Appeal No. 2004-1081
Application 10/041,836
under 35 U.S.C. § 103(a) as being unpatentable over Gibbs in view of Manley as applied to claims 1 and 20
above, and further in view of Florian.1,2
It is well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the applied
prior art taken as a whole and/or knowledge generally available to one of ordinary skill in this art would
have led that person to the claimed invention as a whole, including each and every limitation of the claims
arranged as required by the claims, without recourse to the teachings in appellant's disclosure. See
generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453.
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fritch, 972 F.2d 1260, 1265-66, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d
1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 19881. The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the references can be
combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002), and cases cited
therein.
We find that the examiner has not established a prima facie case of obviousness in any of the
grounds of rejection for the reasons that appellant sets forth in the brief and reply brief, to which we add the
following for emphasis.
The claimed golf swing training device encompassed by appealed claim 1, on which all other
appealed claims depend, comprises at least a plurality of club path indicators and a swing reference guide
comprising at least a plurality of shot selection types, such that the swing reference guide shows a plurality
of shot selection types for each club path indicator. We find no limitation in claim 1, and indeed, no
disclosure in the written description in the specification, specifying or permitting the selection of the club
path to be dependent on the club selected rather
than on the shot selected, and thus the plurality of club paths in the swing reference guide as claimed all
apply to any one club.
1 The rejected claims are all of the claims in the application. See the appendix to the brief.
2 Answer, pages 3-7.
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