No. 2011-1434 (Fed. Cir. Jan. 23, 2013).

The Federal Circuit reinstated an examiner’s reexamination decision holding that claims for a mechanical conveyor belt were obvious because “all of the structural elements of the claims are shown in the references,” even though the cited references did not specifically disclose a precise size limitation in the patent.

The patent owner of a mechanical conveyor belt sued a competitor for infringement, and the infringement suit was stayed pending inter partes reexamination of the patent. On reexamination, the examiner held all of the claims unpatentable for anticipation and obviousness. The patentee appealed, and the Patent and Trademark Office Board of Patent Appeals reversed the examiner’s decision, finding that cited references did not disclose a precise size limitation and that the examiner’s rejection “essentially reads the limitation space, a positively received feature, out of the claims.” The manufacturer appealed to the Federal Circuit, which reversed the Board and reinstated the examiner’s reexamination decision.

The patent described a conveyer belt with space between link ends with a diameter of less than 10 mm, to prevent fingers from penetrating a grid. For the reexamination, the manufacturer provided four references describing similar conveyor belts and 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 references] to create a space with a diameter less than 10 mm to prevent the pinching of small objects.”

On appeal to the Patent and Trademark Office Board, the patentee argued that the 10 mm dimension was not specifically stated in any reference. The Board reversed the examiner on that basis and held that the claims were not anticipated by any cited reference and were unobvious over the cited references.

On appeal, the Federal Circuit agreed with the Board that the 10 mm limitation was “not inherent” in the cited references because none of the references showed this limitation. However, the Board erred in holding that it would not have been obvious to limit the space to 10 mm maximum because “[a]ll of the structural elements of the claims are shown the references,” which stated that the space should be limited against small objects and to prevent pinching of fingers. Also, “[t]he Board erred in declining to consider the references presented for reexamination, and in declining to consider [the manufacturer’s] arguments in support of the examiner’s decision.”

A copy of the opinion can be found here.