Appeal No. 2002-1764 Page 4
Application No. 09/359,752
fiberglass such as thermoset “E” type fiberglass. Herber does not disclose any
additional layers on the shaft, with the exception of the handle 14.
Cosby discloses a golf club staff comprising a steel core 1 surrounded by a
textile covering 2, which is surrounded by a casing 3, preferably made of hard wood. A
body 4 made of bamboo, rattan or similar material is disposed about the casing 3. A
tubular grip 6 is pressed inwardly on ribs 5 on the body 4.
The examiner’s position is that it would have been obvious, in view of the
teachings of Herber and Cosby, to modify Okada to provide a solid core “to control the
flexibility of the sporting rod member” (final rejection, page 3). The examiner states on
page 4 of the answer that “[t]o one of ordinary skill in the art Cosby teaches a
combination of a solid core and wrapped cloth rod and with Herber’s teaching of the
solid core, Okada’s sporting rod is improved in its functionality.”
As stated by our reviewing court in In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old elements. Thus,
every element of a claimed invention may often be found in the prior art.
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. Rather,
to establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by the applicant [citations omitted].
Okada is specifically directed to a tubular sporting rod formed of a plurality of
prepreg layers particularly tailored to achieve the appropriate balance of flexibility and
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