Appeal No. 2004-1225
Application No. 09/840,312
page 5. Appellants argue that Wu does not teach that each layer
has a Shore D hardness of less than 60. Brief, page 6.
Beginning on page 5 of the answer, the examiner finds that
Wu discloses that the intermediate layer and/or cover layers of
the golf ball of Wu is formed of a polyurethane composition. The
examiner refers to column 6, lines 54-58. Appellants do not
dispute that Wu discloses that the intermediate and cover layers
are formed of a polyurethane composition. Brief, page 5. In
fact, as pointed out by the examiner, Wu discloses example cover
layers as having Shore D hardness values of 52, 54, and 55 (Table
2 of Wu). Answer, pages 3-4.
We note that it is well settled that the Patent and
Trademark Office can require appellants to prove that a function
or property relied upon for novelty is not possessed by prior art
compounds otherwise meeting the limitations of the claims. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Here, each of claims 1, 14, and 27 recite that the first
cover layer comprises a majority portion by weight of a
composition selected from the group consisting of polyurethane,
polyureas and blends thereof. Claim 1 additionally requires that
the second outermost layer comprises a majority proportion by
weight of a polyurethane. Claim 27 requires that the second
outermost cover layer comprises a majority proportion by weight
of a composition selected from the group consisting of
polyurethane, polyureas and blends thereof. Hence, the claims do
not differ from Wu’s disclosed polyurethane composition. Thus,
it is appellants’ burden to show that the property of Shore D
hardness of less than 60 is not possessed by Wu. Id. We need
not evaluate Wu’s examples or tables in making this
determination. In this context, we note that a reference is not
limited to its examples, but is available for all that it fairly
discloses and suggests. See In re Widmer, 353 F.2d 752, 757,
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