Ex parte BEACH et al. - Page 8




          Appeal No. 2000-0486                                                        
          Application No. 08/853,651                                                  


          the art and not from the appellants' disclosure.  See, e.g.,                
          Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5                
          USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825                   
          (1988).                                                                     
               In our view, the combined teachings of Fenton, Teramoto                
          and Hogan would not have led an artisan to arrive at the                    
          claimed invention.  In that regard, it is our opinion that the              
          combination of an iron-type head and a shaft having a length                
          between 33 to 40 inches, a weight less than or equal to 85                  
          grams, a tip portion outer diameter greater than or equal to                
          .38 inches and less than or equal to .40 inches, a tip portion              
          inner diameter greater than or equal to 0.15 inches and a tip               
          portion wall thickness between 0.04 and 0.125 inches is not                 
          suggested by the applied prior art.  Specifically, we see no                
          motivation, suggestion or teaching in Hogan of the                          
          desirability of making the tip portion wall thickness of the                
          Fenton shaft 2.94 mm (0.116 inches), particularly in view of                
          the fact that the shaft in Hogan is substantially longer and                
          heavier than the shaft disclosed in                                         




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