Ex parte MIMEUR et al. - Page 4




          Appeal No. 96-0987                                                          
          Application No. 08/226,467                                                  


          in a vacuum, but in light of the specification disclosure and the           
          teachings of the prior art.                                                 
                    With this in mind, we first analyze independent claim             
          8, which recites, inter alia, an                                            
                    Iron-type golf club head comprising a                             
                    hollow metal body incorporating an                                
                    internal cavity...an impact wall...                               
                    wherein said impact wall has an internal                          
                    surface coated with a thin layer of a                             
                    viscoelastic resin having damping                                 
                    properties...said layer being adapted                             
                    for molding under low pressure or by                              
                    gravity using a reaction injection                                
                    molding process (RIM) [emphasis added].                           

          Thus, the golf club head is recited as an article of manufacture            
          having a thin layer of viscoelastic resin coated on an internal             
          surface of the impact wall, which layer is subsequently recited             
          as being "adapted for molding...using a reaction injection                  
          molding process (RIM)."   Therefore, as claimed, it appears that            
          appellants intended the "layer" recited in appealed claim 8 to be           
          "adapted for molding" by the RIM process subsequent to the                  
          formation of the golf club head.  Consequently, it is our opinion           
          that the metes and bounds of appealed claim 8 cannot be                     
          accurately determined and that claim 8, along with claims 9                 
          through 14 dependent thereon, fail to comply with the provisions            
          of 35 U.S.C.  112, second paragraph.                                       

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