dissenting.
I respectfully dissent. The panel majority affirms the PTO position that the express limitations of the claims are irrelevant when dealing with a rejection on the ground of “anticipation.” The court thus departs from the rules of claim interpretation on which we have placed so much weight. The Federal Circuit has held, over and over, that every claim limitation is important and none can be ignored — and now proceeds to ignore several express limitations. Thus the panel incongruously holds that a claim that requires, explicitly and precisely, a container of popcorn and a dispenser that passes only a few kernels of popcorn before jamming, is “anticipated” by an oil can of a different shape as illustrated in a reference that neither shows nor suggests a container filled with popcorn or the jamming of the dispenser upon dispensing the popcorn. I feel for those who tread the arcane path of patent soliciting, for this court’s insistence on the importance of the limitations in the claims seems to have lost its way.
Schreiber’s claims 1 and 14 are representative:
1. A dispensing top for passing only several kernels of a popped popcorn at a time from an open-ended container filled with popped popcorn, having a generally conical shape and an opening at each end, the opening at the reduced end allows several kernels of popped popcorn to pass through at the same time, and means at the enlarged end of the top to embrace the open end of the container, the taper of the top being uniform and such as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted on the container.
14. A package consisting of a container having popped popcorn and having an open end and embracing thereat a dispensing top according to claim 1.
The Board held that it is irrelevant that the Sehreiber claims are limited to a container filled with popped popcorn with the additional limitation of dispensing a few kernels at a time before the dispenser jams up. No popcorn container or dispenser was cited by the PTO, and no similar claim limitations were cited by the PTO. These claim limitations can not be ignored. See Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532, 3 USPQ2d 1321, 1324 (Fed.Cir. 1987) (the court can not ignore a plethora of meaningful limitations). Patentability is determined for the invention as claimed, with all its limitations. It is improper to delete explicit limitations from the claim in order to find the residue in the prior art.
A
“That which infringes if later anticipates if earlier.” Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556, 1573, 229 USPQ 561, 574 (Fed.Cir.1986) (citing Peters v. Active Mfg. Co., 129 U.S. 530, 537, 9 S.Ct. 389, 391-92, 32 L.Ed. 738 (1889)). It is inconceivable that this or any court would find Mr. Schreiber’s claims to this popcorn dispenser infringed by the oil can of the Harz reference. The claim limitations that the container is filled with popped popcorn and that only a few kernels of popcorn are released at a time could not be ignored in an infringement action, and they are not properly ignored in a patentability action.
The Board, using Mr. Schreiber’s invention as a template, rescaled the prior art and filled the oil can with popcorn. This exercise of hindsight is not “anticipation.” The law of anticipation requires that the same invention, with all the limitations of the claims, existed in the prior art. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920-21 (Fed.Cir.1989) (“anticipation” requires that the identical invention is described in a single prior art reference). A prior art device can not be altered by the Board and then found to anticipate a different invention in whose image it was recreated.
In responding to the PTO’s rejection, Mr. Sehreiber made an actual conical top according to the Harz oil can’s proportions, and reported that the popcorn did not behave as in his device. The Board then proposed that *1481Mr. Schreiber had erred in determining the diameter of the opening, and postulated that with the appropriate opening the Harz oil can might behave as does Mr. Schreiber’s container. Mr. Schreiber says this is incorrect. I say it is irrelevant. See, e.g., Richardson, 868 F.2d at 1236, 9 USPQ2d at 1920 (every element of the claim must be shown in the reference, including all limitations); In re Paulsen, 30 F.3d 1475 (the reference must describe the claimed invention sufficiently to place it in the possession of a person of ordinary skill in the field).
Mr. Schreiber’s popcorn dispenser is not described in the prior art. Statements in the claims that define and limit the device are material limitations, for purposes of infringement and for purposes of distinguishing from the prior art. See, e.g., Rowe v. Dror, 112 F.3d 473, 478-79, 42 USPQ2d 1550, 1553-54 (Fed.Cir.1997) (the field of the invention as stated in a Jepson-type claim limits the invention); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7 USPQ2d 1315, 1317 (Fed.Cir.1988) (limitations stated in the preamble limit the claimed invention); In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed.Cir.1987) (function stated in claim distinguishes from prior art). The rejection for lack of novelty is simply incorrect.
In Warner-Jenkinson Co. v. Hilton Davis Chem. Co., — U.S.-, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) the Court stressed the importance of claim limitations. The cases cited by the panel majority relate to the discovery of a new use of a known composition or device, and hold that the discovery of that use does not render patentable that which is already known. However, Schreiber’s device is not known, but is new, and the claims are explicitly so limited. See Coming Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-57, 9 USPQ2d 1962, 1965-66 (Fed.Cir.1989) (“To read the claim in light of the specification indiscriminately to cover all types of optical fibers would be divorced from reality.”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 or 842 F.2d 1275 (anticipation can not be based on conjecture). The claimed popcorn dispenser having a novel structure and function, whereby the container is filled with popcorn and after a few kernels of popcorn are released the dispenser jams up, is not in the cited prior art. The explicit claim limitations must be considered in determination of anticipation, just as they would be considered in construing the claims for the purpose of determining infringement. They can not be ignored.
Since no prior art shows this device, it can not be “anticipated” as lacking novelty.
B
The panel majority suggests that it would be “inherent” to use the oil can as a popcorn dispenser. An inherent disclosure, to be invalidating as an “anticipation,” is a disclosure that is necessarily contained in the prior art, and would be so recognized by a person of ordinary skill in that art. Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268-69, 20 USPQ2d 1746, 1749-50 (Fed.Cir.1991). “Inherency” charges the inventor with knowledge that would be known to the art, although not described. Inherency is not a matter of hindsight based on the applicant’s disclosure: the missing claim elements must necessarily be present in the prior art.
The authority cited by the majority, relating to claiming a known composition or device based on discovery of a new use, is inapt. It is of course correct that the discovery of a new use of a known composition or device does not render that composition or device patentable per se. The reason, however, is not “inherency”; it is that the composition or device is already known to the public, and can not be removed from the public. (The new use can of course be claimed as a method of use.) In this case, however, Mr. Schreiber has created a new device, not previously known to the public, and has claimed his new device with explicit limitations that distinguish it from previously known devices.
In passing, I also observe that the majority errs in stating that advantages not recited in the claim can not impart patentability to a new device. The advantages of an invention are often relied on to support patentability; whether they are included in the claim depends on a variety of factors, and is not the subject of a rigid rule.
*1482The issue in this case is anticipation; that is, novelty. Since the claimed invention is not described in a single prior art reference, it is not “anticipated.”