Appeal No. 2003-1937
Application No. 09/522,296
parts, we see no basis whatsoever for any such pigeonhole
approach in this case, and remind the examiner that the mere fact
that some prior art reference may be modified in the manner
suggested by the examiner does not make such a modification
obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir 1984). Here, the prior art relied upon by
the examiner contains no such suggestion and the examiner is
merely relying on speculation and conjecture alone to support the
rejection.
Since we have determined that the teachings and suggestions
found in Mockridge, Take, Helmstetter and Drajan, as applied by
the examiner, would not have made the golf club head of claims 1,
6 through 12, 14, 15, 18, 28 and 29 on appeal obvious to one of
ordinary skill in the art at the time of appellants' invention,
we must refuse to sustain the examiner's rejection of those
claims under 35 U.S.C. § 103(a).
As for the examiner's rejection of claims 1, 13, 20 and 21
under 35 U.S.C. § 103(a) as being unpatentable over Mockridge in
view of Take, Helmstetter, Drajan and Minabe; that of claims 2
99
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