Appeal No. 2002-1026 Page 3
Application No. 09/239,403
The appellants explain on page 9 of the specification that while skilled golfers
prefer a ball that exhibits high spin characteristics, so they can intentionally produce
back spin and side spin, such a ball is not desired by less skilled golfers. They also
point out that balls with high spin characteristics roll considerably less than those with
low spin characteristics. The appellants characterize their invention as an improved
multi-layer golf ball having one or more covers containing metal particles or other metal
filler materials to enhance the interior perimeter weight of the ball, which produces a
greater (higher) moment of inertia that results in less spin, reduced slicing and hooking,
and further distance (specification, page 1).
Claim 1 sets forth the invention in the following manner:
A multi-layer golf ball comprising a core, an inner cover layer and
an outer cover layer having a dimpled surface, wherein said core has a
diameter from 1.46 to 1.51 inches and a weight of 31-33 grams, an inner
cover layer having a thickness of from 0.045-0.055 inches, a weight, with
core, of 37-40 grams and an outer cover layer having a thickness of from
0.050-0.060 inches, and a weight, with core and inner core layer, of 45 to
46 grams.
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,
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