Ex Parte Sullivan - Page 8

               Appeal 2007-1970                                                                             
               Application 10/167,744                                                                       

               motivated to select materials for the inner and outer cover layers such that                 
               the resultant golf ball would have the claimed features?                                     
                      Where patentability rests upon a property of a claimed material not                   
               disclosed within the art, the PTO has no reasonable method of determining                    
               whether there is, in fact, a patentable difference between the prior art                     
               materials and the claimed material.  Thus, the PTO can properly require an                   
               applicant to prove that the prior art product does not necessarily possess the               
               characteristics of the claimed product.  In re Spada, 911 F.2d 705, 708,                     
               15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255-                      
               56, 195 USPQ 430, 433 (CCPA 1977).                                                           
                      The Examiner found that Sullivan discloses a golf ball comprising a                   
               core, an inner cover layer formed from a first composition, and an outer                     
               cover layer formed from a second composition (Answer 6).  The Examiner                       
               concluded that because Sullivan utilizes the same materials and                              
               manufacturing methods as those of Appellant, Sullivan’s golf ball would                      
               inherently have the properties recited in claims 1-10 (Answer 7).  The                       
               Examiner further determined that it would have been a matter of routine                      
               optimization to select materials which would achieve specific differences in                 
               coefficient of friction between the layers (Answer 7).                                       
                      Sullivan specifically discloses two examples of golf balls in which the               
               compositions of the inner and outer cover layers differ only in the presence                 
               of additives and fillers in the outer cover layer.  (Finding of Fact  5).  The               
               inner and outer cover layers have the same Shore D hardness.  Sullivan                       
               identifies additives useful for imparting flexural changes, etc. to a golf ball.             
               (Findings of Fact 6 and 7).  Some of these same additives are described by                   


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