Appeal No. 2002-0265 Page 8
Application No. 08/787745
“[t]he majority of golfers would not benefit from the two examples given since there is
such a variation between golfers” (Answer, page 15) not to be persuasive.
The Section 102 rejection of independent claim 1 therefore is not sustained nor, it
follows, is the like rejection of claims 2 and 3, which depend from claim 1.
The Section 103 Rejection Of Claims 5 And 6
Claim 5 stands rejected as being obvious in view of the combined teachings of
Akatsuka ‘450 and Hogan, and claim 6 on the basis of those references taken further in
view of Akatsuka ‘396. The test for obviousness is what the combined teachings of the
prior art would have suggested to one of ordinary skill in the art. See, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner to provide a reason why
one of ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellants’ disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Claim 5 adds to claim 1 the requirement that the shaft further comprise two
layers of graphite fibers imbedded in epoxy and having fibers oriented at angles of +45º
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