Appeal 2007-1676
Application 10/439,183
4). According to the Examiner, it would have been prima facie obvious to a
person of ordinary skill in the art to replace Nishizawa’s tungsten metal
piece with Nakahara’s tungsten alloy metal piece (Answer 4).
The Examiner asserts that “it is clear that the appellant [sic] has not
invented the recited tungsten alloy” (id.). However, the Examiner fails to
direct our attention to any evidence on this record to support this assertion.
The Examiner admits that Nishizawa fails to teach the claimed tungsten
alloy. As for Nakahara, while the patent describes a tungsten alloy metal
piece for use as a weight in a golf club head (Nakahara, col. 3, ll. 2-4) the
patent fails to teach Appellants’ claimed tungsten alloy. According to
Nakahara, “[m]etal materials which are readily deformable when press-
deformed by a press or the like such as steel, nickel alloy . . ., and tungsten
alloy containing iron are usable for the weight. . .” (Nakahara, col. 3, ll. 37-
41). At best, Nakahara describes a tungsten alloy containing iron. Nakahara
does not speak to a tungsten alloy containing iron, copper, and nickel as is
required by Appellants’ claimed invention. Therefore, even if it would have
been prima facie obvious to substitute Nakahara’s metal piece for the metal
piece of Nishizawa, the evidence of record fails to teach the specific
tungsten alloy set forth in Appellants’ claimed invention.
The Examiner relies on Lee to teach that metals used in the fabrication
of golf club heads can be welded together (Answer 4). Lee does not,
however, teach Appellants’ claimed tungsten alloy. The Examiner
recognizes this fact in the rejection over the combination of Lee and Shira,
discussed below (Answer 5).
“In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
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