Ex Parte Binette et al

Board of Patent Appeals and Interferences

Jun 29, 2004

09777595 (B.P.A.I. Jun. 29, 2004)

-1–
The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte Mark L. Binette et al.
Appeal No. 2004-1399
Application No. 09/777,595
ON BRIEF
Before WINTERS, GRON, and LORIN, Administrative Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
This is an appeal under 35 U.S.C. § 134 from an examiner’s
final rejection of Claims 1-27, which are all the claims pending
in U.S. Application No. 09/777,595, filed February 6, 2001.
Appeal No. 2004-1399
Application No. 09/777,595
-2–
Introduction
Claims 1-27 stand finally rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combined teachings of Saito, U.S.
Patent No. 4,919,434, patented April 24, 1990; Cavallaro et al.
(Cavallaro I), U.S. Patent No. 5,810,678, patented September 22,
1998; and Cavallaro et al. (Cavallaro II), U.S. Patent No.
5,947,842, patented September 7, 1999. Appellant stated that
Claims 1-9 stand or fall together, Claims 10-17 stand or fall
together, and Claims 18-27 stand or fall together. (Appeal Brief,
Paper No. 16, pages 3-4). Independent Claims 1, 10, and 18 read
as follows:
1. A golf ball comprising: a core; and a cover
enclosing said core, wherein said cover includes at
least one layer comprising an outermost layer having a
thermoplastic material, a thickness of less than 0.040
inches, a Shore D hardness of at least about 56 and a
Shore D hardness at least as hard as a layer disposed
between said outermost layer and said core.
10. A golf ball comprising: a core; and a cover
comprising an inner layer and an outermost layer
disposed about said inner layer comprising a
thermoplastic material, a thickness of less than about
0.040 inches, a Shore D hardness of at least about 56
and a Shore D hardness at least as hard as said inner
layer.
18. A golf ball comprising: a core; a wound layer;
wherein said cover includes an outermost layer that
comprises a thermoplastic material, said outermost
layer having a thickness less than about 0.040 inches,
a Shore D hardness at least about 56 and a Shore D
hardness at least as hard as a layer disposed between
said outermost layer and said core.
Appeal No. 2004-1399
Application No. 09/777,595
-3–
We have considered the appellant’s specification and claims,
the applied prior art, and the positions of the examiner and the
appellant. We conclude that the prior art teaching is sufficient
to establish a prima facie case of obviousness under 35 U.S.C.
§ 103(a) for the invention defined by Claims 1-27. Appellant has
presented no objective evidence of nonobviousness. Accordingly,
we affirm the examiner’s final rejection.
Discussion
“The PTO has the burden under section 103 to establish a
prima facie case of obviousness.” In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Claims 1 and 10 are
directed to a golf ball comprising a core and a cover. The cover
has an outermost layer with a thickness of less than .040 inches
and a minimum Shore D hardness of “about 56.” The outermost
layer is at least as hard as a layer between the core and
outermost layer.
Saito, Cavallaro I, and Cavallaro II have been cited as
evidence that appellant’s claimed invention would have been
obvious to one of ordinary skill in the art at the time the
application was filed. Saito would have taught persons skilled
in the art to make and use a golf ball comprising (1) a core and
(2) a thermoplastic cover that includes at least one layer with
Appeal No. 2004-1399
Application No. 09/777,595
-4–
the hard outermost layer having a thickness of less than .040
inches. (Saito, column 9, lines 36-46). Saito does not specify
hardness parameters for the outermost layer, however Cavallaro II
shows the degree of hardness required for golf ball covers.
Cavallaro II discloses a cover with a Shore D hardness of at
least 65. (Cavallaro II, column 16, line 4). Additionally,
Cavallaro II teaches an outermost layer harder than the layer
beneath. (Cavallaro II, column 4, line 44). In our view,
Cavallaro I adds nothing significant to the teaching of Cavallaro
II.
The appellant argues that Saito does not disclose a Shore D
hardness of at least 56, and there was no motivation to combine
the teachings of Saito and Cavallaro. (Appeal Brief, page 9,
second full paragraph). Appellant’s claimed limitation of an
outermost layer with a minimum Shore D hardness of “about 56"
encompasses Cavallaro’s limitation of an outermost layer with a
minimum Shore D hardness of 65. (Cavallaro II, column 16, line
4). Cavallaro II teaches a thermoplastic cover with a minimum
Shore D hardness of 65 and is directed to golf balls having the
characteristics described below (Cavallaro II, column 4, lines
36-38, 60-62):
a softer feel, while also providing superior distance,
low spin, durability, and ease of manufacturing.
Appeal No. 2004-1399
Application No. 09/777,595
-5–
Saito discloses a golf ball with a thin cover that is durable and
controllable. (Saito, column 1, lines 14-18). It would have been
obvious in view of Cavallaro II to fabricate the golf ball cover
of Saito with a Shore D hardness of Cavallaro to receive the
durability of the Cavallaro II ball while maintaining the
controllability of Saito’s ball.
Moreover, Cavallaro II describes a durable golf ball with a
good feel comprising a core and a cover with a Shore D hardness
of at least 65. (Cavallaro II, column 4, lines 36-37, 61).
Saito’s golf ball is described as providing the following
characteristics (Saito, column 1, lines 16-18):
a long overall distance, improved controllability,
extended durability, and a good shot feeling.
In view of Saito, it would have been obvious at the time the
invention was made to make a Cavallaro II ball with a cover made
of the thickness and composition that Saito discloses for the
benefit of having a soft feel ball with Cavallaro’s durable hard
cover.
The golf ball of appellant’s Claim 18 also requires a core
and a hard cover. However, the core of the golf ball has an
outer wound layer. The wound layer around the core of the golf
ball of Claim 18, although not required or even preferred by
Cavallaro or Saito, is described in Cavallaro II as well known in
Appeal No. 2004-1399
Application No. 09/777,595
-6–
the art and preferred ball for controllability. (Cavallaro II,
column 1, lines 52-54, 59-61). Cavallaro II describes a wound
ball with a hard SURLYN® cover like applicant’s claimed
invention. (Cavallaro II, column 1, lines 57-58).
Saito also describes a conventional golf ball comprising a
core with an outer wound layer and a SURLYN® cover. (Saito,
column 7, lines 28-32). In light of Saito and Cavallaro II, it
would have been prima facie obvious to persons having ordinary
skill in the art to make a ball of Saito or Cavallaro comprising
a core with a wound layer for improved controllability. Again,
appellant has provided no objective evidence or nonobviousness
for our consideration.
Conclusion
For the reasons stated above, we sustain the examiner’s
final rejection of Claims 1-27 of Application No. 09/777,595
under 35 U.S.C. § 103(a) over the combined teachings of Saito and
Cavallaro II.
The examiner’s decision is affirmed.
Appeal No. 2004-1399
Application No. 09/777,595
-7–
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136 (a).
AFFIRMED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
HUBERT LORIN )
Administrative Patent Judge )

Appeal No. 2004-1399
Application No. 09/777,595
-8–
THE TOP-FLIGHT GOLF COMPANY
425 MEADOW STREET
P.O. BOX 901
CHICOPEE, MA 01021-0901