Rexnord Indus. v. Kappos, 2011-1434 (Fed. Cir. January 23, 2013)

A claimed feature not disclosed in a prior art reference may nonetheless be either inherent in the reference or an obvious modification according to design choice. In Rexnord Indus. v. Kappos, the Federal Circuit held that a finding of inherency requires recognition that the undisclosed feature be necessarily present in the reference. The Federal Circuit also found a claimed range to be obvious by design choice in view of a reference that, although silent on such range, was directed to solving the same problem that the range purports to solve.

Rexnord involved an inter partes reexamination of a patent relating to a radius conveyor belt having a plurality of belt modules. The claims included a limitation of a space bounded by a web and link ends of the belt modules having a diameter less than 10 mm. The patent explained that a space of less than 10 mm can effectively prevent fingers from penetrating the grid of the belt modules. The examiner relied on two references cited in Rexnord’s request for re-examination, Palmaer and Thompson, as being relevant to the claimed space limitation. Palmaer disclosed a conveyor belt with gaps that are “substantially closed” by link ends “so that only relatively small objects would be capable of falling through” when the belt is at its maximum extension. Thompson disclosed a conveyor belt where a gap is completely covered. The examiner found that both references showed a space sufficiently small to prevent pinching of small objects or a finger, and relied on Thompson as a secondary reference to reject the claims as being obvious.

The patentee appealed to the U.S. Patent and Trademark Office’s (USPTO) Board of Patent Appeals and Interferences (BPAI), which reversed the examiner’s rejection. The BPAI found that the examiner improperly interpreted “space” as allowing for situations where the space itself is completely closed, and held that that such interpretation improperly read the space limitation out of the claims. The BPAI also dismissed Rexnord’s arguments that the space limitation was inherently present in Palmaer and Thompson, finding that Rexnord had waived such arguments. The BPAI held that the claims were not anticipated by or obvious over any of the cited references. Rexnord appealed the BPAI’s decision to the Federal Circuit.

On appeal to the Federal Circuit, Judge Newman delivered the opinion, initially agreeing with the BPAI that the space limitation is not inherently present in Palmaer and Thompson. The court held that neither reference precisely showed the less-than-10 mm size limitation, and that such a limitation would not be necessarily present in either reference.

However, the court also held that the BPAI erred in reversing the examiner’s obviousness rejection without considering any other grounds for obviousness, including Rexnord’s argument that the 10 mm limit was “merely a design choice.” The court shared the examiner’s view that both Thompson and the subject patent were directed to the same problem of preventing fingers from being caught in a conveyor belt. The court reversed in part the BPAI decision, holding that all the structural elements of the claims were shown in the references. The court found that, as a space small enough to avoid pinching of fingers was taught in the prior art, the 10 mm dimension was “a design choice that takes account of the size of fingers and other small objects.”

The court also found that the BPAI erred in limiting Rexnord’s arguments considered on appeal to those advanced in its opening brief. The court noted that on judicial review, the correctness of the examiner’s decision can be defended by the reexamination petitioner, as appellee, on any ground that is supported by the record, whether or not the appellant raised the argument. As such, the BPAI should have considered Rexnord’s arguments regarding design choice, even though such arguments were not raised before the BPAI until Rexnord’s request for rehearing.

The court ultimately affirmed the BPAI’s finding as to no anticipation, but reversed the BPAI’s finding as to non-obviousness, reinstating the examiner’s reexamination decision.