In Re Schreiber

Court of Appeals for the Federal Circuit
128 F.3d 1473 (1997)

ELI5:

Rule of Law:

The recitation of a new intended use for a structurally-identical prior art device does not make a claim to that device patentable. If a claimed functional limitation is an inherent characteristic of a prior art structure, the claim is anticipated under 35 U.S.C. § 102.

Facts:

Stephen B. Schreiber designed a device described as a 'dispensing top' for popped popcorn.
The device has a generally conical shape with an opening at each end and attaches to an open-ended container filled with popped popcorn.
The device's taper is designed to 'jam up the popped popcorn' so that only a few kernels are dispensed at a time when the container is shaken.
A prior Swiss patent to Harz disclosed a structurally similar conically shaped 'spout for nozzle-ready canisters'.
The Harz patent described its invention's use as a spout for dispensing liquids, such as oil from an oil can.
Schreiber submitted a declaration stating that a top constructed according to the Harz patent's proportions was incapable of jamming and dispensing popcorn as his invention did.
Another prior art patent to Fisher disclosed a means to close off the opening at the reduced end of a conically shaped top.

Procedural Posture:

Stephen B. Schreiber filed a patent application with the U.S. Patent and Trademark Office (USPTO).
The patent examiner rejected claims 1, 2, 14, and 15 of the application.
Claim 1 was rejected as anticipated by the Harz patent under 35 U.S.C. § 102(b).
Claim 2 was rejected as obvious over the combination of the Harz and Fisher patents under 35 U.S.C. § 103.
Schreiber appealed the examiner's decision to the USPTO's Board of Patent Appeals and Interferences (the Board).
The Board remanded the case for the examiner to consider a declaration filed by Schreiber.
On remand, the examiner maintained the rejections, finding Schreiber's declaration unpersuasive.
Schreiber appealed to the Board a second time.
The Board affirmed the examiner's final rejections.
Schreiber, as appellant, appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit.

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Issue:

Does a prior art patent that discloses the same physical structure as a patent claim anticipate that claim under 35 U.S.C. § 102(b), even if the prior art does not explicitly disclose the new intended use or functional limitations recited in the claim?

Opinions:

Majority - Circuit Judge Bryson

Yes. A prior art reference that discloses the same structure anticipates a claim, as the discovery of a new use for a known product cannot impart patentability to that product. The court reasoned that Harz's patent discloses all the structural limitations of Schreiber's claim, including the conical shape, two openings, and means to attach to a container. The court held that Schreiber's attempt to distinguish his invention based on its intended use (dispensing popcorn) and its function (jamming up to dispense a few kernels) fails because these are not patentably significant if the underlying structure is old. The functional limitations were deemed inherent in the Harz device; the examiner and Board reasonably concluded the Harz structure is capable of performing the claimed functions. Once the patent office established a prima facie case of inherency, the burden shifted to Schreiber to prove the prior art structure could not perform the function, which he failed to do with his declaration. The court also held that whether Harz is 'analogous art' is irrelevant for an anticipation analysis. Finally, claim 2, which added a closing means, was held to be obvious over the combination of Harz and the Fisher patent, which explicitly taught a closing means for a similar spout.

Dissenting - Circuit Judge Pauline Newman

No. A prior art reference does not anticipate a claim when the claim contains explicit functional and use limitations that are not disclosed in the reference. The dissent argued that the majority improperly ignored express claim limitations, such as the device being for 'an open-ended container filled with popped popcorn' and being tapered 'to by itself jam up the popped popcorn.' To be anticipated, the identical invention must exist in a single prior art reference, and an oil can spout is not identical to a popcorn dispenser with a specific jamming function. Applying the principle that 'what infringes if later anticipates if earlier,' the dissent contended that the Harz oil can would never be found to infringe Schreiber's patent claims. The Board's action of mentally rescaling the Harz device and filling it with popcorn was an impermissible use of hindsight. The claimed device is new and distinguished by its explicit limitations, not merely a new use for a known device.

Analysis:

This decision reinforces the strictness of the anticipation doctrine in patent law, confirming that structural identity between a claimed invention and a prior art reference is paramount. It solidifies the principle that adding functional language or a new intended use to a claim cannot, by itself, overcome an anticipation rejection if the prior art device is inherently capable of performing that function. The case places a significant evidentiary burden on patent applicants to affirmatively prove that a prior art structure is incapable of performing a claimed function. This ruling makes it more difficult to obtain a patent on a device that is structurally similar to something in the prior art, even if the new device is intended for a completely different and non-obvious purpose.

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