Appeal No. 2004-0242 Page 10
Application No. 09/873,594
would have been obvious to one skilled in the art to have modified Nesbitt's golf ball by
using polyurethane as the outer cover material to increase the durability of the golf ball.
The appellant's argument
The appellant argues (brief, pp. 4-7) that the rejection under 35 U.S.C. § 103 is
erroneous since the applied prior art, absent the use of impermissible hindsight4, does
not suggest the subject matter of independent claims 1, 7 and 13. In the appellant's
view there is no motivation5 in the applied prior art that would have made it obvious to
one of ordinary skill in the art to have modified the golf ball of Nesbitt to arrive at the
subject matter of independent claims 1, 7 and 13.
4 The use of hindsight knowledge derived from the appellant's own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
5 Most if not all inventions arise from a combination of old elements. See In re Rouffet, 149 F.3d
1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every element of a claimed invention may
often be found in the prior art. See id. However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed invention. See id. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination that was made by
the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
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