# United States **Court of Appeals**  **for the Federal Circuit**

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REXNORD INDUSTRIES, LLC, Appellant,

v.

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

AND

HABASIT BELTING, INC., Appellee

.

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2011

- 1434

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

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Decided: January 23, 2013

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D AVID R. C ROSS , Q uarles & Brady, LLP, of Milwa ukee, Wisconsin, argued for appellant. With him on the
brief was J OHANNA W ILBERT

.REXNORD INDUSTRIES v. KAPPOS 2

M ARY L. K ELLY , Associate Solicitor, United States P atent and Trademark Office, of Alexandria, Virginia. With
her on the brief were R AYMOND T. C HEN , Solicitor, and

W ILLIAM L AMARCA , Associate Solicitor.

M ATTHEW T. B AILEY , McKeena Long & Aldridge, LLP, of Washington, DC, argued for appellee. With him on the
brief was R ANDALL C. P YLES

.

______________________

Before N EWMAN , L OURIE

, and P ROST

, Circuit Judges

.

N EWMAN

, Circuit Judge

. Rexnord Industries requested inter partes reexam ination 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 ce rtain prior art.

B ACKGROUND

In 2003 Habasit filed an infringement suit against
Rexnord in the United States District Court for the Di strict of Delaware, Civil Action No. 03

- 185

- JJF. Rexnord then filed a request for reexamination of t he ’680 patent, and the district court stayed the infringement suit pen ding completion of reexamination. On reexamination, t he

examiner held all of the claims in the ’680 pa tent u npatentable for anticipation and obvious ness. 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

1 0 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 pl u rality of first link ends disposed in the direction of belt travel and having a plura lity of second link ends disposed in the opposite direction, a cross

- rib di sposed 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 capa ble of receiving a link end is formed between each adjacent link end, the space being open at one end and term inating in rounded region at the opp o site 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 cap a ble of intercalating so that the first link ends of one belt module fit into the spa ces defined therein, the slot disposed transverse to the direction of belt travel and extending in the direction of belt travel, the plurality of se c ond link ends having a transverse opening defined therein;

a pivot rod extending transverse to the dire ction of belt travel through the openings in the se cond l ink end of one of the plurality of belt modulesREXNORD INDUSTRIES v. KAPPOS 4

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 co nnected by pivot rods to f orm 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 e nds 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 reexamin ation: U.S. Patent No. 6,382,405 (Palmaer), U.S. Patent No. 6,471,048 (Thompson), U.S. Patent 5,372,248 (Ho rton), and U.S. Patent No. 5,253,749 (Ensch). Each refe rence describes a conveyor belt comprising modules that are assembled similarly to the modules in the ’680 patent. The reference modules are pictur ed as follows:REXNORD INDUSTRIES v. KAPPOS 6

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Ensch Figure 6 (A781)

______________________________________________________REXNORD INDUSTRIES v. KAPPOS 7

Two of the reference patents, Palmaer and Thom pson, 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 max imum 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

th e 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. P almaer, 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 thatREXNORD INDUSTRIES v. KAPPOS 8

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 requ est for reexamination, the e xa miner found that Horton shows all of the elements of ind ependent claims 1 and 8 of the ’680 patent except for “a web adjacent the corrugated portion positioned such that a space . . . ha s a diameter less than 10 mm.” J.A. 183

. The e xaminer 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 e xaminer 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 wi th a diameter less than 10 mm to prevent pinching of small objects. The examiner summ arized in the Right of Appeal Notice:REXNORD INDUSTRIES v. KAPPOS 9

Thompson ’048 discloses the broad teaching of providing a corrugated intermediate po r tion with
an ad j acent web portion to prevent objects from being p i nched 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 o bvious 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 fro m b eing p i nched between adjacent mo d ules as taught by Thompson ’048

. Right of Appeal Notice at 11 (Sept. 25, 2007).

Habasit appealed to the PTO Board. Habasit a rgued that the cited references were not properly co mbined, 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 a rgued 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 i s inherent in the structures described in the references, and

that “Thompson, Jr. et al. teaches solving this very pro blem 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,REXNORD INDUSTRIES v. KAPPOS 10

lines 46

– 49 of Thompson, Jr. et a l.” Rexnord Board Br.

75

– 76.

The Board stated that “the dispositive issue on a ppeal 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 m m, this interpretation es sentially 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 H orton 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
ha d 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 arg uments for obviousness

. The Board stated that “Rexnord’s reasons as to why it would have been obvious to construct a space as reci ted in the claims (Request, 3

– 5) were notREXNORD INDUSTRIES v. KAPPOS 11

the rationale of the Examiner’s rejection.” Dec. on R ehearing at 3.

Rexnord appeals the Board’s reasoning and concl usions, and criticizes the Board’s refusal to review all of the arguments that Rexnord had presented as grounds for unpatentability.

D ISCUSSION

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 pr esent 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 stat es 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 appr opriate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inh erently anticipate the claims.” Id. at 1378. We agree with the Board t hat the precise less

- than

10 mm size limitation is not inherent in P almaer or Thompson, for neither reference shows this limitation and that it would necessarily be recognized. However, the references all state that the space between modulesREXNORD INDUSTRIES v. KAPPOS 12

should be l imited 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 gr ound, without considering any of the other grounds of obviou sness that had been raised for reexamination.

The Board stated that the only issue for Board r eview 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, Thompso n, 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 finge r having a diameter of less than 10 mm in the gap between adjacent links.” J.A. 673. On this appeal, t he 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 hav e 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 repr esentative claim 1 as obvious over the co mbined 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 re ferences had pr eviously 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 l imitation 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:

Jus t as this Court does not entertain arg u ments 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

presen ta tion of new arguments outside appellant ’ s opening brief (absent circumstances not a l leged here), see 37 C.F.R. § 41.79(b).

PTO Br. 24. We observe that Rexnord was not the appe llant 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) (“a n appellate court may affirm a judgment of a district court on any ground theREXNORD INDUSTRIES v. KAPPOS 14

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) (“A ppellees 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 upo n 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 e xcept the specific measure in millimeters of the maximum space between modules. The examiner stated that “Palmaer . . . teaches openings extending fr o m 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” re citation in the claims is met because Palmaer and Thompson both show spaces that are co mpletely 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

show n 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. TheREXNORD 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