Appeal No. 2002-0265 Page 9
Application No. 08/787745
and -45º respectively. According to the examiner, Akatsuka ‘450 fails to disclose only
the graphite fibers, which are taught by Hogan. The appellants argue that the selection
of ranges would not have been obvious to one of ordinary skill in the art, for the same
reasons as were argued with regard to the rejection under Section 102, and further
point out that the claimed ranges are critical because a shaft made in accordance with
them has considerably better feel as well as a kick point considerably closer to the butt
end. As evidence of these results, the appellants rely upon Figures 10 and 11 of their
drawing.
The first issue here is whether one of ordinary skill in the art would have been
motivated by Akatsuka ‘450 to select a tip end diameter from 22% of the mid-portion
and a butt end diameter from the lower 20% of the ranges disclosed therein, in order to
meet the terms of claim 1, from which claim 5 depends. We think not. The comments
we made above with regard to the selection of ranges are pertinent here, also. The
teachings of Akatsuka ‘450 are directed to accomplishing objectives that are different
from those of the claimed invention. When the purposes of the ranges are different and
the overlapping simply occurs by happenstance, obviousness is not present. See In re
Fine, 837 F.2d 1071, 1075-76, 5 USPQ2d 1596, 1600 (Fed . Cir. 1988). We also note
that the appellants have explained on page 8 of their specification why the claimed
ranges are critical to the accomplishment of the objective of the invention, and have
provided in the declarations of Mr. Olsavsky and Mr. Hoeflich explanations of what one
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