Appeal No. 2003-1426 Page 3
Application No. 09/635,638
The appellants’ invention relates to multi-piece golf balls comprising a solid core
enclosed by inner and outer covers. According to the appellants, constructing such a
golf ball in accordance with the limitations recited in the claims causes it to have
improved flight performance, good spin characteristics, a pleasant feel, and improved
scraping resistance and durability when hit with a variety of golf clubs including woods,
irons and putters (specification pages 1-3; Brief, page 2). It is the examiner’s opinion
that the subject matter recited in all three of the independent claims, as well as the
claims depending therefrom, would have been obvious1 to one of ordinary skill in the art
in view of the combined teachings of Melvin and Moriyama. Although not included in
the statement of the rejection, the examiner has added to the teachings attributed to the
applied references Official Notice that (1) isocyanates and diisocyanates are commonly
known within the art as base components to produce polyurethanes and (2) thermo-
plastic resins are commonly used as adhesives to hold two surfaces together (Answer,
page 6).
1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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