In re Schreiber - 128 F.3d 1473 (Fed. Cir. 1997)

Rule:

To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently. Anticipation is an issue of fact, and the question whether a claim limitation is inherent in a prior art reference is a factual issue on which evidence may be introduced.

Facts:

Stephen B. Schreiber filed patent claims for a device that was conical shaped with a large opening that fit on a container and a smaller opening at the opposite end that allowed the popped popcorn to pass though a few kernels at a time when the device was attached to a popcorn container. The United States Patent and Trademark Office's Board of Patent Appeals and Interferences (the “Board”) found that a prior patent, Swiss Patent No. 172,689 to Harz, that disclosed a spout for nozzle-ready canisters anticipated some of the patent claims. The Board also found that some of the patent claims were obvious to one of ordinary skill in the art. Schreiber appealed.

Issue:

Did the prior patent anticipate claim?

Answer:

Yes

Conclusion:

The court ruled that the patent claims were inherent and anticipated by the prior patent. The court held that the recitation of a new intended use for the old product did not make claims to that old product patentable. The court also held that the Board did not err in its determination that the patent claims were obvious.