Appeal No. 2002-0265 Page 5
Application No. 08/787745
in claim 1, and overlap the ranges for the tip end. We do not agree with the examiner’s
conclusion that this causes the reference to anticipate claim 1, and we therefore will not
sustain the rejection. Our reasoning follows.
We first observe that the ranges recited in claim 1 are set forth by the appellants
in the original disclosure of the invention on page 2 of the specification and in the
description on page 7 of the finished shafts, which are shown in Figures 9A and 9B, as
well as appearing in the claims as originally filed. The appellants also explain in the
discussion on page 7 of the specification that there is an element of criticality associated
with the ranges prescribed for the tip portions and the butt portions.
As shown in Figs. 9A and 9B, the finished shafts 140, 150 have a
standard nominal tip diameter of .370 inches, or .335-.400 inch in diameter
for woods and .330-.390 inch in diameter for irons. The tip portion extends
about 1 to 6 inches in length from the tip of the shaft. The shaft then
tapers to the maximum outside diameter at the butt end of from .400-.560
inches in diameter, preferably from .450 to .550 and most preferably from
.520 to .540 inches in diameter. Shafts having a butt diameter significantly
greater than .560 inch do not exhibit a significant degree of overall flex
improvement over prior art shafts; and shafts having a butt diameter
significantly below .400 are prone to breakage.
As pointed out by the appellants in their arguments, the manner in which the
issue of anticipation of ranges should be evaluated is discussed in Section 2103.03 of
the Manual of Patent Examining Procedure (MPEP), with reference to controlling case
law. According to the guidance provided in the MPEP, a claimed range is anticipated if
a specific example of the range is found in the prior art. Akatsuka ‘450 sets forth two
examples of golf club shafts made in accordance with the invention disclosed therein,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007