Rexnord Industries, LLC v. Kappos

Prior art may anticipate a missing feature that must be necessarily present, or inherent, without explicitly disclosing that feature.

Opinion (Newman): Habasit owned the rights to its #680 patent, and alleged that Rexnord had infringed it. After a reexamination held all of the #680 patent claims were unpatentable for anticipation and obviousness, Habasit appealed, and the PTO board reversed. Rexnord appealed to the Court of Appeals. Habasit believed the size of a “pinch point” opening between links of a conveyor belt could be patentable, because they were not obvious or anticipated by any prior teachings of Palmaer, Thompson, Horton, or Ensh. The #680 patent claimed exclusive control over openings of less than 10mm. Rexnord argued that this space was inherently necessary, because the prior art taught that an open space should be limited to prevent pinching of fingers. Thus, Rexnord argued that the less than 10mm dimension was a design choice, an argument he had also raised during reexamination. The PTO stated that the design choice argument was not raised until the Board hearing. The Court held the Board incorrectly decided not to consider Rexnord’s design choice argument, and also held that a space small enough to avoid pinching fingers was taught by prior art, leaving the 10mm dimension a design choice. The Board’s decision was REVERSED as to obviousness, and the examiner’s reexamination decision that #680 was not patentable was reinstated. The Board’s decision as to anticipation was AFFIRMED.