Ex Parte MIURA et al - Page 6




                 Appeal No. 2002-1488                                                                                                                 
                 Application No. 09/463,695                                                                                                           


                                   diameter, span, and length of these shelled objects without                                                        
                                   additional cost or complicated manufacturing processes.                                                            
                                   [Answer, page 4.]                                                                                                  

                 Based on these determinations, the examiner concludes that “the teachings of Knapp                                                   
                 are . . . analogous to the teachings of Allen” (answer, page 4) and that it would have                                               
                 been obvious to modify Allen by substituting a PCCP structure for the honeycomb                                                      
                 design of Allen, “the motivation being to simply take advantage of another commonly                                                  
                 used method for overcoming size limitations associated with routinely used forging and                                               
                 casting techniques in an effort to increase the dimensions of a shell structure while                                                
                 maintaining structural integrity” (answer, pages 4-5).                                                                               
                          After having reviewed both Allen and Knapp, we must agree with the arguments                                                
                 presented by appellants on pages 8-15 of their brief that there is no teaching,                                                      
                 suggestion or incentive in either reference which would have led one of ordinary skill in                                            
                 the art at the time of appellants’ invention to modify the golf club head of Allen in the                                            
                 manner proposed by the examiner to arrive at the subject matter of claim 11.  In this                                                
                 regard, we are in accord with appellants that the examiner has failed to identify a basis                                            
                 why one having ordinary skill in the art would have been realistically motivated to                                                  
                 substitute the PCCP structure of Knapp for the honeycomb design of Allen, especially                                                 
                 when considering that Knapp’s objective is to facilitate the construction of large scale                                             
                 structures such as petroleum storage facilities, orbiting space stations and undersea                                                
                 nuclear reactor housings.  Given the disparate natures of the devices disclosed by                                                   
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