Appeal No. 2004-0099 Page 4
Application No. 09/388,663
Claim 22, which is directed to a single club, recites the invention in the following
manner:
A golf club metal wood having a shaft
approximately 38.5 inches in length, a club
head weight of approximately 259 to 279
grams, a loft of approximately 17 degrees and
a lie of approximately 60 degrees.3
Claim 22 stands rejected as being obvious4 in view of the combined teachings of
Davis, Kobayashi and Muldoon. In arriving at this conclusion and with particular
reference to Table I, the examiner has found that Davis discloses all of the subject
matter recited in the claim except for the metal wood head and the specified amount of
loft and lie. The examiner relies upon the teachings of Kobayashi as the basis for
concluding it would have been obvious to one of ordinary skill in the art to modify the
Davis irons by replacing the blade heads with iron wood heads, and upon those of
Muldoon for concluding it would have been obvious to further modify the Davis irons by
3“Loft” is the angle made by the face of the club head when grounded and “lie” is the angle of the
shaft relative to the ground when the club head is grounded (specification, pages 1 and 2).
4The 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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