Appeal No. 2000-0082
Application No. 08/745,472
may vary depending on the requirements of the user
of the club head 10.
It is not clear to us that this disclosure of Simmons would
have suggested to one of ordinary skill that weight 40 may
have a different mass than weight 41; but even if it would
have done so, we find no motivation in Simmons, Mendenhall or
Finney for making the mass of the distal weight 41 less than
the mass of the proximal weight 40.
It is well settled that a rejection must be supported by
evidence of an asserted suggestion, teaching or motivation.
See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). The fact that the prior art could be
modified to produce the claimed structure would not have made
the modification obvious unless the prior art suggested the
desirability of the modification. In re Laskowski, 871 F.2d
115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989). In the
present case, the examiner's statement, underlined above, to
the effect that golfers who allow the face of the putter head
to close add weight to the heel of the head, is not supported
by any evidence, as appellant argues on page 3 of the reply
brief. If anything, the position of the weight 30 in the
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