Appeal No. 2002-1026 Page 6
Application No. 09/239,403
provide the calculations so that the broadest range is presented. However, in the
examples given in the reference the Yabuki ranges do not overlap those of the claim
(see footnote 1). Yabuki’s range for the thickness of the outer cover also overlaps by
about 10% of its value at its lower end with the range specified in the claim. Only the
weight of the core and inner cover, and the total weight of the ball, fall within the values
recited in the claim, in which case these two factors would meet the terms of the claim
no matter what value was used.
The issue here is whether one of ordinary skill in the art would have been
motivated by Yabuki to select a core diameter from only the upper 2.7% of Yabuki’s
range and to utilize for core weight a value not even included in Yabuki’s disclosed
range, as well as to select an inner cover thickness from the lower 1% of Yabuki’s
range and an outer cover thickness from the lower 10% of Yabuki’s range, in order to
meet the terms of claim 1. We think not. Because the teachings of Yabuki are directed
to providing a golf ball having the opposite objective than the claimed ball with regard to
moment of inertia in order to achieve the opposite playing characteristics, 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 inside and outside the ranges
disclosed by Yabuki 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
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