Appeal 2007-1970
Application 10/167,744
Appellant as useful in adjusting coefficient of friction (Answer 7). (Findings
of Fact 2 and 3). Therefore, it is reasonable to conclude that it would have
been obvious to one of ordinary skill in the art to select an additive from
among those identified by Sullivan to achieve a desired property and thereby
obtain a golf ball which inherently has layers with the claimed coefficients
of friction. Accordingly, we find that the Examiner properly shifted the
burden to Appellant to establish that claims 1-10 patentably distinguish over
Sullivan’s golf ball.
Appellant argues that Sullivan fails to specifically disclose the recited
values for coefficient of friction, and that the Examiner is employing an
improper “obvious to try” rationale (Br. 15-18). However, it is well settled
that merely asserting that the prior art does not inherently achieve the
claimed properties does not satisfy the Appellant’s burden of overcoming
the Examiner’s prima facie showing of obviousness. See In re King,
801 F.2d 1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986). See also In
re Mayne, 104 F.3d 1339, 1343-44, 41 USPQ2d 1451, 1456 (Fed.Cir.1997);
In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
The rejection of claims 1-10 under 35 U.S.C. § 103(a) as obvious over
Sullivan is affirmed.
Appellants do not present any additional substantive arguments with
respect to the rejection of claim 11 under 35 U.S.C. § 103(a) as obvious over
Sullivan in view of Maruko. Accordingly, this rejection is also affirmed.
REMAND
It is not clear on this record whether the Examiner considered
obviousness as a basis for rejection of claims 19, 21-30, and 32-34.
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