Appeal 2006-1969
Application 10/712,942
exemplified inner cover layer taught by Nesbitt (Surlyn 1605) has a Shore D hardness of
62, and the exemplified outer cover layer taught by Nesbitt (Surlyn 1855) has a Shore D
hardness of 55, which is within the scope of claim 15 on appeal (which recites no value for
the Shore D hardness of the inner cover layer and a Shore D hardness of “no more than
55" for the outer cover layer). Therefore appellants’ argument is not persuasive since an
example of Nesbitt falls within the scope of claim 15 on appeal. See In re May, 574 F.2d
1082, 1089, 197 USPQ 601, 607 (CCPA 1978).
Appellants further argue that Nesbitt does not disclose or claim a PGA compression
of 100 or less, a spin factor, or the COR (Brief, page 5). Appellants argue that the burden
is on the examiner to provide a basis in fact and/or technical reasoning to reasonably
support the determination that the allegedly inherent characteristics necessarily flow from
the teachings of the prior art (id.).
Appellants’ arguments are not persuasive. First, we note that claim 15 on appeal
does not require a “spin factor” property.3 Second, the examiner finds, and appellants do
not dispute, that the PGA compression for all golf balls is less than 100 or the golf balls are
not suitable for play (Answer, page 7). Third, we agree with the examiner that the COR
taught by Nesbitt is within the scope of the values recited in claim 15 on appeal for the
“inner ball” (“at least 0.780" in claim 15 vs. 0.800 in Nesbitt, at col. 3, ll. 26-32; see the
3Even assuming the spin factor was recited in the claim under consideration, this
property would have been inherent or obvious for the reasons stated on pages 6-8 of
the decision in Appeal No. 2005-1119.
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