Appeal No. 2002-1924 Page 14
Application No. 09/102,342
disclose the claimed Shore D hardness for the cover; and (3) that there is no motivation
in the applied prior art to combine the teachings of Shama and Horiuchi.
As to the argued deficiencies of each reference on an individual basis, it is well-
established that nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art disclosures.
See In re Merck & Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Furthermore, it is clear to us that Shama's teaching (column 3, lines 55-57) that the
cover composition of the golf ball of this invention may be any conventional composition
suitable for covering golf balls provides ample motivation for a person of ordinary skill in
the art at the time the invention was made to have used Horiuchi's high acid ionomer
cover materials as Shama's ionomer cover. Moreover, Horiuchi does inherently
disclose the claimed Shore D hardness for the cover for the reasons set forth above.
The appellants further argue that the claims at issue are directed to a low spin
golf ball and that Shama teaches away from such a ball. We do not agree. We first
note that only claims 34 to 36 are directed to a low spin golf ball. Second, we consider
Shama's golf ball to be a low spin golf since the results in Table B in column 7 indicate
the ball has less spin and, therefore, inferior green gripping ability than a three piece
golf ball.
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