Appeal No. 2006-2068
Application No. 09/854,693
burden is met does the burden of coming forward with evidence or argument shift to the
appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d
at 1472, 223 USPQ at 788. An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. “In reviewing the
[E]xaminer’s decision on appeal, the Board must necessarily weigh all of the evidence
and arguments.” Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444). In addition, our
reviewing court stated in In re Lee, 277 F.3d at 1343, 61 USPQ2d at 1433, that when
making an obviousness rejection based on a combination, “there must be some
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998)).
We do not find that the examiner has provided sufficient objective evidence to
show that one skilled in the art would have modified Yoshimasa such that the F/D ratio
of the balls would be between 24 and 31 as claimed. We do not consider appellant’s
specification and the disclosed criticality of the range to negate the need for evidence.
Appellant’s specification clearly demonstrates that at the time of filing of the invention
appellant considered the range of F/D ratio between 24-31 to be the most preferable of
those disclosed. The examiner carries the burden of providing objective evidence that a
golf ball with such a range would be obvious to one of ordinary skill in the art the time of
appellant’s invention. We do not find that the examiner has carried this burden and we
will not sustain the examiner’s rejection of claim 1 under 35 U.S.C. § 103.
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