Appeal No. 2001-2533 Page 6
Application No. 09/372,988
short of the requirement for the intermediate layer of the claim, which is greater than
28%. Moreover, Akatsuka does not teach that the resin content of any of the inner,
intermediate and outer layers should differ from one another, much less that the
intermediate layer have a greater resin content than the inner and outer layers.
In the golf club handle of Fenton both the standard and the high strength
prepegs that are used for the various layers are disclosed as utilizing 34% resin
content, and there is no teaching that this can be different for any particular layer.
Thus, on its face, Fenton would not have suggested to one of ordinary skill in the art
that the Akatsuka shaft be modified in such a fashion as to meet the terms of claim 1.
The examiner’s conclusion that an artisan would have seen fit to use more than 28%
resin in the intermediate layer “in order to have less fibers and a more flexible shaft”
(Answer, page 5) is not supported by evidence and therefore must be considered to be
merely an opinion, which can be accorded no weight. Therefore, from our perspective,
suggestion to modify Akatsuka in the manner proposed by the examiner is grounded in
the hindsight afforded one who first viewed the appellant’s disclosure. This, of course,
is not a proper basis for a rejection under Section 103. In re Fritch, 972 F.2d 1260,
1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It thus is our conclusion that the evidence adduced by the examiner fails to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 1, and we will not sustain the rejection.
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