Appeal No. 2000-0486
Application No. 08/853,651
inches, (iv) a tip portion inner diameter greater than or
equal to 0.15 inches and (v) a tip portion wall thickness
between 0.04 and 0.125 inches. We are informed by the
appellants’ specification (p. 7) that the combination of tip
portion inner diameter and wall thickness and overall shaft
length recited in claim 23 results in an iron-type club which
is more stable in the event of offset
impact. The examiner rejected claim 23, as well as claims 242
through 30 which depend directly or indirectly from claim 23,
as being unpatentable over Fenton in view of Allen, Meredith,
Teramoto and Hogan. For the reasons which follow, it is our
opinion that the combined teachings of Fenton, Allen,
Meredith, Teramoto and Hogan are insufficient to establish a
prima facie case of obviousness of the subject matter of3
We note the teaching in the appellants’ specification (p. 9) that a2
golf club shaft according to the appellants’ invention has increased
resistance to rotation due to impact of the ball on the face of the club as
compared to the prior art. With this in mind, it is apparent that the
references on page 9 and in the table on page 10 to curves A-D in Fig. 13 are
reversed, e.g., the prior art is shown by curve D not curve A. These errors
in the specification are worthy of correction upon return of the application
to the jurisdiction of the examiner.
The test for obviousness is what the combined teachings of the3
references would have suggested to one of ordinary skill in the art. See In
re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Indeed, a prima
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