Appeal 2007-1970
Application 10/167,744
ANALYSIS AND CONCLUSIONS
I. Anticipation Rejections - Has the Examiner made sufficient factual
findings to establish that each and every claim limitation is found either
expressly or inherently in Sullivan?
A reference is anticipatory within the meaning of § 102 if it discloses
each and every claim limitation either expressly or inherently. In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950 (Fed. Cir. 1999); In
re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
In the present case, the Examiner attempts to establish anticipation of claims
1-10, 19, 21-30, and 32-34 by identifying portions of Sullivan which teach
the individual components of Appellant’s claimed golf ball. The Examiner
does not, however, direct us to a single working embodiment of a golf ball
which includes all of the features recited in any one of the independent
claims. See Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000, 78
USPQ2d 1417, 1424 (Fed. Cir. 2006) (the question is whether the prior art
describes the claimed subject matter, or something falling within the claim,
with sufficient specificity to anticipate the claim). At best, the referenced
portions of Sullivan provide guidelines for selection of appropriate materials
for use in the inner and outer layers of a golf ball. Therefore, we find that
the Examiner has failed to establish a prima facie case of anticipation. The
rejections of claims 1-10, 19, 21-30, and 32-34 as anticipated by Sullivan are
reversed.
II. Obviousness Rejections - Has the Examiner provided a reasonable
basis to conclude that one of ordinary skill in the art would have been
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