Appeal No. 2002-1026 Page 4
Application No. 09/239,403
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 appellant's 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).
The examiner concluded that the subject matter in claim 1 would have been
obvious in view of Yabuki. In arriving at this decision, the examiner pointed out that all
of the claimed ranges either overlap or, in the case of the core weight, are so close as
to have been modified by one of ordinary skill in the art “for the purpose of improving
controllability and carry” (Paper No. 11, page 3). The appellants urge that there is no
evidence to support the examiner’s position, arguing that the purpose in the claimed
invention is to increase the moment of inertia of the ball to reduce the spin rate, while
that of Yabuki is the opposite, and therefore no suggestion exists to select values from
the Yabuki ranges which would fall within those specified in the claim.
We agree with the appellant that Yabuki teaches away from the appellants’
invention. Yabuki states that the objective the invention is to achieve “great carry and
good controllability” (column 1, lines 29-31). To accomplish these goals, the specific
gravity of the outer core is reduced, as is the weight of the outer cover, to reduce the
moment of inertia, which allows the ball to spin and loft more (see column 1, lines 40-
45). This is the opposite of the appellants’ construction, where the specific gravity of
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