
not state the dimensions of the space between modules,
and “the Examiner has not identified where the prior art
discloses that this space has a diameter of less than 10
mm as required by the claims.” Id. at 11. The Board
stated that “[t]o the extent the Examiner’s rejection relies
on an interpretation of ‘space’ as allowing for situations
where the space itself is completely closed or is part of a
contiguous surface or body . . . so as to have a diameter of
0 mm, this interpretation essentially reads the limitation
space, a positively recited feature, out of the claims.”
Board Op. 12. The Board, reversing the examiner, held
that the ’680 claims are not anticipated by any cited
reference, and are unobvious over the cited references.
Rexnord requested rehearing, arguing that the
Board overlooked the examiner’s analysis in the rejection
of the claims over Horton in view of Thompson, and that
the Board misapprehended the fact that space of less than
10 mm between the modules is inherently present in both
Palmaer and Thompson. The Board responded that it had
not overlooked the examiner’s analysis, and that Rexnord
had waived its inherency arguments for anticipation. The
Board stated that “Rexnord’s reliance on ‘design choices’ .
. . is more consistent with an obviousness analysis,” Dec.
on Rehearing, at 4, but did not discuss Rexnord’s argu-
ments for obviousness. The Board stated that “Rexnord’s
reasons as to why it would have been obvious to construct
a space as recited in the claims (Request, 3–5) were not
 REXNORD INDUSTRIES v. KAPPOS 11

the rationale of the Examiner’s rejection.” Dec. on Re-
hearing at 3.
Rexnord appeals the Board’s reasoning and conclu-
sions, and criticizes the Board’s refusal to review all of the
arguments that Rexnord had presented as grounds for
unpatentability.
DISCUSSION
Rexnord argues that each of the Palmaer and
Thompson references anticipates or renders obvious the
’680 claims, because the “less than 10 mm” space is pre-
sent in the prior art conveyor belts, although the space is
not measured in millimeters. Rexnord does not dispute
that neither Palmaer nor Thompson states the size of its
space between modules, but argues that “a prior art
reference may anticipate without disclosing a feature of
the claimed invention if that missing characteristic is
necessarily present, or inherent, in the single anticipating
reference,” Schering Corp. v. Geneva Pharm., 339 F.3d
1373, 1377 (Fed. Cir. 2003).
The PTO responds that the Board correctly found
that neither Palmaer nor Thompson states the size of the
space between modules, and that the inherency argument
fails because a space of less than 10 mm is not necessarily
present in any reference belt. This court explained in In
re Omeprazole Patent Litigation, 483 F.3d 1364 (Fed. Cir.
2007) that “anticipation by inherent disclosure is appro-
priate only when the reference discloses prior art that
must necessarily include the unstated limitation, [or the
reference] cannot inherently anticipate the claims.” Id. at
1378. We agree with the Board that the precise less-than-
10 mm size limitation is not inherent in Palmaer or
Thompson, for neither reference shows this limitation and
that it would necessarily be recognized. However, the
references all state that the space between modules
12 REXNORD INDUSTRIES v. KAPPOS

should be limited against small objects and to prevent
pinching of fingers. Thus we conclude that the Board
erred in holding that it would not have been obvious to
limit the space to the 10 mm maximum, and in reversing
the examiner’s ruling of obviousness on this ground,
without considering any of the other grounds of obvious-
ness that had been raised for reexamination.
The Board stated that the only issue for Board re-
view related to the 10 mm space, since that was the basis
of the examiner’s decision. The PTO states on this appeal
that the Board need not consider other grounds that had
been presented during the reexamination, for they had
not been raised on the appeal to the Board.
In its request for reexamination, Rexnord discussed
the references to Palmaer, Thompson, Horton, and Ensch,
as mentioned ante, and argued, inter alia, that “the only
difference between the teaching of the Thompson, Jr. ’048
Patent and the ’680 Patent is that the ’680 Patent teaches
a design choice which allows pinching a small child’s
finger having a diameter of less than 10 mm in the gap
between adjacent links.” J.A. 673. On this appeal, the
PTO states that the Board does not consider aspects
beyond those relied on by the examiner. The PTO states
that Rexnord’s argument that it would have been “a mere
design choice,” in view of Horton and Thompson, to create
a 10 mm space was not raised until Rexnord’s motion for
Board rehearing. PTO Br. 15–16. The PTO brief states
that “[t]he Board correctly declined Rexnord’s invitation
to reject representative claim 1 as obvious over the com-
bined teachings of Horton and Thompson under this new
theory – presented by Rexnord for the first time in its
request for rehearing.” Id. at 29–30.
However, the “new theory” was not new. These ref-
erences had previously been presented to the examiner.
 REXNORD INDUSTRIES v. KAPPOS 13

See Request for Inter Partes Reexamination at 7 (“the
’680 patent teaches a design choice which allows pinching
a small child’s finger having a diameter of less than 10
mm in the gap between adjacent links”; “the limitation of
10 mm is merely a design choice”; “A design choice was
made by the Patentee in the ’680 patent”; “The Patentee
clearly indicated that 10 mm is merely a design choice.”)
The issue was fully raised before the examiner, and these
references were not again a patentability issue until after
the Board reversed the examiner.
When Habasit appealed the examiner’s decision,
Rexnord was not barred from presenting this argument in
defense of the examiner. The PTO states in its brief on
this appeal:
Just as this Court does not entertain arguments
made outside of appellant’s opening brief, see, e.g.,
In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004);
In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir.
1997), the Board has a rule that similarly bars the
presentation of new arguments outside appellant’s
opening brief (absent circumstances not alleged
here), see 37 C.F.R. § 41.79(b).
PTO Br. 24. We observe that Rexnord was not the appel-
lant before the Board, and that the premise is an incorrect
statement of the appellate process. On judicial review,
the correctness of the decision appealed from can be
defended by the appellee on any ground that is supported
by the record, whether or not the appellant raised the
argument. See Jaffke v. Dunham, 352 U.S. 280, 281
(1957) (“A successful party in the District Court may
sustain its judgment on any ground that finds support in
the record.”); Glaxo Group Ltd. v. TorPharm, Inc., 153
F.3d 1366, 1371 (Fed. Cir. 1998) (“an appellate court may
affirm a judgment of a district court on any ground the
14 REXNORD INDUSTRIES v. KAPPOS

law and the record will support so long as that ground
would not expand the relief granted”); Datascope Corp. v.
SMEC, Inc., 879 F.2d 820, 822 n.1 (Fed. Cir. 1989) (“Ap-
pellees always have the right to assert alternative
grounds for affirming the judgment that are supported by
the record.”); Bio-Rad Labs., Inc. v. Nicolet Instrument
Corp., 807 F.2d 964, 969 (Fed. Cir. 1986) (“a court of
appeals may affirm the judgment of a district court on
any ground, including grounds not relied upon by the
district court”).
Rexnord asked the Board on rehearing to consider
the other grounds before the examiner, in support of the
examiner’s decision. Rexnord again pointed out that the
conveyor belts of the prior art show every element of the
claims except the specific measure in millimeters of the
maximum space between modules. The examiner stated
that “Palmaer . . . teaches openings extending from the
top surface to a bottom surface as can be seen in Figures
2, 5, and 6.” J.A. 194. The examiner observed that the
Thompson reference is directed to the same problem as in
the ’680 patent, namely, preventing fingers from being
caught in the conveyor belt, citing Thompson, col.1 ll.26–
35, col.14 ll.13–17. The examiner found that the “less
than 10 mm” recitation in the claims is met because
Palmaer and Thompson both show spaces that are com-
pletely closed and thus are less than 10 mm in diameter.
J.A. 187–88. No error has been shown in these findings.
All of the structural elements of the claims are
shown in the references. A space that is small enough to
avoid pinching of fingers is taught in the prior art, with
the 10 mm dimension a design choice that takes account
of the size of fingers and other small objects. The Board
erred in declining to consider the references presented for
reexamination, and in declining to consider Rexnord’s
arguments in support of the examiner’s decision. The
 REXNORD INDUSTRIES v. KAPPOS 15

Board’s decision is reversed as to obviousness, and the
examiner’s reexamination decision is reinstated. The
Board’s decision as to anticipation is affirmed.

AFFIRMED-IN-PART, REVERSED-IN-PART