*1 Illinois, brought Baltins should have suit
pursuant parties’ contract. As ex above, however, plained the district court did subject jurisdiction
not have matter over this case at all. We affirm therefore the dismiss case,18although
al of the for reasons differ
ent than those stated the district court. Chenery Corp.,
See Sec. & Exch. Comm’n v.
318 U.S. 63 S.Ct. 87 L.Ed. (1943) (stating that the decision of the
lower court must be if affirmed the result is though
correct even the lower court relied
upon wrong ground gave wrong rea son), cited in C.H. Robinson Co. v. Trust Co.
Bank, N.A., (11th 1311, Cir. 1992); Dep’t Kleiman v. Energy, 956 cf. (D.C.Cir.1992) (affirming dis
trict court’s dismissal of case where action
failed to state a claim on which relief could granted, 12(b)(6), see Fed.R.Civ.P. but
where the district court had dismissed action
improperly subject juris lack of matter diction).
AFFIRMED.
In Re SCHREIBER
No. 97-1201. Appeals,
United States Court of
Federal Circuit.
Oct. 1997. Denied;
Rehearing Suggestion for
Rehearing En Banc Declined
Dec.
1997.
based,
alternative,
18.
(1988) ("When
The Baltins' suit was
619 n.
Joseph B. appellant. gued for Solicitor, Piccolo, Of- Joseph Associate G. Solicitor, and Trademark Patent fice of the Commerce, Office, Arlington, Department of him VA, appellee. on brief argued for With Solicitor, Linck, Albín F. Nancy were J. Solicitor, Drost, A. Bu- Deputy and Karen chanan, Solicitor. Associate PLAGER, NEWMAN, Before BRYSON, Judges. Circuit the court filed Circuit Opinion for Dissenting opinion filed Judge BRYSON. NEWMAN. Judge PAULINE Circuit BRYSON, Judge. Circuit appeals the decision Stephen B. Schreiber Patent and Trademark States United Appeals Inter- of Patent Office’s Board rejection sustaining final of four ferences patent application. We Schreiber’s affirm.
I patent application claims a de- dispensing popped popcorn. The vice for conically shaped large open- awith device is a smaller ing that fits on a container and opposite end that allows opening at pass through when the attached to a container and device is upside down. An embodiment dis- turned patent application closed depicted below. *3 claims, Schreiber filed a number of and the reduced end to close-off the many examiner allowed the claims. opening claims, thereat.” The other two 1, 2, 14, finally rejected, Claims and 15 were 15, depend claims 14 and from claims and
however, subjects and those claims are the of 2, respectively. argue Schreiber does not appeal. this Claim 1 recites: patentable claims and 15 are if claims A dispensing top passing only sever- Accordingly, and are not. because we al popped popcorn kernels of a at a time rejection affirm the and we open-ended from an container filled with need not address claims 14 15. and popped popcorn, having generally conical rejected Claim was un- examiner end, shape at each 102(b) der being anticipated 35 U.S.C. opening at the reduced end allows several 172,689 by Swiss Patent No. to Harz. The pass through kernels spout discloses “a for nozzle- time, at the same and means at the en- canisters,” ready may tapered which in- larged end of the to embrace the fashion, ward a conical and it states that container, end of taper spout purposes is useful for such as being jam uniform such as to itself dispensing oil from an oil can. The up examiner before the end of explained the cone that Harz discloses a conical dis- a few package kernels at a shake of a pensing top when open-ended for an container and mounted the container. clearly capa- concluded “the dispensing popped popcorn.” Figure ble of additionally Claim is similar to claim 1 but top comprises recites that the depicted a “means at from Harz is below. *4 Board, appealed to the again un- Schreiber rejected the examiner Claim was upheld rejections. The Board first being unpatentable which 103 as der 35 U.S.C. every limitation Pat- found that Harz discloses combination of Harz and U.S. over the of the recitations 3,537,623 recited in claim 1. Several to Fisher. The examiner ent No. claims, concluded, merely the Board Harz not although stated that does disclose of the forth the function and intended use of the to set “means at the reduced end thereat,” require any not struc- and therefore did Fisher does. close-off taught than those that it have tural feature other examiner concluded would found that the structure ordinary in the Harz. The Board obvious to one of skill been inherently capable by Harz is modify in view of Fisher in order disclosed art to Harz dispensing popcorn the manner set forth contents from con- to the container “seal[ ] claims, and that Schreiber’s declara- taminates.” provide enough prove to tion did not details rejec- response examiner’s incap- Harz is that the structure disclosed tions, submitted a declaration stat- Schreiber performing the claimed functions of able of dispensing top depicted ing that the conical invention. incapable of figure of Harz was argument that response to Schreiber’s “jam[ming] up before dispensing top in Harz permitting] the dis- the conical disclosed the end of the cone and oil, designed dispense liquids such as only at a shake of a is to pensing of a few kernels popcorn, than items such as top is mounted on the rather solid package when the enough pass popcorn large not that it is not to The examiner did enter
container.” kernels, pat- the Board noted that the in the record because he believed declaration device properly ent referred to the use it had not been submitted. When Board, only “example,” lubricating oil as an appealed to the the Board Schreiber that one of skill in the art “would to the examiner to consid- found remanded the case remand, perceive being of Harz as of broader the examiner er the declaration. On application.” that it The Board further found the declaration but found considered sup- dispensing top in Harz “is of a provide information to disclosed did not sufficient taper would dispensing relative size and has a which port assertion that to inherently permit popped popcorn kernels according Harz does not inher- top built to jam up of the cone and functionally limita- before the end ently possess defined at a a few kernels claims. tions recited shake the package” when the closed structure dispense popcorn, the ab mounted on a container. sence of relating a disclosure to function does Accordingly, the Board concluded that “all not defeat the Board’s finding of anticipation. Harz, limitations of claim 1 are found in It is well settled that the recitation of a new expressly either principles under the intended use for product an old does inherency, clearly and this claim anticipat- amake product to that patentable. old thereby.” ed Spada, See In re USPQ2d 1655, 1657(Fed.Cir.1990) (“The As for claim the Board dis found Fish- covery of a new property er disclosed a or use of closing previ means for off the ously composition, known smaller end of a conically shaped even top and when that property further found it and use that would been unobvious obvious from art, ordinary impart one skill in can not provide patentability to claims to close-off mechanism for a the known composition.”); the sort Titanium Metals by Harz, prevent disclosed Corp. Banner, dirt and Am. v. other contaminating matter entering from (Fed.Cir.1985) (composi opening in the device. appeals tion reciting newly prop discovered both of the Board’s determinations. erty of alloy an old did not satisfy section 102 alloy because the new); itself was not II Pearson, 1399, 1403, 181 (CCPA 1974) (intended argues Schreiber first use of an old *5 composition anticipate does not claim 1. anticipate To does not composition render claim, patentable); Zierden, claim art reference must disclose In re 56 C.C.P.A. every 1223, invention, limitation of 1325, 1328, 162 411 claimed F.2d USPQ 102, 104 ei explicitly (CCPA 1969) ther or inherently. (“[M]ere See Glaxo Inc. statement of a new Ltd., v. Novophann 1043, 1047, 52 F.3d 34 use for an otherwise old or composi obvious USPQ2d 1565, (Fed.Cir.1995). 1567 Antici tion cannot render a composition claim to the pation fact, is an Graves, issue see In re 69 patentable.”); Sinex, In 1004, re 50 C.C.P.A. 1147, 1151, (Fed. F.3d USPQ2d 1697, 36 1700 488, 492, 135 309 302, (CCPA F.2d USPQ 305 Cir.1995); Corp. Diversitech v. Century 1962) (statement of intended appa use in an Inc., Steps, 675, 677, 850 F.2d USPQ2d 7 ratus claim distinguish failed to over the 1315, (Fed.Cir.1988), 1317 question apparatus); Hack, In re 44 a claim whether limitation is inherent in a 954, 246, C.C.P.A. 248, 245 114 USPQ prior art reference is a factual issue on which (CCPA 161, 1957) (“the 162 grant patent of a may introduced, evidence see Continental on a composition or a machine cannot be Co., Can Co. USA v. Monsanto 948 F.2d predicated on a new of that use machine or 1264, 1268, (Fed.Cir. USPQ2d 1746, composition”); Benner, In re 36 C.C.P.A. 1991). 938, 942, 174 F.2d (CCPA 1949) (“no provision has been made There is dispute no that the structur patent statutes granting al limitations recited in applica upon an product old solely based upon dis tion are all found the Harz upon reference covery of a new product”). use for such Ac which the examiner and the Board relied. cordingly, Thus, Schreiber’s contention that his to use the terms found in Sehreiber’s structure will be dispense used to claim Harz discloses a “dispensing top” patentable does not have weight if generally that has “a the struc shape conical and an known, ture is already end,” regardless at each of whether and “means at the it has enlarged any ever been way end of used in in connec embrace the container, tion with popcorn. of the end the taper of the top being uniform.” Schreiber argues, however, makes the closely Schreiber related Harz does not disclose such a struc argument that Harz not anticipate does claim can be dispense ture used to popcorn from an 1 because Harz is non-analogous art to which open-ended popcorn container. ordinary one of skill in the art would not Although Schreiber is correct looked addressing problem Harz does not address the use tops dis- dispensing for popped popcorn contain- with, contrary to the characteriza- begin However, a refer- To question whether ers. dissent, nothing in to whether Sehreiber’s art is irrelevant tion in the analogous ence is Self, anticipates. In re See container is suggests that reference that Schreiber’s (CCPA USPQ 7 fact, 671 F.2d shape” than Harz’s. “of a different entirely may be from A reference above, according to an embodiment as shown that of the than field of endeavor different depicted in (Fig.5) and the embodiment may to an or be directed application have figure 1 of Schreiber’s from the one ad- entirely problem different reason, the shape. For that general same inventor, yet reference by dressed concluding that the justified was examiner inherent- anticipate explicitly if it
will still conically shaped as disclosed opening of recited every limitation ly discloses inherently a size sufficient to claims. several “allow[] function- argues that the further Schreiber through the same time” and pass at it from distinguish limitations of his al conically shaped top is Harz’s taper points to the particular, Schreiber Harz. shape “as to itself inherently of such a sever- the claimed “allows recitation that popped popcorn before the end jam up the pass through popped popcorn to al kernels of only a dispensing of cone and time,” taper that the same at the package when the at a shake of a few kernels jam up the “as to itself is such The ex- on the container.” top is mounted per- end of the cone popcorn before the correctly that Harz therefore found aminer at a only a few kernels mit prima anticipation. case of facie established when the is mounted package shake of a container.” on the shifted to point, At that the burden prior art struc to show that the features patent applicant A is free to recite inherently possess the function ture did structurally or func apparatus of an either Swinehart, appara of his claimed ally defined limitations tionally. In re 58 C.C.P.A. See at Spada, In re tus. See (CCPA 1971) (“[T]here nothing intrinsical 1658; USPQ2d King, at *6 it ly [defining something what wrong with (Fed.Cir.1986); USPQ 231 138-39 drafting patent than what it in is] does rather 1252, 1254-55, Best, In re claims.”). Yet, choosing to an element define (CCPA 1976). The Board i.e., does, with functionally, what it carries so, to do and we that Schreiber failed found in predecessor court stated it a risk. As our asserts that agree. Schreiber’s declaration Swinehart, USPQ at 439 F.2d at conically shaped top according to he built 228: that it was too small to figure 5 of Harz and has reason to be- where the Patent Office in jam dispense popcorn as recited the and that a functional limitation asserted lieve however, declaration, does not claim. The novelty in the establishing critical for to be dispens of either the specify the dimensions fact, may, an subject matter in be or the that ing that was tested art, prior it inherent characteristic of the was used. authority ap- possesses require to the the Moreover, a factual the Board found as subject the matter plicant prove to that figure in 5 of matter that the disclosed prior to art does shown be patent capable functioning “is to the Harz possess the characteristic relied on. popcorn in the dispense Hallman, also In re See Starting in 1.” with manner set forth (CCPA 1981); USPQ 609, assumption Harz should be Schreiber’s Ludtke, 663- 58 C.C.P.A. can, as attachment to an oil (CCPA limited to use 565-67 proportions figure scaled 5 to the the Board both ad- The examiner and the Board necessary to fit the Harz container functional question whether the dressed the can, as one-quart oil a standard pat- it gave limitations of Sehreiber’s in for reconsideration. suggested request his weight concluded that did entable manner, in scaling figure Harz After the not, limitations were found to because those dispenser Harz Board found that the in Harz art reference. the be inherent the capable be would popcorn in on the issue of anticipation is therefore af- the manner set in claim forth 1 of Schreiber’s firmed.
application. dissenting opinion incorrectly states Ill that the Board Mr. “us[ed] inven- Schreiber’s Sehreiber also challenges the template” tion Board’s as in find- determining that the ing claims 2 and 15 dispenser anticipates unpatentable Harz inven- under fact, 35 U.S.C. being tion. simply the Board obvious over scaled the the dispenser combination in of Harz figure illustrated Harz up5 and Fisher. argues Sehreiber the size necessary can, to fit a oil standard combination of changing proportions without Harz and Fisher fig- does not all disclose (The any in way. ure top depicted limitations of figure claim 2 because neither 5 of the Harz obviously was not in- nor Fisher the functionally discloses defined to be a representation tended full-sized features of top. argument That is with- invention, any more than because, de- out merit as we already noted, picted figure 1 of application Harz discloses functionally those lim- defined was intended to be a representation full-sized itations. invention.) portion of his of the dissent- ing opinion Sehreiber point argues addressed to this also is there- that Fisher provide based on a does not premise fore false function that —that device was closing “altered “means for Board off’ in applica Sehreiber’s anticipate then found to provides. tion different invention The functions Sehreiber image in whose it was enabling recreated.” The a person carry popped- cites— finding Board’s scaled-up that the version of popcorn package in a non-upright position figure 5 of Harz capable would be per- spillage, without keeping popcorn warm, forming all of the functions recited facilitating mixing ingredients— Sehreiber’s claim 1 is a factual finding, which are not part recited as of the means-plus- has not been clearly shown be erroneous. function clause in claim 2. Accordingly, those alone, On ground this anticipa- Board’s impart functions cannot patentability to the tion ruling must upheld. claim. any event, however, it enough is not Sehreiber argues further that Fisher Sehreiber to that a contend built accord- non-analogous art because Fisher relates ing proportions figure 5 of Harz is pouring oil from an oil can whereas incapable of performing the jamming and Schreiber’s invention relates to popcorn dis *7 dispensing functions. figures The from Harz pensing. That argument was not raised be provided were only “design as examples of fore the Board and we therefore decline to invention”; the the disclosure of the Harz consider it for the first appeal. time on patent is thus broader precise much than the if Even we were to consider argument, that shape Moreover, conical in figure disclosed 5. however, we note that contrary Sehreiber to acknowl suggestion, Sehreiber’s the struc- edges specification the that prior ture disclosed in the Harz is not limited to use as pertinent to dispenser. an oil can his invention patents While that includes given use is principal relating the example as of the fluids. to which Sehreiber uses may the invention put, argue could be therefore nothing in now that pat such patent suggests that ents are non-analogous art. is in See v. invention Constant any way Micro-Devices, Inc., sum, limited to that Advanced use. 848 F.2d 1560, 1570, (Fed.Cir. Schreiber’s USPQ2d 1057, declaration fails 7 to show that 1063 inherently 1988); Font, 297, lacks the In re functionally 300, de- 675 F.2d 213 (CCPA 532, fined limitations USPQ 1980); recited in Wood, claim 1 of 535 In re application. Accordingly, agree we 171, with the 599 F.2d 202 (CCPA Board 1979); Sehreiber has failed rebut the Nomiya, 566, prima facie anticipation (CCPA ease identified 611-12 the examiner. The Board’s finding factual Accordingly, we find no error in the Board’s with the addi- popped popcorn er filled with 2 and 15 would that claims determination dispensing a few kernels limitation of obvious. tional
have been jams up. No dispenser at a time before AFFIRMED. dispenser or was cited popcorn container NEWMAN, PTO, claim limitations Judge, and no similar Circuit PAULINE limita- by the PTO. These claim dissenting. cited were Perkin-Elmer ignored. can not be See tions panel majority respectfully dissent. I Corp., 822 F.2d Corp. Westinghouse Elec. v. express position that PTO affirms the (Fed.Cir. USPQ2d are irrelevant when limitations of the 1987) (the ignore plethora court can not ground of rejection on the dealing with limitations). Patentability is de- meaningful departs thus from The court “anticipation.” claimed, as with the invention termined for which we interpretation on rules of claim improper to delete limitations. It is weight. The Federal all its much placed so over, held, every claim in order to explicit limitations from the over Circuit has can be important and none prior limitation is art. find the residue proceeds ignore several now ignored —and A panel incon- Thus the
express limitations. requires, a claim that holds that gruously anticipates if infringes if later “That which pop- precisely, a container explicitly and Corp. v. Eastman Kodak earlier.” Polaroid only a few dispenser passes corn and a Co., USPQ 561, 574 “antic- jamming, is popcorn before kernels (Fed.Cir.1986) Mfg. (citing Peters v. Active shape as ipated” by an oil can of a different 389, 391-92, Co., 129 U.S. S.Ct. shows in a reference that neither illustrated (1889)). It is inconceivable L.Ed. 738 popcorn with container filled suggests nor any Mr. this or court would find upon dispenser dis- jamming popcorn dispenser infringed claims to this for those who popcorn. I feel pensing the reference. The claim the oil can of the Harz patent soliciting, for path arcane tread the the container is filled with limitations that importance of on the court’s insistence this only a popped popcorn and that few kernels seems to have limitations in the claims at a could not are released time way. lost its action, infringement ignored in an representa- 14 are claims 1 and properly ignored patentabil- in a are not tive: ity action. dispensing top passing sev- 1. A Board, using Mr. Schreiber’s popped popcorn at a time eral kernels of a template, rescaled the art and filled with open-ended from an container popcorn. This filled the oil can with exercise conical popped popcorn, having generally “anticipation.” The law of hindsight is not end, shape opening at each and an invention, anticipation requires that the same several end allows at the reduced claims, all limitations of the existed with through pass art. See Richardson v. Suzuki time, at the en- at the same and means Co., 1226, 1236, USPQ2d Motor larged end of the to embrace (Fed.Cir.1989) (“anticipation” 1920-21 container, taper of the end of the *8 invention is de- requires that the identical jam by itself being uniform and such as to reference). single prior art A scribed in a up popcorn the end of the before prior by can not be the art device altered dispensing of the cone and the anticipate found to a differ- Board and then package when a few kernels at a shake of image invention in whose it was recreat- ent the is mounted on the container. ed. package consisting 14. A of a container having having popped popcorn and an rejection, Mr. responding In to the PTO’s embracing thereat end and actual conical accord- made an Sehreiber
top according to claim 1.
ing
proportions,
Harz oil can’s
and
to the
reported
popcorn
the
did not behave as
that
it is irrelevant
that
The Board held that
proposed
then
that
contain-
in his device. The Board
the
claims are limited to a
Sehreiber
prior
explicit
in determining
had erred
the
art. The
claim
Mr. Schreiber
limitations must
opening,
postulated
of
diameter
the
be
in
considered
determination of anticipa-
appropriate opening
oil
with the
the Harz
tion, just
as
would be considered in
might
Mr.
can
behave as does
construing
purpose
the claims for the
of de-
says
Mr.
container.
Schreiber
this is incor-
termining infringement. They can not be
See,
say
I
e.g.,
rect.
it is irrelevant.
Rich-
ignored.
ardson,
1236, USPQ2d
868 F.2d at
at 1920
prior
device,
Since no
art shows this
it can
(every element of the claim must be
in
shown
“anticipated”
lacking novelty.
not be
as
reference,
limitations);
including
the
all
re
In
(the
Paulsen,