Ex parte DE BYKHOVETZ et al. - Page 9




           Appeal No. 1998-2057                                                  Page 9              
           Application 08/331,541                                                                    


           claim 23 is the standard #6 iron.  A side-by-side comparison                              
           of the claimed iron club and the standard #6 iron club                                    
           disclosed by Paul reveals the following:                                                  

                          Claim 23                          Paul’s # 6 Iron                          
             Face angle (loft) $ 35E               Loft = 34E                                        
             Lie angle # 60E                       Lie = 60E                                         
             Head mass # 260 g                     Head weight = 262 g                               

           Thus, as can be seen from the above comparison, the standard                              
           #6 iron club disclosed in Paul differs from the iron club                                 
           defined in claim 23 by 1E of loft and by 2 grams of head mass.                            


                 In applying the test for obviousness,  we reach the3                                       
           conclusion that it would have been obvious to one having                                  
           ordinary skill in the art, from a combined assessment of the                              
           Pfau and Paul teachings, to fabricate a customized #6 iron                                
           with a loft of at least 35E, a lie of 60E or less and a head                              
           mass of 260 g or less.  In our view, one of ordinary skill in                             
           the art would have been motivated to vary the loft of the                                 


                 3The test for obviousness is what the combined teachings of the                     
           references would have suggested to one of ordinary skill in the art.                      
           See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991)                 
           and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1881).                       





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