Docket No. 2011-1434
NEWMAN, LOURIE, PROST
January 23, 2013
Brief summary: BPAI decision of non-obviousness reversed due to “design choice” (e.g., size of space between belt modules) relating to known problem (e.g., fingers getting caught in space).
Summary: Rexnord requested inter partes reexamination of U.S. Pat. No. 6,523,680 (owned by Habasit Bleting, Inc.) relating to a mechanical conveyor belt. The BPAI confirmed claims 1-14 of the ‘680 patent. The FC panel affirmed that the claims were not anticipated but reversed the determination that the claims were not obvious. The claimed conveyor belt includes interlinked modules in which spaces between the modules are blocked by plastic projections (“webs”) so the spaces are “less than 10 mm” (e.g., too small to pinch small items such as a finger). Four US patents were asserted, each relating to conveyor belts comprising modules similar to those of the ‘680 patent. Two of the 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. During reexamination, the Examiner found Habasit’s claims obvious. Habasit appealed the decision, arguing that the references related to different industries (food, baggage handling). The BPAI reversed the obviousness determination because the references did not show a space of less than 10 mm (e.g., “the space itself is completely closed or is part of a contiguous surface or body”). In this appeal, Rexnord argued that the references inherently teach the claimed space (Schering, FC 2003) and anticipate or render the claims obvious. The FC panel disagreed regarding anticipation but reversed on obviousness because the problem was addressed by 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.”) Rexnord also argued that the Board improperly refused to hear its arguments in support of the examiner’s decision and the FC panel agreed (e.g., “Appellees always have the right to assert alternative grounds for affirming the judgment that are supported by the record.” (Datascope, FC 1989)).