Appeal 2007-1970
Application 10/167,744
motivated to select materials for the inner and outer cover layers such that
the resultant golf ball would have the claimed features?
Where patentability rests upon a property of a claimed material not
disclosed within the art, the PTO has no reasonable method of determining
whether there is, in fact, a patentable difference between the prior art
materials and the claimed material. Thus, the PTO can properly require an
applicant to prove that the prior art product does not necessarily possess the
characteristics of the claimed product. In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255-
56, 195 USPQ 430, 433 (CCPA 1977).
The Examiner found that Sullivan discloses a golf ball comprising a
core, an inner cover layer formed from a first composition, and an outer
cover layer formed from a second composition (Answer 6). The Examiner
concluded that because Sullivan utilizes the same materials and
manufacturing methods as those of Appellant, Sullivan’s golf ball would
inherently have the properties recited in claims 1-10 (Answer 7). The
Examiner further determined that it would have been a matter of routine
optimization to select materials which would achieve specific differences in
coefficient of friction between the layers (Answer 7).
Sullivan specifically discloses two examples of golf balls in which the
compositions of the inner and outer cover layers differ only in the presence
of additives and fillers in the outer cover layer. (Finding of Fact 5). The
inner and outer cover layers have the same Shore D hardness. Sullivan
identifies additives useful for imparting flexural changes, etc. to a golf ball.
(Findings of Fact 6 and 7). Some of these same additives are described by
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