Appeal No. 2002-1924 Page 13
Application No. 09/102,342
The appellants arguments that the rejection ignores many features recited in each
of the claims under appeal and that for the examiner's inherency determination to be
proper any and all possible formulations according to Horiuchi must necessarily produce
a golf ball with a Shore D hardness of at least 65 are unconvincing for the rational
expressed in our treatment supra of the anticipation rejection based on Sullivan.
For the reasons set forth above, the decision of the examiner to reject claims 18
to 29 under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under
35 U.S.C. § 103 as obvious over Horiuchi is affirmed.
The obviousness rejection based on Shama and Horiuchi
We sustain the rejection of claims 18 to 29 and 33 to 37 under 35 U.S.C. § 103
as being unpatentable over Shama in view of Horiuchi.
In this rejection, the examiner set forth an analysis (answer, pp. 5-6) as to how
the subject matter of claims 18 to 29 and 33 to 37 were suggested by the combined
teachings of Shama and Horiuchi which analysis we incorporate as our own.
The appellants argue that (1) Shama does not disclose the claimed acid content
of the cover or the claimed Shore D hardness for the cover; (2) Horiuchi does not
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