Ex Parte Cavallaro et al

Board of Patent Appeals and Interferences

Jan 13, 2004

09782782 (B.P.A.I. Jan. 13, 2004)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHRISTOPHER CAVALLARO, RYAN B. BOSANKO
and EDMUND A. HEBERT
____________
Appeal No. 2004-0189
Application No. 09/782,782
____________
ON BRIEF
____________
Before STAAB, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 16
and 18 to 28, which are all of the claims pending in this application.
We REVERSE and enter a new rejection pursuant to 37 CFR § 1.196(b).
Appeal No. 2004-0189
Application No. 09/782,782
Page 2
BACKGROUND
The appellants' invention relates generally to golf balls, and more specifically, to
multilayer golf balls. ln particular, this invention relates to a golf ball having a core
comprising a center and an outer core layer, and a cover comprising an inner cover
layer and a thin outer cover layer (specification, p. 1). A copy of the dependent claims
under appeal is set forth in the appendix to the appellants' brief. Claims 1 and 18, the
independent claims on appeal, read as follows:
1. A golf ball comprising a core and a cover disposed about the core,
wherein the core comprises a center and at least one outer core layer adjacent
the center, and the cover comprises at least one inner cover layer and an outer
cover layer;
(a) wherein the center has an outer diameter from about 0.375 in to about
1.4 in and deflection of greater than about 4.5 mm under a load of 100 Kg;
(b) the outer core layer has an outer diameter of from about 1.4 in to about
1.62 in;
(c) the inner cover layer has an outer diameter of greater than about 1.58
in and a material hardness of less than about 72 Shore D; and
(d) the outer cover layer has a hardness of greater than about 56 Shore D.
18. A golf ball comprising a core and a cover disposed about the core,
wherein the core comprises a solid center and an outer core layer adjacent the
center, and the cover comprises an inner cover layer and an outer cover layer;
(a) wherein the center has an outer diameter from about 0.375 in to about
1.4 in and deflection of greater than about 4.5 mm under a load of 100 Kg;
(b) the outer core layer has an outer diameter of from about 1.4 in to about
1.62
(c) the inner cover layer has an outer diameter of greater than about 1.58
in and a material hardness of less than about 72 Shore D; and
(d) the outer cover layer has a hardness of greater than about 56 Shore D.
Appeal No. 2004-0189
Application No. 09/782,782
Page 3
1 Issued June 19, 2001.
Claims 1 to 16 and 18 to 28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over U.S. Patent No. 6,248,0271 to Hayashi et al. (Hayashi).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the answer
(Paper No. 9, mailed April 16, 2003) for the examiner's complete reasoning in support of
the rejection, and to the brief (Paper No. 8, filed February 5, 2003) and reply brief
(Paper No. 10, filed June 16, 2003) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the Hayashi patent, and to the respective
positions articulated by the appellants and the examiner. As a consequence of our
review, we make the determinations which follow.
The appellants argue (brief, pp. 5-10) that the limitation that the "outer cover
layer has a hardness of greater than about 56 Shore D" is not taught or suggested by
Hayashi since that patent discloses an outer cover having a Shore D hardness in the
range of 35-53. In response to this argument in the answer (pp. 4-9), the examiner has
Appeal No. 2004-0189
Application No. 09/782,782
Page 4
2 The Federal Circuit stated in In re Peterson, 315 F.3d 1325, 1329, 65 USPQ2d 1379, 1382
(Fed. Cir. 2003) that a prima facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art would have expected them to
have the same properties (citing to Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773,
779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3%
molybdenum, up to 0.1% maximum iron, balance titanium”would have been prima facie obvious in view of
a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94%
nickel, 0.31% molybdenum, balance titanium).
3 Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 103 begins with a
determination of the scope of the claim. The properly interpreted claim must then be compared with the
prior art. Claim interpretation must begin with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir.
1988).
(1) stated that the claim term "about" has not been defined at all by the appellants;
(2) stated that the appellants have given no indication as to the scope of the term
"about;" (3) determined that this limitation is met by Hayashi's outer cover having a
Shore D hardness of 53 since one skilled in the art would consider the claimed Shore D
hardness of greater than "about" 56 to be readable on a Shore D hardness of 53; and
(4) concluded that the claimed Shore D hardness of greater than "about" 56 to be prima
facie obvious2 from Hayashi's teaching of a Shore D hardness of 53. Thus, this appeal
requires us to fully understand3 the scope of the terminology "about" as used in the
claims under appeal.
Our review of independent claims 1 and 18 reveals that we are unable to derive a
proper understanding of the scope and content thereof. Specifically, the terminology
Appeal No. 2004-0189
Application No. 09/782,782
Page 5
4 See White v. Dunbar, 119 U.S. 47, 51-52 (1886) and Townsend Engineering Co. v. HiTec Co.
Ltd., 829 F.2d 1086, 1089-91, 4 USPQ2d 1136, 1139-40 (Fed. Cir. 1987).
"about" in independent claims 1 and 18 raises a definiteness issue under 35 U.S.C.
§ 112, second paragraph.
The term "about" is a term of degree. When a word of degree is used, such as
the term "about" in claims 1 and 18, it is necessary to determine whether the
specification provides some standard for measuring that degree. See Seattle Box
Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568,
573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as the term of degree
mentioned supra, may not be precise, does not automatically render the claim indefinite
under the second paragraph of § 112. Seattle Box, supra. Nevertheless, the need to
cover what might constitute insignificant variations of an invention does not amount to a
license to resort to the unbridled use of such terms without appropriate constraints to
guard against the potential use of such terms as the proverbial nose of wax.4
In Seattle Box, the court set forth the following requirements for terms of degree:
When a word of degree is used the district court must determine whether
the patent's specification provides some standard for measuring that
Appeal No. 2004-0189
Application No. 09/782,782
Page 6
5 See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985).
degree. The trial court must decide, that is, whether one of ordinary skill
in the art would understand what is claimed when the claim is read in light
of the specification.
In Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225
USPQ 634, 641 (Fed. Cir. 1985), the court added:
If the claims, read in light of the specifications [sic], reasonably apprise
those skilled in the art both of the utilization and scope of the invention,
and if the language is as precise as the subject matter permits, the courts
can demand no more.
Indeed, the fundamental purpose of a patent claim is to define the scope of
protection5 and hence what the claim precludes others from doing. All things
considered, because a patentee has the right to exclude others from making, using and
selling the invention covered by a United States letters patent, the public must be
apprised of what the patent covers, so that those who approach the area circumscribed
by the claims of a patent may more readily and accurately determine the boundaries of
protection in evaluating the possibility of infringement and dominance. See In re
Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970).
Appeal No. 2004-0189
Application No. 09/782,782
Page 7
In the present case, we have reviewed the appellants' disclosure to help us
determine the meaning of the above-noted terminology from claims 1 and 18. That
review has revealed that the appellants' specification provides at page 9 that the term
"about," as used herein in connection with one or more numbers or numerical
ranges, should be understood to refer to all such numbers, including all numbers in a
range.
However, this definition does not provide a sufficient guideline defining the
terminology "about" as used in the claims under appeal. For example, if this definition
connotes that "greater than about 56" refers only to numbers greater than 56 then the
term "about" becomes meaningless. If this definition is meant to indicate that "greater
than about 56" refers to all numbers greater than 56 and some numbers less than 56
then the definition does not clearly set forth the lower limit. Furthermore, there are no
guidelines that would be implicit to one skilled in the art defining the term "about" as
used in the terminology "greater than about 56 Shore D" that would enable one skilled in
the art to ascertain what is meant by "about." For example, one cannot ascertain if a
Shore D hardness of 53 is "greater than about 56." This is especially true since
(1) dependent claim 2 further requires the outer cover layer to have a material hardness
Appeal No. 2004-0189
Application No. 09/782,782
Page 8
6 These dependent claims would seem to indicate that the appellants may have intended the
terminology "greater than about 56 Shore D" to encompass both a Shore D hardness less than 55 and a
Shore D hardness less than 50. However, such is not clear from the record before us in this appeal.
less than about 55 shore D, and (2) dependent claims 3 and 19 further require the outer
cover layer to have a material hardness less than about 50 shore D.6
Absent guidelines that would enable one skilled in the art to ascertain what is
meant by "about" as used in the claims under appeal, we are of the opinion that a
skilled person would not be able to determine the metes and bounds of the claimed
invention with the precision required by the second paragraph of 35 U.S.C. § 112. See
In re Hammack, supra.
Since the appellants' disclosure fails to set forth an adequate definition as to what
is meant by the terminology "about" as used in the claims under appeal, the appellants
has failed to particularly point out and distinctly claim the invention as required by the
second paragraph of 35 U.S.C. § 112.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of
rejection.
Appeal No. 2004-0189
Application No. 09/782,782
Page 9
Claims 1 to 16 and 18 to 28 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
invention, for the reasons explained above.
As set forth previously, our review of the specification leads us to conclude that
one of ordinary skill in the art would not be able to understand the metes and bounds of
the terminology "about" as used in the claims under appeal.
THE OBVIOUSNESS REJECTION
Considering now the rejections of claims 1 to 16 and 18 to 28 under 35 U.S.C.
§ 103, we have carefully considered the subject matter defined by these claims.
However, for reasons stated supra in our new rejection under the second paragraph of
35 U.S.C. § 112 entered under the provisions of 37 CFR 1.196(b), no reasonably
definite meaning can be ascribed to certain language appearing in the claims. As the
court in In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) stated:
[a]ll words in a claim must be considered in judging the patentability of that claim
against the prior art. If no reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become obvious --the claim
becomes indefinite.
In comparing the claimed subject matter with the applied Hayashi patent, it is
apparent to us that considerable speculations and assumptions are necessary in order
Appeal No. 2004-0189
Application No. 09/782,782
Page 10
to determine what in fact is being claimed. Since a rejection based on prior art cannot
be based on speculations and assumptions, see In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962), we are constrained to reverse, pro forma, the examiner's
rejections of claims 1 to 16 and 18 to 28 under 35 U.S.C. § 103. We hasten to add that
this is a procedural reversal rather than one based upon the merits of the section 103
rejection.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 16 and 18 to 28
under 35 U.S.C. § 103 is reversed and a new rejection of claims 1 to 16 and 18 to 28
under 35 U.S.C. § 112, second paragraph, has been added pursuant to provisions of
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b).
37 CFR § 1.196(b) provides that, "[a] new ground of rejection shall not be considered
final for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
Appeal No. 2004-0189
Application No. 09/782,782
Page 11
with respect to the new ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a
showing of facts relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the application will be
remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the
Board of Patent Appeals and Interferences upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR § 1.196(b)
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2004-0189
Application No. 09/782,782
Page 12
TROY R. LESTER, ESQ.
ACUSHNET COMPANY
333 BRIDGE STREET
FAIRHAVEN, MA 02719
JVN/jg