Appeal 2007-2315
Application 10/095,265
We also do not find it persuasive that Mr. Loesch has “not seen an
iron or wood type golf club having an elongated grip of greater than 15
inches” (Declaration of Loesch 2: § 5). The prior art constitutes all that was
available prior to the effective date of the application, not just what was
commercially offered. There may be many reasons for not bringing a
product to market, unrelated to its effectiveness or value. Our task is to
determine what is obvious from the prior art – not to determine why a
particular item which is suggested by the prior art is not commercially sold.
As pointed out by the Examiner (Answer 12-13), lengthening the grip of the
club is the same strategy utilized by Herber with the same expected result.
Appellant also appears to suggest that USGA rules teaches away from
combining Curry with Heber and Gedeon (Declaration of Loesch 3: ¶ 8).
We are in complete agreement with the Examiner’s succinct and proper
response:
[P]atentability is not limited at all by the USGA rules of golf.
There are many clubs being invented and used on golf courses
which do not meet the USGA rules of golf or designed as such.
As such[,] patentability of inventions of golf clubs are not
evaluated based on the USGA rules of golf.
(Answer 14).
For the foregoing reasons, we affirm the rejection of claim 8. Claims
9, 15, 26, and 27 fall with claim 8 because they were not separately argued.
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013