Appeal No. 2006-0241
Application No. 10/208,870
page 4). The examiner does not support that argument with evidence. The examiner
relies upon mere speculation, and such speculation is not a sufficient
basis for a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360,
364 (CCPA 1962).
The examiner argues that “the court found that matters related to ornamentation
only which have no mechanical function cannot be relied upon to patentably distinguish the
claimed invention from the prior art. See In re Seid, 161,[sic] F.2d 229, 73 USPQ 431
(CCPA 1947)” (answer, page 4). The court subsequently stated that “[n]ecessarily it is
facts appearing in the record, rather than prior decisions in and of themselves, which must
support the legal conclusion of obviousness under 35 USC 103.” In re Cofer, 354 F.2d
664, 667, 148 USPQ 268, 271 (CCPA 1966). The examiner has not explained how the
applied references themselves would have fairly suggested, to one of ordinary skill in the
art, a golf club head with a metallic surface having thereon a
multilayer coating through which the metallic surface is visible.
We therefore conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellant’s claimed invention over Leon and the references applied
therewith.
Rejection over Meckel in view of
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