Appeal No. 2005-1116 Page 10
Application No. 10/077,148
Shore D hardness of about 58 or more; a ball having a PGA compression of 80 or less;
and a ball having a coefficient of restitution of at least 0.780), the examiner has not
applied that prior art in the rejection under appeal. Moreover, 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
appellants. 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). In this
case, the examiner has not even alleged that the prior art discloses a single golf ball
having a solid core with a PGA compression of 55 or less; an outer cover layer having a
Shore D hardness of about 58 or more; the golf ball having a PGA compression of 80 or
less; and the golf ball having a coefficient of restitution of at least 0.780.
For the reasons set forth above, the decision of the examiner to reject claims 38
to 42, 44 to 49 and 51 to 57 under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) is
reversed.
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