Appeal No. 2002-0265 Page 7
Application No. 08/787745
arranged as in the claim. See Karsten Mfg. Corp. v. Cleveland Gulf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001; Akzo N.V. v. International Trade
Commission, 808 F.2d. 1471, 1480, 1 USPQ2d 1241, 1245-46 (Fed. Cir. 1986) cert.
denied 107 S.Ct 2490 (1987); In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526
(CCPA 1972).
Akatsuka ‘450 requires one of ordinary skill in the art to pick and choose
diameters from the disclosed ranges in order to meet the terms of claim 1. For
example, with regard to the tip end diameter, one would have to discard the lower 50%
and the upper 28% of the range of Akatsuka ‘450, and choose a value from the
remaining 22%, in order to fall within the range recited in claim 1. As for the butt end
diameter, one would have to discard the upper 80% and pick a value from the lower
20% of the Akatsuka ‘450 range to fall within the range of claim 1. Since the objects of
the invention in Akatsuka ‘450 differ from those of the appellants’ invention, no direction
is provided by Akatsuka ‘450 to do so. Especially when considered in the light of the
guidance provided by the two examples in the reference, where either the tip diameter
or the butt diameter falls outside of the claimed ranges, it is our opinion that Akatsuka
‘450 does not disclose the ranges in sufficient specificity to constitute an anticipation of
the subject matter recited in the claim. We find the examiner’s rationale that the artisan
would have selected the diameters from within the claimed ranges because “golfers
come in all strengths and sizes and require different flexibilities and dimensions” and
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