Appeal No. 2003-1695 4
Application No. 09/771,072
motivation to combine the references in either of the above statements and accordingly, we
decline to sustain the examiner’s position on the record before us.
Scanlan is directed to a filler cover for golf holes. See column 1, lines 1-2. The
golf hole fillers may be in the form of a cylindrical metallic body as illustrated in Figure 1,
column 2, lines 51-58. We find that the cups are closed by the filler covers. See column
2, lines 96-97. In a second embodiment, a cylindrical block of wood having an outer
diameter substantially equal to that of the opening in the golf hole completely fills the hole.
See Figures 5 and 6, page 1, column 1, lines 24-36. The structures of Scanlan’s filler
covers are complete in and of themselves. They completely fill a golf hole and cover it.
There is no need to modify the structure of Scanlan by providing a cover to a structure
that already completely fills a golf hole and functions as a cover for the golf hole.
Accordingly, there is no reason or motivation to combine Scanlan with Van Holt.
As for considering the merits of the “other” as proposed by the examiner, in our
view the combination of an insert and a cover mount as suggested by the examiner is found
only in the specification before us. Based upon the above finding and analysis, we conclude
that the examiner has not established a prima facie case of obviousness with respect to the
aforesaid set of claims. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999) ("[T]he best defense against the subtle but powerful attraction of
a hindsight-based obviousness analysis is rigorous application of the requirement for a
showing of the teaching or motivation to combine prior art references").
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