Ex parte DE BYKHOVETZ et al. - Page 11




           Appeal No. 1998-2057                                                 Page 11              
           Application 08/331,541                                                                    


           (as with any standard set of iron clubs) and an additional                                
           club having a face angle greater than 31E and a length which                              
           is within the length range of the clubs of the series whose                               
           face angle is between 15E and 26E.                                                        
                 Paul shows, at page 291, that prior to the appellants’                              
           invention a standard set of iron clubs included a #5 iron                                 
           having a loft or face angle of approximately 30E and a                                    
           standard length of 37.5 inches and that a club with a loft or                             
           face angle of 26E would have been a #4 iron having a length of                            
           38 inches.  In our opinion, one of ordinary skill in the art                              
           would have been motivated to vary the loft of the standard #5                             
           iron by one or more degrees in order to customize the club for                            
           a golfer who consistently hit the ball too high or too low,                               
           following the teaching in Paul at page 364.  As to the club                               
           length, Paul teaches (page 348) variations in standard club                               
           lengths by as much as ½-inch and, on rare occasions, more than                            
           ½-inch.  Thus, it would have been obvious to increase the                                 
           length of a standard #5 iron by ½-inch or more (making it the                             
           length of a standard #4 iron) in order to correct for arm                                 
           length or unusual posture.                                                                
                 The appellants argue that claim 28 is not a mere                                    







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