"[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims."
On January 23, 2013, in Rexnord Indus., LLC v. Kappos, the U.S. Court of Appeals for the Federal Circuit (Newman,* Lourie, Prost) affirmed-in-part and reversed-in-part the USPTO Board of Patent Appeals and Interferences decision in the inter partes reexamination that the claims of U.S. Patent No. 6,523,680, which related to a mechanical conveyor belt that is formed of rows of belt modules interlinked by transverse rods, were neither anticipated nor obvious in view of certain prior art. The Federal Circuit stated:
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 present 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."
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. "[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims." 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 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 obviousness that had been raised for reexamination. . . .
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 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.