Appeal No. 2000-1272
Application No. 08/861,095
4. Claims 9-12 as unpatentable over Whelan in view of Mang and Desmarais.
According to the examiner’s findings (see pages 3 and 5 of the answer), both of
the primary references (namely the Takeno and Whelan patents) disclose a golf tee
having a coated body portion wherein the body is formed from a mixture of an earthen
material and a biodegradable binder. The examiner concedes that the coatings utilized in
the primary references for covering the body portion are not biodegradable. He
nevertheless concludes that the teachings of Mang would have made it obvious to
substitute a biodegradable soluble coating for the non-biodegradable coating in each of
the primary references.
Appellants concede that Mang “discloses a biodegradable polyester coating”
(main brief, page 5). However, they contend that the prior art does not suggest the
substitution proposed by the examiner.
We have carefully considered the record before us together with the examiner’s
remarks and appellants’ arguments. As a result, we conclude that the evidence adduced
by the examiner is insufficient to establish a prima facie case of obviousness.
To establish a prima facie case of obviousness, the examiner must show some
objective teaching in the prior art or knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to meet the terms of the claims In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
Both of the primary references recognize the problem solved by appellants,
namely the damage caused by used wooden or plastic golf tees to grass mowing
equipment. However, in addressing this problem, the primary references employ
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007