Appeal No. 2004-0099 Page 6
Application No. 09/388,663
speculation. The fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
case, we fail to perceive any teaching, suggestion or incentive in the applied references
which would have led one of ordinary skill in the art to modify the Davis 3 iron in the
manner proposed by the examiner, other than the hindsight afforded one who first
viewed the appellant’s disclosure. That, of course, is not a proper basis for a rejection.
In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that the combined teachings of Davis, Kobayashi
and Muldoon fail to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 22, and we will not sustain the rejection.
Independent claims 25, 26, 27 and 28 also are directed to single clubs. In
rejecting each of these claims, the examiner has referred to an iron in Davis’ Table I,
has admitted that Davis fails to disclose or teach the claimed metal wood head and the
specified loft and lie, and has looked to Kobayashi for the suggestion to substitute a
metal wood head and to Muldoon for the teaching of changing the loft and lie to those
specified in the claim in order to customize clubs for a particular golfer. For the reasons
expressed above in our refusal to sustain the rejection of claim 22, we do not agree with
the examiner that one of ordinary skill in the art would have been motivated to modify
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