Appeal No. 2004-0919 Page 8
Application No. 09/842,607
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
The appellants argue (brief, pp. 5-6) that Saito does not teach each and every
element of the golf ball of independent claims 11 and 25. Specifically, the appellants
assert that the claimed PGA compression of less than 85 of the multi-layer core
assembly is not an inherent feature of Saito.1
In the answer, the examiner (pp. 4-5) stated that since the appellants have not
argued the limitations in claim 11 it was assumed that the appellants fully agree with the
rejection.2 The examiner then provided (answer, p. 5) a detailed explanation as to why
the limitation found in only claim 25 that the multi-layer core assembly exhibits a PGA
compression of less than 85 is inherently met by Saito.3
1 Independent claim 25 recites that the multi-layer core assembly exhibits a PGA compression of
less than 85. Independent claim 11 does not recite this feature. Accordingly, the appellants have not
particularly pointed out how the subject matter of claim 11 distinguishes over the teachings of Saito.
2 The appellants did not file a reply brief to contest this assumption.
3 The appellants did not file a reply brief to explain why the examiner's detailed explanation as to
why the limitation that the multi-layer core assembly exhibits a PGA compression of less than 85 is not
inherently met by Saito.
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