2021000462 (P.T.A.B. Aug. 24, 2021)

DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals BoardAug 24, 2021

2021000462 (P.T.A.B. Aug. 24, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/814,037 11/15/2017 Takahiro SAJIMA 3673-0630PUS1 1741 2292 7590 08/24/2021 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/24/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TAKAHIRO SAJIMA and HIRONORI TAKIHARA ____________ Appeal 2021-000462 Application 15/814,037 Technology Center 3700 ____________ Before STEFAN STAICOVICI, WILLIAM A. CAPP, and LISA M. GUIJT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Feb. 10, 2020, hereinafter “Final Act.”) rejecting claims 1, 2, and 9–14 under 35 U.S.C. § 103 as being 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. SUMITOMO RUBBER INDUSTRIES, LTD. is identified as the real party in interest in Appellant’s Appeal Brief (filed July 8, 2020, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2021-000462 Application 15/814,037 2 unpatentable over Yamaguchi,2 Maruoka,3 and Watanabe.4,5 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM, and denominate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention is directed “to golf balls including a core and a cover.” Spec. 1, ll. 12–13. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A golf ball comprising a solid core and a cover positioned outside the core, wherein the core has a diameter of not less than 38.5 mm and not greater than 41.5 mm; the core central point has a Shore C hardness Ho that is not less than 55 and not greater than 80; the core surface Shore C hardness Hs is not less than 75 and not greater than 97; the hardness Hs is greater than the hardness Ho by a difference (Hs - Ho) that is not less than 15 and not greater than 35; the cover has a thickness Tc of not less than 0.80 mm and not greater than 2.10 mm; the cover has a Shore D hardness Hc of not less than 54 and not greater than 63; 2 Yamaguchi et al., US 6,123,629, issued Sept. 26, 2000. 3 Maruoka et al., US 6,589,124 Bl, issued July 8, 2003. 4 Watanabe, US 2001/0031673 Al, published Oct. 18, 2001. 5 Claims 3–8 are canceled. Appeal Br., Claims App. 1. Appeal 2021-000462 Application 15/814,037 3 if a secondary natural frequency of the golf ball is FB2 and a secondary natural frequency of the core is FC2, a difference (FB2 - FC2) is not less than 80 Hz and not greater than 420 Hz, FC2 is not less than 1800 Hz and not greater than 2500 Hz, and FB2 is not less than 2000 Hz and not greater than 2800 Hz; the core compressive deformation amount Dc is not less than 2.30 mm and not greater than 3.90 mm, the compressive deformation amount being obtained by applying an initial load of 98 N in a first state up to applying a final load of 1274 N in a final state; and the golf ball compressive deformation amount Db is not less than 1.80 mm and not greater than 3.30 mm, the compressive deformation amount being obtained by applying an initial load of 98N in a first state up to applying a final load of 1274N in a final state. Appeal Br., Claims App. 1. ANALYSIS Claim 1 The Examiner finds Yamaguchi discloses a golf ball including, inter alia, a cover and a solid core, wherein the cover has a thickness in the range of 1 to 5 mm and the core has a diameter in the range of 32.7 to 40.7 mm and exhibits a core secondary natural frequency FC2 in the range of 900 to 2400 Hz, i.e., 2000 Hz. Final Act. 3 (citing Yamaguchi, col. 3, ll. 29–42, Fig. 1); see also Yamaguchi, Table 2 (golf ball numbers 8–11 exhibiting core secondary natural frequencies of 1950, 2050, 2200, and 2400 Hz). The Examiner further finds that Yamaguchi’s golf ball “would inherently have some second natural frequency” and that Maruoka discloses a golf ball exhibiting a secondary natural frequency FB2 in the range of 2000 to 5000 Appeal 2021-000462 Application 15/814,037 4 Hz, i.e., 2400 Hz. Final Act. 3 (citing Maruoka, col. 4, ll. 7–13). Thus, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to modify Yamaguchi to use a second natural frequency of 2000 to 5000 Hz as taught by Maruoka . . . because doing so would be use of a known technique (using a secondary frequency of a golf ball between 2000 and 5000 Hz, namely 2400 Hz) to improve a similar product (a two-piece golf ball having a core secondary natural frequency of 2000 Hz) in the same way (using a secondary frequency of a two-piece golf ball of 2400 Hz so that the ball is not too hard and also has sufficient rebound ability . . . ). Id. at 3–4 (citing Maruoka, col. 4, ll. 7–13). According to the Examiner, the golf ball of Yamaguchi, as modified by Maruoka, exhibits a frequency difference FB2 - FC2 = 2400 - 2000 = 400 Hz which is “a value within applicant’s claimed range.” Id. at 3. The Examiner further finds that the core of Yamaguchi’s two-piece golf ball “would inherently have some hardness and compression values” and that Watanabe discloses a two-piece golf ball having the following properties: (1) a core central point hardness Ho in the range of 50 to 70 Shore C (see Final Act. 4 (citing Watanabe, para. 21));6 (2) a core surface hardness Hs in the range of 78 to 92 Shore C (see id.); 6 Relying on column 3, lines 36–40 of US 5,697,856, issued on Dec. 16, 1997 to Moriyama et al., the Examiner explains that Watanabe’s JIS-C hardness is equivalent to Shore C hardness. See Final Act. 4. Appeal 2021-000462 Application 15/814,037 5 (3) a core hardness difference Hs - Ho in the range of 20 to 30 units (see id. at 4–5 (citing Watanabe, para. 22)); (4) a cover hardness Hc in the range of 40 to 55 Shore D (see id. at 5 (citing Watanabe, para. 28); (5) a core compressive deformation Dc in the range 2.4 to 3.5 mm (see id. (citing Watanabe, para. 23)); (6) a golf ball compressive deformation Db in the range 2.2 to 3.5 mm (see id. (citing Watanabe, para. 30)); and (7) wherein the compressive deformations Dc and Db are obtained by applying an initial load of 98 N and a final load of 1274 N (see id. (citing Watanabe, para. 23)). Hence, the Examiner further determines that it would have been obvious to a skilled artisan to modify the combined Yamaguchi and Maruoka to use the above . . . [noted] golf ball hardness and compression attributes as taught by Watanabe because doing so would be use of a known technique (using known an[d] workable compression values and hardness values for a two piece golf ball) to improve a similar product (a two piece golf ball having inherent compression and hardness values, the golf ball also focused on natural frequency) in the same way (using known and workable hardness and compression values allowing for appropriate durability, feel, spin, and rebound in the two piece ball[)]. Final Act. 5 (citing Watanabe, paras. 22, 23, and 28). Appellant argues that: (1) Yamaguchi fails to disclose a golf ball having a ball secondary natural frequency range FB2 in the claimed range Appeal 2021-000462 Application 15/814,037 6 of 2000 to 2800 Hz and the claimed hardness and compression ranges (Appeal Br. 7–8); (2) Maruoka fails to disclose a solid core golf ball having a core secondary natural frequency FC2 range in the range of 1800 to 2500 Hz and the claimed hardness and compression ranges (id. at 9); (3) Watanabe fails to disclose a golf ball having a ball secondary natural frequency range FB2 in the range of 2000 to 2800 Hz and a core secondary natural frequency FC2 range in the range of 1800 to 2500 Hz (id. at 11); and (4) neither Yamaguchi, Maruoka, nor Watanabe discloses the claimed FB2-FC2 difference in the range of 80 to 420 Hz (id. at 7, 9, and 11). We are not persuaded by Appellant’s arguments because “[n]on- obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Each reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Yamaguchi’s core diameter of 32.7 to 40.7 mm encompasses the claimed range of 38.5 to 41.5 mm and the core secondary natural frequency FC2 range of 900 to 2400 Hz partially encompasses the claimed range of 1800 to 2500 Hz. See Yamaguchi, col. 3, ll. 29–42, col. 5, ll. 9–10, Table 2). Maruoka’s golf ball secondary natural frequency FB2 range of 2000 to 5000 Hz encompasses the claimed range of 2000 to 2800 Hz. See Maruoka, col. 4, ll. 7–13. Watanabe’s core central point hardness Ho of 50 to 70 Shore C, core surface Appeal 2021-000462 Application 15/814,037 7 hardness Hs of 78 to 92 Shore C, core hardness difference Hs-Ho of 20 to 30 units, and golf ball cover hardness Hc of 40 to 55 Shore D, partially encompass the claimed ranges of 55 to 80 Shore C, 75 to 97 Shore C, 15 to 35 units, and 54 to 63 Shore D, respectively. See Watanabe, paras. 21, 22, 28. Furthermore, Watanabe’s core compressive deformation Dc of 2.4 to 3.5 mm and golf ball compressive deformation Db of 2.2 to 3.5 mm likewise partially encompass the claimed ranges of 2.3 to 3.9 mm and 1.8 to 3.3 mm, respectively. See id. at paras. 22, 30. We appreciate that the disclosed ranges partially encompass the claimed ranges; however, if the relevant comparison between disputed claim limitations and the prior art pertains to a range of overlapping values, the Federal Circuit has “consistently held that even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Hence, Yamaguchi’s solid core golf ball, as modified by Maruoko and Watanabe, will have the following properties: 1. a solid core diameter in the range of 32.7 to 40.7 mm (as per Yamaguchi), which partially encompasses the claimed range of 38.5 to 41.5 mm; 2. a core secondary natural frequency FC2 in the range of 900 to 2400 Hz (as per Yamaguchi), which partially encompasses the claimed range of 1800 to 2500 Hz; 3. a ball secondary natural frequency FB2 in the range of 2000 to 5000 Hz (as per Maruoka), which encompasses the claimed range of 2000 to 2800 Hz; Appeal 2021-000462 Application 15/814,037 8 4. a core central point hardness Ho in the range of 50 to 70 Shore C (as per Watanabe), which partially encompasses the claimed range 55 to 80 Shore C; 5. a core surface hardness Hs of 78 to 92 Shore C (as per Watanabe), which partially encompasses the claimed range 75 to 97 Shore C; 6. a core hardness difference Hs-Ho of 20 to 30 units (as per Watanabe), which partially encompasses the claimed range 15 to 35 units; 7. a golf ball cover hardness Hc of 40 to 55 Shore D (as per Watanabe), which partially encompasses the claimed range of 54 to 63 Shore D; 8. a core compressive deformation Dc of 2.4 to 3.5 mm (as per Watanabe), which partially encompasses the claimed range of 2.3 to 3.9 mm. 9. a golf ball compressive deformation Db of 2.2 to 3.5 mm (as per Watanabe), which partially encompasses the claimed range of 1.8 to 3.3 mm; 10. wherein the core compressive deformation Dc and the golf ball compressive deformation Db are determined by applying an initial load of 98 N and a final load of 1274 N (as per Watanabe); and 11. as per the Examiner’s example, employing simple arithmetic operations, a skilled artisan would readily calculate the difference FB2-FC2 of Yamaguchi’s solid core golf ball, as modified by Appeal 2021-000462 Application 15/814,037 9 Maruoko and Watanabe, to be 400 Hz, when considering FB2 to be 2400 Hz and FC2 is 2000 Hz.7 See Final Act. 3. Furthermore, we appreciate Appellant’s position that Yamaguchi discloses a cover hardness Hc of 68 Shore D, whereas Watanabe discloses “that a hardness above 55 Shore D results in disadvantageous feel and spin properties.” Appeal Br. 12. However, merely pointing out such a difference does not explain the Examiner’s reasoning for combining the teachings of Yamaguchi and Watanabe, namely, “to improve a similar product . . . in the same way . . . allowing for appropriate durability, feel, spin, and rebound in the two piece ball,” is erroneous. Final Act. 5. As Watanabe specifically discloses that having a golf ball cover hardness Hc in the range of 40 to 55 Shore D is advantageous, a skilled artisan would desire to modify Yamaguchi’s golf ball to obtain the same advantages. Thus, the Examiner’s modification is an improvement to Yamaguchi’s golf ball to have a cover hardness in the range of 40 to 55 Shore D in the same way as taught by Watanabe to lead to a predictable result, and the modification is well within the skill of one having ordinary skill in this art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant further argues that because Maruoka’s secondary natural frequency corresponds to that of a hollow core golf ball, whereas the golf 7 A ball secondary natural frequency FB2 of 2400 Hz is within Maruoka’s disclosed range of 2000–5000 Hz and a core secondary natural frequency FC2 of 2000 Hz is within Yamaguchi’s disclosed range of 900–2400 Hz. Appeal 2021-000462 Application 15/814,037 10 balls of both Yamaguchi and Watanabe have solid cores, a skilled artisan would not look to Maruoka’s hollow core golf ball to further modify the solid core golf ball of Yamaguchi, as modified by Watanabe. Appeal Br. 10. Thus, according to Appellant, the Examiner’s combination is based on impermissible hindsight reconstruction. Id. We are not persuaded by Appellant’s argument that the Examiner’s determination of obviousness is based on impermissible hindsight reconstruction. Rather, the Examiner’s modification is an improvement to Yamaguchi’s solid core golf ball to provide Maruoka’s secondary natural frequency FB2 in the range of 2000 to 5000 Hz because Maruoka specifically discloses that, in general, “the secondary natural frequency . . . is closely connected with shot feel of golf balls” and, moreover, a frequency range of 2000 to 5000 Hz provides for an optimum shot feel. See Maruoko, col. 3, ll. 61–63, col. 4, ll. 9–13 (if the secondary natural frequency is larger than 5000 Hz, the shot feel is poor because the ball is too hard, and if it is below 2000 Hz, the ball is too soft and the rebound characteristics are degraded). We appreciate that Maruoka’s secondary natural frequency range of 2000 to 5000 Hz is for a hollow core golf ball, whereas Yamaguchi’s golf ball has a solid core; however, the Examiner is correct that Maruoka discloses that a solid golf ball also exhibits a secondary natural frequency in the 2000 to 5000 Hz range, namely, at 3700 and 4200 Hz. Examiner’s Answer (dated July 30, 2020, hereinafter “Ans.”) 5 (citing Maruoka, Table 5, Comparative Example No. 3, 4). Even though Maruoka’s secondary natural frequencies of 3700 and 4200 Hz of a solid core golf ball are not within the claimed range of 2000 Hz to 2800 Hz, we do not agree with Appeal 2021-000462 Application 15/814,037 11 Appellant’s position that a skilled artisan “would head away from the claimed FB2 range of 2000-2800 Hz which is not preferred and is not exemplified.” Appeal Br. 9 (emphasis added). In particular, we do not agree with Appellant that “the modification of the Maruoka . . . golf ball core to a solid core would change its principle of operation” because the Examiner is not modifying Maruoka’s hollow core to a solid core, but rather, is modifying Yamaguchi’s solid core golf ball to exhibit a secondary natural frequency in Maruoka’s range. See id. at 10 (emphasis omitted). We further note that a skilled artisan would know from prior art, as evidenced by Sullivan,8 that solid core golf balls have in general a secondary natural frequency above 2000 Hz, and in particular, exhibit a secondary natural frequency at 2575 Hz. See Sullivan, Fig. 10. Thus, Sullivan reinforces Maruoka’s disclosure that a solid core golf ball, like a hollow core golf ball, has a secondary natural frequency FB2 in the range of 2000 to 5000 Hz, that is, around 2500 Hz. Accordingly, for the foregoing reasons, modifying Yamaguchi’s solid core golf ball to exhibit Maruoka’s secondary natural frequency range of 2000 to 5000 Hz, and in particular, a value of 2575 Hz, as known in the prior art, is not hindsight, as Appellant contends. See Appeal Br. 10. Rather, such a modification is merely the application of a known technique (i.e., a known secondary natural frequency range of 2000 to 5000 Hz and a value of 2575 Hz) to a piece of prior art ready for the improvement. See KSR, 550 U.S. at 417. A skilled artisan would have had good reason to pursue the known options within his or her technical grasp. 8 Sullivan et al., US 5,971,870, issued Oct. 26, 1999. Appeal 2021-000462 Application 15/814,037 12 See id. at 421 (“If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). Furthermore, a preponderance of the evidence supports the Examiner’s finding that the secondary frequencies of the core FC2 and the golf ball FB2 are result-effective variables, thus, rendering their optimization within the grasp of a person of ordinary skill in the art. See Ans. 6. Where a variable is known to affect a particular desirable result, i.e., a “result- effective” variable, the “overlap itself provides sufficient motivation to optimize the ranges,” and “it is not inventive to discover the optimum or workable ranges by routine experimentation,” because the desire to improve results would motivate skilled artisans to experiment with, and improve upon, known conditions in the prior art. In re Applied Materials, Inc., 692 F.3d 1289, 1295–96 (Fed. Cir. 2012) (citations and quotations omitted). In this case, Yamaguchi discloses that when the core secondary natural frequency FC2 is below 850 Hz “the golf ball produces very low hit sound when hit” and when it “exceeds 2700 Hz, the golf ball produces very high hit sound like a metallic sound.” Yamaguchi, col. 3, ll. 32–36 and 39– 42. As such, Yamaguchi’s core secondary natural frequency FC2 constitutes a result-effective variable, and thus, because the disclosed range of 850 to 2700 Hz encompasses the narrower claimed range of 1800 to 2500 Hz, the claimed range of 1800 to 2500 Hz is obvious and can be arrived at by routine optimization. See Peterson, 315 F.3d at 1330 (the Federal Circuit determined that “a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.”). Moreover, Yamaguchi specifically discloses core secondary natural frequencies of 1950, 2050, 2200, and 2400 Hz, which are Appeal 2021-000462 Application 15/814,037 13 specific values in the claimed range of 1800 to 2500 Hz. See Yamaguchi, Table 2 (golf ball numbers 8–11). Similarly, Maruoka discloses that in general “the secondary natural frequency . . . is closely connected with shot feel of golf balls” and if the secondary natural frequency is larger than 5000 Hz, the shot feel is poor because the hollow-core ball is too hard, and if it is below 2000 Hz, the hollow-core ball is too soft and the rebound characteristics are degraded. Maruoka, col. 3, ll. 61–63, col. 4, ll. 9–13. However, because for a solid core golf ball Maruoka discloses that secondary natural frequencies of 3700 and 4200 Hz result in a poor shot feel, a skilled artisan would readily understand that to have a proper shot feel for a solid core golf ball, Maruoka’s secondary natural frequency range is limited to a range of 2000 to 3700 Hz. Id. at col. 12, ll. 1–2, Table 5. Therefore, Maruoka’s ball secondary natural frequency FC2 constitutes a result-effective variable, and thus, because the disclosed range of 2000 to 3700 Hz encompasses the narrower claimed range of 2000 to 2800 Hz, the claimed range of 2000 to 2800 Hz is obvious and can be arrived at by routine optimization. See Peterson, 315 F.3d at 1330. Moreover, as noted above, the prior art of Sullivan evidences a golf ball having a secondary natural frequency of 2575 Hz, which is a specific value within Maruoka’s disclosed range of 2000 to 3700 Hz and the claimed range of 2000 to 2800 Hz. See Sullivan, Fig. 10. As such, in light of the Yamaguchi and Maruoka disclosures discussed supra, a skilled artisan would readily understand that optimizing the secondary natural frequencies of both the ball and the core provides for an optimum shot feel. Hence, we are not persuaded by Appellant’s argument that a skilled artisan would not know how to choose appropriate Appeal 2021-000462 Application 15/814,037 14 FC2 and FB2 values from the disclosures of Yamaguchi and Maruoka such that the resulting difference FB2 - FC2 lies within the claimed range of 80 to 420 Hz. See Appeal Br. 7. For example, having a core secondary natural frequency FC2 of 2200 Hz, as specifically taught by Yamaguchi in Table 2, and a ball secondary natural frequency FB2 of 2575 Hz, as known in the prior art (Sullivan) and disclosed by Maruoka’s range, would result in a difference FB2 - FC2 of 375 Hz, which is encompassed within the claimed range of 80 to 420 Hz. Appellant further argues that “all of the references fail to disclose or recognize the advantageous properties exhibited by embodiments of the claimed invention.” Appeal Br. 12. Pointing to Examples 1–18 of the Specification, Appellant notes that the golf balls of these examples have the following properties: (1) FB2 - FC2 is 85 to 414 Hz; (2) FC2 is 1857 to 2424 Hz; (3) FB2 is 2044 to 2700 Hz; (4) core diameter of 39.2 mm to 40.6 mm; (5) core central point hardness Ho of 65 to 70 Shore C; (6) core surface hardness Hs of 80 to 91 Shore C; (7) core hardness difference Hs - Ho of 15 to 21 units; (8) cover thickness Tc of 1.05 to 1.75 mm; (9) cover hardness Hc of 55 to 63 Shore D; (10) core compressive deformation Dc of 2.20 to 3.60 mm; and (11) golf ball compressive deformation Db of 1.88 to 3.20 mm. See Appeal Br. 6. Appellant also refers to Comparative Examples 1–4 described in the Specification and notes that although they employed similar core and Appeal 2021-000462 Application 15/814,037 15 cover compositions, similar core diameters (39.0–40.8 mm), similar cover thicknesses (0.95–1.85 mm), and “some overlapping FC2 and FB2 values,” nonetheless, “exhibit (FB2 - FC2) values just below and above the claimed range.” Id. Thus, Appellant contends that having the above noted characteristics results in a solid core golf ball “exhibit[ing] advantageous ‘putter evaluation’ scores (positive and low) and/or ‘feel at impact’ scores (‘A’ most preferred, ‘D’ least preferred), while also “exhibit[ing] similar or advantageous driver initial ball speed, driver ball spin (lower) and/or driver distance (longer) properties compared to Comparative Examples 1 to 4.” Id. Appellant further contends that Comparative Examples 1–4 are closer to the claimed ranges than Yamaguchi’s core diameter of 37.5 mm, cover thickness of 2.6 mm, and cover hardness of 68 Shore D. See Appeal Br. 8. We are not persuaded by Appellant’s arguments because the Examiner is correct that the claimed invention should be compared with the disclosure of each reference and not with preferred embodiments. Ans. 4 (citing MPEP § 716.02 (e) (“A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.”) (citing In re Merchant, 575 F.2d 865, 868 (CCPA 1978) (emphasis omitted))). Here, we agree with the Examiner that “Yamaguchi clearly discloses broader values which make obvious applicant’s claimed range.” Ans. 7. Furthermore, when an applicant seeks to overcome a prima facie case of obviousness by showing improved performance in a range that is within or overlaps with a range disclosed in the prior art, the applicant must “show Appeal 2021-000462 Application 15/814,037 16 that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Moreover, even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges “produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Additionally, expected beneficial results are evidence of obviousness just as unexpected beneficial results are evidence of unobviousness. See Ex parte Novak, 16 USPQ2d 2041, 2043 (BPAI 1989), aff'd mem., 899 F.2d 1228 (Fed. Cir. 1990); In re Skoner, 517 F.2d 947, 950 (CCPA 1975). First, we note that even though Comparative Examples 2, 3, and 4 exhibit a FB2 - FC2 difference outside the claimed range of 80 to 420 Hz, nonetheless, each of these golf balls has the same feel impact score of “A” as some of Appellant’s claimed golf balls, i.e., Examples 1, 2, 4, 6, 8–13, 16, and 17. See Spec. 27 (Table 4), 30 (Table 7). Moreover, we note that that the difference between an “A” rating and a “B” rating is one person (i.e. one vote between a nine (9) and an eight (8)) (see Spec. 23, ll. 19–27), and, thus, hardly appears to be statistically significant to the point of unexpected results, but, rather, is more likely merely a difference in degree. We further agree with the Examiner that the differences between the putter evaluation of Example 14 of -0.37 and Comparative Example 4 of -0.53 “appears to be merely in degree.” Ans. 8. Furthermore, we note that the driving distance of Example 14 of 226 m is about the same as the driving distance of Comparative Example 4 of 225 m; and, yet, Comparative Example 4 Appeal 2021-000462 Application 15/814,037 17 exhibits a FB2 - FC2 difference outside the claimed range of 80 to 420 Hz. See Spec. 30 (Table 7). Accordingly, we are not persuaded that the claimed ranges are “critical.” In particular, we note that because the golf ball of Comparative Example 4 exhibits a feel impact score of “A,” even though the frequency difference FB2 - FC2 is outside the claimed range, is telling as to the lack of criticality. Furthermore, the drop in feel impact score to a “C” score in the ball of Comparative Example 1, as compared to the ball of Comparative Example 4, could not reasonably have been unexpected to a person of ordinary skill in the art. That is, because the golf ball of Comparative Example 4 exhibits a frequency difference FB2-FC2 outside the claimed range, whereas the golf ball of Comparative Example 1 exhibits both a frequency difference FB2-FC2 and a cover hardness Hc outside the claimed ranges. See Spec. 27 (Table 4), 30 (Table 7). In sum, after reviewing all of the evidence before us, including the totality of Appellant’s evidence, it is our conclusion that, on balance, the evidence of obviousness discussed above outweighs the evidence of nonobviousness submitted by Appellant. Accordingly, the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art within the meaning of 35 U.S.C. § 103 at the time Appellant’s invention was made. Therefore, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103 of independent claim 1 as unpatentable over Yamaguchi, Maruoka, and Watanabe. Because the Board employed Sullivan’s disclosure as evidence to sustain the rejection of claim 1 under 35 U.S.C. § 103, which was not relied on by the Examiner, we designate our affirmance of the rejection of claim 1 Appeal 2021-000462 Application 15/814,037 18 as a NEW GROUND OF REJECTION in order to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection. Claims 2 and 9–14 In addition to the arguments discussed supra, which we did not find persuasive, Appellant’s further arguments amounts to a recitation of the claim elements. See Appeal Br. 13. Such statements do not constitute a separate argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted the same language in the prior rule under 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Furthermore, Appellant does not adequately explain why the golf ball of Yamaguchi, as modified by Maruoka and Watanabe, does not exhibit a sum frequency FB2 + FC2 of less than 4000 Hz. For the reasons discussed supra in the rejection of independent claim 1, employing simple arithmetic operations, a skilled artisan would readily calculate the sum frequency FB2 + FC2 of Yamaguchi’s solid core golf ball, as modified by Maruoko and Watanabe. In particular, having a core secondary natural frequency FC2 of 2050 Hz, as specifically taught by Yamaguchi in Table 2, and a ball secondary natural frequency FB2 of 2575 Hz, as known in the prior art (Sullivan) and disclosed by Maruoka’s range, would result in a sum frequency FB2 + FC2 of 4625 Hz, which “is not less than 4000 Hz,” as recited by claim 2. Appellant also does not adequately explain why Yamaguchi’s disclosure of a golf ball core diameter range of 32.7–40.7 mm does not Appeal 2021-000462 Application 15/814,037 19 render obvious the ranges of claims 9 and 10. See Final Act. 6; see also Yamaguchi, col. 5, ll. 12–14. As the golf balls of Examples 2 and 3 have the same golf ball core diameter of 40.6 mm, yet exhibit different feel at impact evaluations, i.e., A and D, respectively, we are not persuaded that the claimed golf ball core diameter range is “critical.” See Spec. 27, Table 4. Similarly, Appellant does not adequately explain why Yamaguchi’s disclosure of a golf ball cover thickness of 1–5 mm does not render obvious the ranges of claims 11–14. See Final Act. 6; see also Yamaguchi, col. 6, ll. 7–8. As the golf balls of Examples 2 and 3 have the same cover thickness of 1.05 mm, yet exhibit different feel at impact evaluations, i.e., A and D, respectively, we are not persuaded that the claimed cover thickness ranges are “critical.” See Spec. 27, Table 4. Accordingly, for the foregoing reasons, we also sustain the rejection under 35 U.S.C. § 103 of claims 2 and 9–14 as unpatentable over Yamaguchi, Maruoka, and Watanabe. As claims 2 and 9–14 depend from independent claim 1, for the same reason discussed supra, we designate our affirmance of the rejection of claims 2 and 9–14 as a NEW GROUND OF REJECTION in order to provide Appellant with a full and fair opportunity to respond to the thrust of the rejection. Appeal 2021-000462 Application 15/814,037 20 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground of Rejection 1, 2, 9–14 103 Yamaguchi, Maruoka, Watanabe 1, 2, 9–14 1, 2, 9–14 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. The new ground of rejection is binding upon the [E]xaminer unless an amendment or new Evidence not previously of Record is made which, in the opinion of the [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of Appeal 2021-000462 Application 15/814,037 21 rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure. MPEP § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b)