Appeal No. 2003-0560 Page 4
Application No. 09/472,893
Appellants (brief, pages 7 and 8) argue that claims 1, 7 and 8 are patentable
over Higuchi because Higuchi fails to disclose the intermediate layer hardness range of
88 to 100 JIS-C called for in appellants’ claims and, further, that Higuchi teaches away1
from the claimed range. We find this argument persuasive with regard to claim 1, as
well as claim 7 which depends therefrom. Specifically, in light of Higuchi’s teaching that
“[i]f the inner cover layer hardness exceeds 57 degrees [86 JIS-C], the ball would offer
a rather hard feel,” (Higuchi, column 3, lines 1-3) we agree with appellants that one of
ordinary skill in the art would not have been led to modify the inner layer to have a
hardness exceeding 86 JIS-C. It thus follows that we shall not sustain the examiner’s
rejection of claim 1 or claim 7 which depends from claim 1.
We do not, however, find this argument persuasive with regard to claim 8,
because claim 8 does not recite that the hardness of the intermediate layer is 88 to 100
JIS-C. In that this is the only argument offered in appellants’ brief as to the patentability
of claim 8, we shall summarily sustain the examiner’s rejection of claim 8.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 7 and 8 under 35
U.S.C. § 103 is affirmed as to claim 8 and reversed as to claims 1 and 7.
1 Our reviewing court in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)
stated that “[a] reference may be said to teach away when a person of ordinary skill, upon [examining] the
reference, would be discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.”
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