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 Milwaukee, Wisconsin, argued for appellant. With him on the 

brief was JOHANNA WILBERT. 
2 REXNORD INDUSTRIES v. KAPPOS

MARY L. KELLY, Associate Solicitor, United States Patent 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 reexamination 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 certain prior art.

BACKGROUND

In 2003 Habasit filed an infringement suit against 

Rexnord in the United States District Court for the District 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 pending completion of reexamination. On reexamination, the

examiner held all of the claims in the ’680 patent unpatentable 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 disposed 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 terminating 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 spaces 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 direction of belt travel through the openings in the second 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 connected 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 reexamination: U.S. Patent No. 6,382,405 (Palmaer), U.S. Patent

No. 6,471,048 (Thompson), U.S. Patent 5,372,248 (Horton), and U.S. Patent No. 5,253,749 (Ensch). Each reference 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 Thompson, 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 maximum 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 examiner found that Horton shows all of the elements of independent 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 summarized 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 obvious 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 being 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 argued that the cited references were not properly combined, 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 problem 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 appeal 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 arguments 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 Rehearing at 3. 

Rexnord appeals the Board’s reasoning and conclusions, 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 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,” 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 appropriate 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-than10 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 obviousness that had been raised for reexamination.

The Board stated that the only issue for Board review 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 combined 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 references 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 appellant 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) (“Appellees 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 completely 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