Appeal No. 1999-1061 Page 5
Application No. 08/568,337
features recited in claim 1, in improving the strength of the fishing rod (specification, page
4). While the object of the Lindler invention also is to provide a strong, lightweight fishing
rod, the reference discloses that in the construction therein presented the resin volume
percentage should be 40%. Lindler does not provide any reasoning as to why this value
was selected, nor does it suggest that varying the percentage one way or the other would
produce greater or lesser strength. This being the case, Lindler clearly lacks explicit
suggestion to one of ordinary skill in the art to reduce the resin weight percentage to 25%,
and in our view also is devoid of any implicit suggestion to do so. This being the case, we
do not share the examiner’s opinion that the artisan nevertheless would have been
motivated by Lindler to experiment with the resin weight percentage, much less that this
would lead to lowering it to 25%. From our perspective, the only suggestion for modifying
the Lindler fishing rod in the manner proposed by the examiner is found in the hindsight
afforded one who first viewed the appellants’ disclosure. This, of course, does not
constitute a proper basis for a rejection on the grounds of obviousness. See In re Fritch,
972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
A prima facie case of obviousness has not been established with regard to the
subject matter of claim 1, and we will not sustain the rejection.
Claims 2-4 stand rejected on the basis of Lindler in view of the Japanese reference.
Even accepting at face value the examiner's comments regarding the applicability of the
teachings of the Japanese reference to these claims, the fact of the matter is that this
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