## Facts

- A patent applicant sought claims to a conical dispensing top that mounts on an open container and, when the container is inverted and shaken, dispenses only a few popped popcorn kernels at a time by jamming within the taper.
- Claim 1 recited a generally conical top with openings at each end, a larger end for attachment to a container mouth, and a taper that by itself jams popcorn to limit dispensing per shake.
- Claim 2 added a limitation directed to a mechanism for closing the reduced-end opening; claims 14 and 15 depended from claims 1 and 2.
- The examiner rejected claims 1, 2, 14, and 15 as anticipated under 35 U.S.C. § 102(b) by a Swiss patent disclosing a conical spout for a canister described for dispensing oil.
- The prior-art spout had a large attachment end, a smaller outlet opening, and a conical taper closely matching the claimed structure; the examiner concluded the spout was capable of dispensing popcorn.
- The Board of Patent Appeals and Interferences affirmed the anticipation rejection; the applicant appealed.

## Issues

1. Whether a prior-art conical canister spout disclosed for dispensing oil anticipates an apparatus claim reciting popcorn-dispensing functions when the prior art discloses the same structure.
2. Whether the functional “few kernels at a time/jamming” behavior could be treated as inherent in the prior-art structure for anticipation purposes.
3. Whether, after the agency made a prima facie inherency-based anticipation showing, the burden properly shifted to the applicant to provide evidence that the prior-art structure lacked the asserted functional capability.

## Decision

- The Federal Circuit affirmed the Board’s anticipation rejection of claims 1, 2, 14, and 15.
- The court held that the prior-art spout disclosed the same or essentially the same structural features as the claimed dispensing top.
- The court held that functional language describing how the device dispenses popcorn did not confer patentability where the prior art structure inherently possessed the claimed capability.
- The court held it was reasonable for the examiner and Board to infer inherency from the close structural correspondence, creating a prima facie case of anticipation.
- The court held the applicant failed to rebut inherency with evidence; attorney argument alone was insufficient.
- A dissent objected to relying on inherency to supply functional/performance characteristics without concrete evidentiary support.

## Legal Principles

- An apparatus claim is defined by what the device is (its structure), not merely by a newly stated intended use for that structure.
- A prior-art reference can anticipate an apparatus claim containing functional language if the disclosed structure inherently is capable of performing the recited function, even if the reference describes a different use.
- When the agency reasonably concludes a functional property is inherent in a prior-art structure and establishes a prima facie case, the burden shifts to the applicant to produce evidence that the prior art does not possess the asserted inherent characteristic.
- Dependent claims not argued separately may stand or fall with the independent claim when the dispositive grounds apply equally.

## Conclusion

The court upheld an anticipation rejection where the claimed popcorn dispenser was structurally the same as a prior-art canister spout; functional “intended use” and performance language did not distinguish the apparatus, and the applicant provided no evidence to defeat the agency’s inherency finding.


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