Rexnord Industries, LLC v. Kappos, 705 F.3d 1347

Rexnord challenged the PTO Board’s decision affirming claims 1–14 of the ’680 patent in inter partes reexamination.
The Board reversed the examiner, finding the claims not anticipated and not obvious over cited references Palmaer, Thompson, Horton, and Ensch.
The ’680 patent covers a radius conveyor belt with interlinked belt modules and a space between link ends limited to less than 10 mm to prevent pinching.
Rexnord argued that Palmaer and Thompson inherently disclose a space smaller than 10 mm when the belt is at maximum extension, and that it would have been obvious to limit the space to 10 mm based on those references.
The Board largely rejected Rexnord’s inherency theory and focused on whether a 10 mm space was disclosed or inherently disclosed, ultimately reversing the examiner on obviousness but affirming anticipation.
On rehearing, Rexnord pressed additional grounds for unpatentability; the Board declined to reconsider, leading to Rexnord’s appeal to the Federal Circuit.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the Board erred in ruling the claims are not obvious over Horton and Thompson	Rexnord contends a 10 mm space is inherent or inherently disclosed in the prior art.	Board held no explicit disclosure of a 10 mm space; inherency not proven and other grounds favored non-obviousness.	Obviousness reversed; Board erred by not considering all grounds
Whether inherency can anticipate the claims when a reference does not expressly disclose the limitation	Inherent disclosure can anticipate where the missing feature is necessarily present.	Inherency cannot render anticipation absent explicit disclosure of the 10 mm size.	Inherent anticipation not proven for the 10 mm size; however, other grounds supported obviousness
Whether the Board properly limited its review to the 10 mm space or should have considered other grounds for unpatentability raised during reexamination	Board should review all asserted grounds, not just the 10 mm space.	Board correctly declined new arguments not raised on appeal; Rexnord’s rehearing arguments were precluded.	Board erred in not considering other obviousness grounds; reversal as to obviousness justified

Schering Corp. v. Geneva Pharm., 339 F.3d 1373 (Fed. Cir. 2003) (anticipation by inherency limits precision of the claim)
In re Omeprazole Patent Litig., 483 F.3d 1364 (Fed. Cir. 2007) (anticipation by inherency appropriate only if necessary disclosure exists)
In re Watts, 354 F.3d 1362 (Fed. Cir. 2004) (appellate briefing rules; considerations of argument timeliness)
Jaffke v. Dunham, 352 U.S. 280 (U.S. 1957) (appellate review supports grounds found in the record)
Glaxo Group Ltd. v. TorPharm, Inc., 153 F.3d 1366 (Fed. Cir. 1998) (appellate review of patent decisions on multiple grounds)
Datascope Corp. v. SMEC, Inc., 879 F.2d 820 (Fed. Cir. 1989) (appellate authority to affirm on alternative grounds supported by record)
Bio-Rad Labs., Inc. v. Nicolet Instrument Corp., 807 F.2d 964 (Fed. Cir. 1986) (reaffirms broad authority to sustain judgment on record grounds)