Appeal 2007-2315
Application 10/095,265
characteristics as shaft weight and flexibility. In support of this
contention, Appellant’s refer to the Loesch 132 Declaration in
the Evidence Appendix that confirms the negative effects of
extending grip lengths (see paragraphs 4 and 5).
(Suppl. Br. 11).
We are not persuaded by this argument. It is well settled that an
obviousness analyses involving potential modifications of the prior art
entails weighing the relative trade-offs of the various alternatives. See
Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870
(Fed. Cir. 2006) (“The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”)
(quoting Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8, 53
USPQ2d 1580, 1587 n.8 (Fed. Cir. 2000)). In this case, the prior art quite
clearly describes the advantage of extending the length of the length of the
handgrip for an iron or wood club (see Heber), despite the “concern” by club
makers of “the effect of the grip on the overall weight of the club, the
balance of the club and the flex of the shaft” (Declaration of Loesch 2: ¶ 5).
Moreover, we see no reason why the teaching of Gedeon for a putter
is not applicable to an iron or wood club. Curry teaches a grip of “say” 15
inches, without limiting it to a particular club type. Evidence Appendix 2
does not distinguish between putters and iron/wood clubs in its discussion of
grips (Evidence Appendix 2 at p. 2). Thus, we find no evidence for the
assertion that the skilled worker would not have considered Gideon’s
teaching applicable to an iron or wood club. To the contrary, there is a
preponderance of evidence that grip lengthening was used for both putters
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