Appeal No. 2004-0049 Page 7
Application No. 10/047,626
After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Nesbitt and claims 1, 19 and 20, it is our
opinion that the differences are: (1) the inner cover layer comprising a high acid
ionomer including at least 16 % by weight of an alpha, beta-unsaturated carboxylic acid
as recited in claim 1; (2) the inner cover layer comprising an ionomeric resin including at
least 16 % by weight of an alpha, beta-unsaturated carboxylic acid and having a
modulus of from about 15,000 to about 70,000 psi as recited in claim 19; and (3) the
inner cover layer comprising an ionomeric resin including about 17% to about 25% by
weight of an alpha, beta-unsaturated carboxylic acid as recited in claim 20.
In applying the test for obviousness,1 we reach the conclusion that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified the resinous material used for the inner cover of Nesbitt's golf ball to
be an ionomer resin containing about 20% alpha, beta-ethylenic unsaturated carboxylic
acid as suggested by the teachings of Horiuchi to improve the impact resilience of the
1 The test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
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