Appeal No. 96-1820 Application No. 08/189,140 regulation baseball, and in the claims he describes his invention by way of specific dimensions (claims 1 through 3) and dimensional relationships (claim 4), as well as in the material from which the core is made (claim 4). From our perspective, this establishes criticality to the degree necessary to require focus upon the fact that while the prior art discloses baseballs sized smaller than regulation baseballs, this is not the extent of the limitations recited in the appellant’s claims. The only suggestion for making the core of the baseball in accordance with the dimensional and material limitations recited in claims 1 and 4 is found via the luxury of the hindsight provided one who first viewed the appellant’s disclosure. This, of course, is impermissible as a basis for rejecting the claims. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). It therefore is our conclusion that the teachings of the prior art relied upon fail to establish a prima facie case of obviousness with regard to the subject matter of independent claims 1 and 4, and we therefore will not sustain the rejection of these claims or, it follows, of dependent claims 2 and 3. In view of the fact that a prima facie case of obviousness has not been established by the applied prior art, there is no 8Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007