Appeal No. 1998-2057 Page 12
Application 08/331,541
optimization of result-effective variables that would have
been obvious to one of ordinary skill in the art. However, it
appears that the appellants have not fully appreciated the
breath of claim 28. As pointed out above, the claim is so
broad as to read on a standard set of #2 to #4 irons with a
customized #5 iron specifically modified by increasing the
standard length by ½-inch and the loft angle by approximately
2E. It is our opinion that such a modification of a standard
#5 iron would have been fairly suggested by Paul.
In view of the foregoing, we will sustain the rejection
of claims 23 and 28 under 35 U.S.C. § 103. Based upon the
appellants' grouping of claims, supra, the rejection of claims
24 through 27 and 29 through 31 will also be sustained since
these claims stand or fall with claims 23 and 28.
However, after reviewing the combined teachings of the
applied prior art, we reach the conclusion that the subject
matter of claims 18 and 32 would not have been suggested to
one of ordinary skill in the art at the time the invention was
made. In that regard, as pointed out by the appellants, there
is no suggestion, motivation, or teaching in the prior art
whereby the person of ordinary skill would have been
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