Ex Parte Sullivan - Page 9

               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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