PATENT ATTORNEY OVERVIEW:
This case discusses when it is timely to raise an issue on the board of patent appeals during re-examination. Responsive to a patent infringement suit against Rexnord filed by Habasit, Rexnord requested reexamination of Habasit’s 6,523,680 patent. The technology in the ‘680 patent was directed towards a mechanical conveyor belt with rows of belt modules that are interlinked. The claims have the ‘680 patent recited the following critical feature “a space bounded by the web, an outer end of the first link ends and the sidewalls of the second link ends has a diameter less than 10mm.” This feature is depicted in the following figure.
During reexamination, Rexnord cited four references against the ‘680 patent, the references being Palmaer 6,382,405, Thomspon 6,471,048, Horton 5,372,248, and Ensch 5,253,749. Each of the references is directed towards a conveyor belt module that is similar to the ‘680 patent. On reexamination, the examiner found that all the elements of the ‘680 patent were met except for the 10mm limitation. However, the examiner concluded that the 10mm limitation would be obvious to one skilled in the art.
Responsive to the Examiner’s rejection, Habasit appealed stating that the conveyor belts in the above 4 references were used in different industry (food vs. baggage handling) and the 10mm maximum dimension of the space is not stated in any reference, and that some reference belts have no space. Based on the 4 references not stating any dimensions, the board agreed with Habasits reason and reversed the examiners rejections, holding that the ‘680 claims were not anticipated by any cited reference, and are unobvious over the cited references. This case deals with Rexnord’s appeal of the board’s decision to reverse the examiner’s rejection.
On appeal, Rexnord argued that each of the 4 reference anticipate and or renders obvious each of the limitations of the ‘680 claims reasoning that the 10mm decision would be a design choice and “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.” Scherng Corp. v. Geneva Pharm.
The board incorrectly stated that the only issue on appeal dealt with the 10mm space, since that was the basis of the examiner’s decision and Rexnord could not bring forth a design choice argument. 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.
The court of appeals held that 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. The court of appeals held that because the request for inter partes reexamination included arguments that a design choice was made by the patentee in the ‘680 patent, where the patentee clearly indicated that 10mm is merely a design choice, that the issue was on the record and fully raised before the examiner. Because all of the structural elements of the claims were shown in the reference, and the space 10mm or smaller was merely a design choice (where the prior art showed in some embodiments no space) that the limitations were met, and the board erred in declining to consider the references presented for reexamination.
PATENT ATTORNEY TAKE-A-WAYS:
1) If you are a patent attorney that deals with many appeals, make sure you put forth each argument that may be put on the record in your appeal brief. Many times the appeal brief will be the last chance an applicant will have to put on the record additional arguments.
2) It appears from this case, as long as an argument was made during prosecution that it “was on the record.” If claims have not been amended and the same rejection was presented to the examiner, it appears that this could be reason enough to have standing to bring an argument. However, if the claims were even slightly amended or a different combination of references was used, I believe this standing would be lost.
3) Design choice arguments are hard to win. In this case, the limitation stated 10mm or less. Because the prior art references depicted links of a conveyor belt that were flush and had no spacing this was enough to meet the 10mm or less distinction. Better limitations may have been to say how much space there always was, if this was the case, or limitations directed towards how the links interoperate and what/when the spacing between the links is.