Appeal No. 2004-0242 Page 11
Application No. 09/873,594
Our Determination
In applying the test for obviousness6 we conclude that the teachings of Wu
clearly would have made it obvious at the time the invention was made to a person of
ordinary skill in the art to have modified Nesbitt's golf ball by using polyurethane as the
outer cover material to achieve the expected benefits therefrom taught by Wu (i.e., to
have the "click" and "feel" of balata; improved shear resistance and cut resistance;
durability; and resiliency). Thus, it would have been obvious to one skilled in the art to
have modified Nesbitt's three-piece golf ball having a spherical core, an inner layer of
type 1605 SurlynŽ and an outer layer of type 1855 SurlynŽ by replacing the type 1855
SurlynŽ in the outer layer with polyurethane as suggested and taught by Wu.
Therefore, the teachings of the applied prior art alone (i.e., without the use of
impermissible hindsight) are suggestive of the subject matter of independent claims 1, 7
and 13.
In view of our determination above we disagree with the appellant's argument
that the rejection under 35 U.S.C. § 103 is erroneous. While the appellant has correctly
pointed out the deficiencies of both Nesbitt and Wu on an individual basis,
nonobviousness cannot be established by attacking the references individually when
6 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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