Appeal No. 1998-2057 Page 14
Application 08/331,541
Independent claims 18 and 32 each call for an iron club
having a face angle greater than 35E (according to Paul, this
would correspond to a #7 iron) and a length greater than or
equal to 0.99 m (according to Paul, this would correspond to
#1 or #2 iron). Considering the teachings of Pfau and Paul,
we do not consider it reasonable to expect that a conventional
#2 iron would have been modified by increasing its loft angle
from 20E to more than 35E while maintaining a shaft length
greater than or equal to 0.99 m (39 inches). Nor do we expect
that one of ordinary skill would have been directed by the
combined teachings of Pfau and Paul to modify a standard
length #7 iron having a length of 36.5 inches by increasing
its length by 2.5 inches to 39 inches while maintaining a 38E
loft angle. Even considering the chart shown on page 363 of
Paul, the reference teaches a maximum #2 iron shaft length of
40.5 inches for a fingertip to floor distance of over 30
inches. Using the standard ½-inch reduction in length in
successively numbered clubs (see Paul, page 348), the #7 iron
would have been 2.5 inches shorter than the #2 iron, i.e., 38
inches or 0.97 m. The appellants’ claims 18 and 32 call for a
club shaft length greater than or equal to 0.99 m (39 inches),
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