Appeal No. 2001-2609 Page 4
Application No. 09/040,798
reaction molding process, since such is an obvious expedient for providing the desired
resiliency in a golf ball, as illustrated by [Molitor]."
The appellants argue (brief, pp. 6-7) that there is no motivation to combine
Melvin or Cavallaro, which teach golf balls, with Molitor, which teaches golf clubs,
absent the use of impermissible hindsight. The appellants point out (reply brief, p. 3)
that "[t]here is absolutely no teaching from the cited references [i.e., Melvin, Cavallaro
and Molitor] of using a RIM [reaction injection molding] technique for manufacturing a
golf ball." We agree. In fact, the references to Melvin and Cavallaro specially teach to
manufacture their golf balls using conventional techniques such as non-reaction
injection molding or compression molding.
Obviousness is tested by "what the combined teachings of the references would
have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the
teachings of the prior art to produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of references
can be combined only if there is some suggestion or incentive to do so." Id. Here, the
applied prior art (i.e., Melvin, Cavallaro and Molitor) contains none. In our view, the only
suggestion for modifying either Melvin or Cavallaro in the manner proposed by the
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