Appeal 2007-1676
Application 10/439,183
The Examiner finds that Lee does not teach Appellants’ claimed
tungsten alloy (Answer 5). The Examiner makes no findings with regard to
the alloys taught by Shira. We find that while Shira mentions a “tungsten-
rich alloy” (Shira, col. 3, l. 49), Shira fails to teach the tungsten alloy set
forth in Appellants’ claimed invention. Nevertheless, the Examiner asserts
that “[t]he selection of a suitable material, in this case a suitable tungsten
alloy, would have been obvious to one of ordinary skill in the art in order to
take advantage of the increase in specific gravity over the material that is
selected from the shell of the club body.” What is missing, however, is any
evidence to suggest that the tungsten alloy recited in Appellants’ claimed
invention was known or obvious in the art at the time of Appellants’ claimed
invention.
For the foregoing reasons we find that the Examiner failed to meet his
burden of establishing prima facie case of obviousness. Accordingly, we
reverse the rejection of claims 11 and 14-16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Lee and Shira.
CONCLUSION
In summary, we reverse all grounds of rejection.
REVERSED
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