Appeal No. 2006-2068
Application No. 09/854,693
Appellant states, on pages 10 and 11 of the brief, that Yoshimasa teaches a two-
piece golf ball, which floats. However, appellant argues, Yoshimasa does not teach or
suggest a two piece golf ball where the ratio of flexural modulus of the golf ball cover (F)
to the deformation of the golf ball (D) is within the range of 24 to 31.
In response the examiner states that Yoshimasa teaches a floating golf ball, which
has all of the claimed characteristics except teaching the claimed range for the F/D ratio.
See page 3 and table on page 4 of the Answer. On page 5 of the answer, the examiner
further states:
The question before the BPAl is whether or not the ratio (F/D) from 24 to 31 is an
obvious modification of the range 36 to 98 (Yoshimasa). And whether or not the
claimed range from 24 to 31 is critical to the invention. Appellant's claimed range
from 24-31 is not shown to be critical to the invention. Attention is directed to
pages 6 - 7 of the instant specification, which recites, "When the ratio (F/D) is
larger than 50, only the cover is too hard and stress applied to the core is large,
and the core is easily cut ... ... Therefore it is desired for the F/D ratio to be within
the range of not more than 50, .....". Page 7 of the specification further recites,
"When the ratio (F/D) is too small, the cover is soft, and the durability of the
cover is degraded. Therefore it is desired for the ratio (F/D) to be within the range
of not less than 15, ...". Appellant's specification makes clear the critical range
necessary for the instant invention to perform properly is from 15 to 50.
We disagree with the examiner’s rationale. Initially, we note pages 6 and 7 of
appellant’s specification, state that the most preferable upper and lower range for the F/D
ratio are 31 and 24, thus we consider the desirability of the range to be established by the
appellant’s specification. In rejecting claims under 35 U.S.C. § 103 (a), the examiner
bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The examiner can satisfy
this burden by showing that some objective teaching in the prior art or knowledge
generally available to one of ordinary skill in the art suggests the claimed subject matter.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this
initial
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