Appeal No. 2003-0221
Application 09/670,929
while it is true that there is nothing in the Teasdale patent
which indicates that the carry-out container therein may be used
for the storage of rolls of wrapping paper, we agree with the
examiner that the carton/container of Teasdale (e.g., Fig. 6) is
fully responsive to the structural features of the container set
forth in claim 1 on appeal and is inherently capable of being
used in the manner set forth in claim 1 to hold rolls of wrapping
paper.
As was made clear in In re Schreiber, 128 F.3d at 1478, 44
USPQ2d at 1432, by choosing to define an element functionally as
in appellant’s claim 1 on appeal, appellant assumes a risk, that
risk being that where the Patent and Trademark Office has reason
to believe 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 upon. In the present case, appellant
has provided no evidence to prove that the container in Teasdale
is not capable of holding and storing appropriately sized rolls
of wrapping paper. We therefore are constrained to agree with
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