Appeal No. 2002-1764 Page 5
Application No. 09/359,752
strength, without the use of a solid core. Okada gives no indication that a solid core
would be at all desirable or would improve the functionality of the sporting rod. The
mere fact that solid golf club shafts were known in the art at the time of appellants’
invention, formed either as a single piece as taught by Herber or as a solid core
wrapped with a textile covering and wood and bamboo or rattan, would not have
provided any suggestion to add a solid core to the tubular member of Okada, whose
prepreg layers are already carefully designed to provide a sufficient balance of flexibility
and strength. In fact, it would appear that the provision of a solid core in Okada’s
tubular member would inhibit the flexibility which is the object of Okada’s invention.
Where the proposed modification would render the prior art invention being modified
unsatisfactory for its intended purpose, the proposed modification would not have been
obvious. See Tec Air Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360, 52
USPQ2d 1294, 1298 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
The examiner’s “alternative” position as stated in the sentence bridging pages 4
and 5 of the answer that “one of ordinary skill in the art would modify Herber’s sporting
rod with a combination of Cosby and Okada’s layered method” is equally unsound. The
teachings of Herber and Okada indicate that the prior art has chosen two different
approaches when forming sporting shafts using fiber-reinforced resin material. Herber’s
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