Appeal No. 1999-0956
Application No. 08/584,084
of flap 36 of a box blank encounters folding finger 50, the flap
is folded over a trailing portion of the box blank as the folding
finger rotates about its axis. Labombarde is silent as to the
remainder of the “paper line” into which the folding mechanism is
apparently incorporated. Looking at Labombarde in a light most
favorable to the examiner’s point of view, it reasonably appears
that the mechanism disclosed in Labombarde corresponds to those
parts of the claimed “system” set forth in the body of claim 28.
However, the question of whether the Labombarde mechanism is
capable of producing card packages of the type called for in the
preamble of claim 28 simply has not been addressed by the
examiner.
Where the PTO has a reasonable basis for concluding that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on. In re Swinehart, 439 F.2d 210, 212-13,
169 USPQ 226, 228-29 (CCPA 1971). Here, however, the examiner
has not provided any evidence or logical reasoning, and none is
apparent to us, as to why the mechanism of Labombarde is capable
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