Appeal No. 2002-0265 Page 10
Application No. 08/787745
of ordinary skill in the art would not have been taught by Akatsuka ‘450 regarding
selection of butt and tip diameters, as well as the advantages of using the claimed
ranges. Consideration of the teachings of Hogan does not overcome the problems with
Akatsuka ‘450 regarding the issue of the selection of values from the ranges.
In view of the foregoing, we fail to perceive any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to pick and choose the values from
ranges disclosed by Akatsuka ‘450 which would be necessary in order to meet the
terms of the claim. From our perspective, the only suggestion for doing so resides in the
luxury afforded one who first viewed the appellants’ disclosure which, 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 therefore is our conclusion that the evidence adduced by the examiner does
not establish a prima facie case of obviousness with regard to the subject matter recited
in claim 5, and we will not sustain the rejection.
We reach the same conclusion with regard to claim 6, which depends from claim
1 and stands rejected as being unpatentable over Akatsuka ‘450 taken in view of Hogan
and Akatsuka ‘396. Hogan again was cited for disclosing a shaft made of graphite
fibers, and Akatsuka ‘396 was added for teaching the orientations of fiber layers recited
in claim 6. Be that as it may, neither of the secondary references overcomes the
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