Ex Parte ISOGAWA et alDownload PDFPatent Trial and Appeal BoardSep 25, 201813667985 (P.T.A.B. Sep. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/667,985 11/02/2012 127226 7590 09/27/2018 BIRCH, STEW ART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 Kazuhiko ISOGA WA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3673-0448PUS 1 7086 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 09/27/2018 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 KAZUHIKO ISOGA WA and KOSUKE TACHIBANA Appeal 2018-001217 Application 13/667 ,985 Technology Center 3700 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRADLEY B. BAY AT, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kazuhiko Isogawa and Kosuke Tachibana ("Appellants") 1 seek our review under 35 U.S.C. § 134 of the Examiner's decision to reject claims 1, 5, 8-12, 14--21, and 23-27. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. 1 The Appellants identify Dunlop Sports Co., LTD., as the real party in interest. (App. Br. 3.) Appeal2018-001217 Application 13/667 ,985 THE INVENTION Claim 1 is illustrative, and is reproduced below ( emphasis added): 1. A golf ball comprising a core, a mid layer positioned outside the core, and a cover positioned outside the mid layer, wherein the core comprises a center and an envelope layer positioned outside the center, the envelope layer is formed from a crosslinked rubber composition, the crosslinked rubber composition includes: (a) a base rubber; (b) a co-crosslinking agent; ( c) a crosslinking initiator; and (d) an acid and/or a salt thereof, the co-crosslinking agent (b) is: (bl) an a,B-unsaturated carboxylic acid having 3 to 8 carbon atoms; or (b2) a metal salt of an a,B-unsaturated carboxylic acid having 3 to 8 carbon atoms, wherein the acid and/or the salt (d) is present in an amount equal to or greater than 1. 0 parts by weight but less than 40 parts by weight per 100 parts by weight of the base rubber (a), wherein the acid or salt ( d) excludes the co-crosslinking agent (b), wherein the rubber composition includes 32 parts by weight or greater but 3 8 parts by weight or less of the co- crosslinking agent (b) per 100 parts by weight of the base rubber (a), wherein the acid and/or the salt (d) is an aromatic carboxylic acid with a carbon number equal to or greater than 5 but equal to or less than 30 and/or the salt thereof, 2 Appeal2018-001217 Application 13/667 ,985 wherein if the distance from the core center to the core surface is divided into intervals of 12.5% to include nine distance points that include the core central point and the core surface; JIS-C hardness values are measured at each of the nine distance points; and the outer six distance points are plotted on a graph against the JIS-C hardness values; then R2 of a linear approximation curve of the graph obtained by a least-square method is equal to or greater than 0.95, and wherein the base rubber comprises at least one of polybutadiene, polyisoprene, styrene-butadiene copolymers, ethylene-propylene-diene copolymers, and natural rubber. THE REJECTIONS The following rejections are before us for review: Claims 1, 5, 8-12, 14--20, 23, and 24--27 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hirau et al. (US 2007/0265113 Al, pub. Nov. 15, 2007) (hereinafter "Hirau"), Sullivan et al. (US 2011/0143863 Al, pub. June 16, 2011) (hereinafter "Sullivan"), Reiter (US 4,688,801, iss. Aug. 25, 1987), and Mano et al. (US 2003/0144425 Al, pub. July 31, 2003) (hereinafter "Mano"). Claim 21 is rejected under 35 U.S.C. § I03(a) as unpatentable over Hirau, Sullivan, Reiter, Mano, and Kato (US 6,855,074 B2, iss. Feb. 15, 2005). ISSUES Did the Examiner err in rejecting 1, 5, 8-12, 14--20, 23, and 24--27 under 35 U.S.C. § I03(a) as unpatentable over Hirau, Sullivan, Reiter, and Mano; and did the Examiner err in rejecting claim 21 under 35 U.S.C. § I03(a) as unpatentable over Hirau, Sullivan, Reiter, Mano, and Kato? 3 Appeal2018-001217 Application 13/667 ,985 ANALYSIS The independent claims are directed to a golf ball having a highly linear hardness profile, the golf ball comprising a core having a center and an envelope layer formed from a crosslinked composition including (a) a base rubber, (b) a co-crosslinking agent, ( c) a crosslinking initiator, and (d) an acid and/or salt thereof. Claim 1 also requires that "the acid and/or the salt ( d) is present in an amount equal to or greater than 1.0 parts by weight but less than 40 parts by weight per 100 parts by weight of the base rubber (a)," and that "the acid and/or the salt (d) is an aromatic carboxylic acid with a carbon number equal to or greater than 5 but equal to or less than 30 and/or the salt thereof." The Examiner's position is that Hirau discloses a golf ball as set forth in claim 1, except that Hirau does not disclose the inclusion of the claimed acid/salt ( d) or the claimed hardness profile. According to the Examiner, a person of skill in the art would have selected an aromatic carboxylic acid/salt (namely benzoic acid) as taught by Sullivan for inclusion in Hirau's envelope layer in order "to provide Hirau with a known substitute composition including component (d)." Non-Final Act. 4. The Examiner acknowledges that Sullivan "is silent as to the amount of component (d)," and the Examiner cites Reiter as curing this deficiency. Id. According to the Examiner, "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to provide Hirau, as modified, with component ( d), in an amount within the claimed range, as taught by Reiter, to provide Hirau, as modified, with a known concentration of aromatic acid and/or salt thereof." Id. at 5. The Examiner's position for independent claim 25 is the same as for claim 1. Id. at 7 ("Hirau, Sullivan, Reiter, and 4 Appeal2018-001217 Application 13/667 ,985 Mano are applied as in claim 1, with the same obviousness rationale being found applicable.") The Appellants explain that the claimed hardness profile is achieved as a result of the inclusion of the specified acid/salt ( d) of claim 1 in an amount within the claimed range. Reply Br. 4 ( citing Specification p. 16). The Appellants challenge the Examiner's prima facie case of obviousness on the grounds that, inter alia, the amount of the acid and/or salt is critical to the claimed hardness profile (App. Br. 12), and that the Examiner's reasoning is based on improper hindsight (id. at 17-19). Responding to the Appellants' arguments in the Answer, the Examiner acknowledges that "the Sullivan and Reiter references do not disclose a golf ball core having an envelope layer formed with a rubber composition as claimed." Ans. 7. The Examiner maintains that "[t]he Reiter reference teaches octanoic acid and its zinc salt as a rubber core composition component, in the claimed concentration, and Sullivan teaches aromatic and aliphatic acids for the same purpose, listing octanoic acid ( caprylic acid) and benzoic acid among suitable materials." Id. at 3. According to the Examiner, "it would have been obvious to one of ordinary skill in the art to try the claimed composition as a suggested rubber core composition." Id. Balancing the totality of the evidence, we find that the weight of the evidence supports the Appellants' position. As the Examiner acknowledges in the Answer (Ans. 7), Sullivan and Reiter are directed to compositions for a rubber core of a golf ball, and not to an envelope layer outside the center of the core as claimed. Sullivan discloses using an aromatic carboxylic acid (benzoic acid) as a processing aid, but not in the amount claimed. Reiter discloses using aliphatic carboxylic acid to aid in dispersion of a coagent, 5 Appeal2018-001217 Application 13/667 ,985 but not an aromatic carboxylic acid as required by claim 1. A prima facie case of obviousness is established by presenting evidence that the reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references to make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013, 1016 ( CCP A 1972 ). There is insufficient evidence in support of the Examiner's position that a person of ordinary skill in the art would have been motivated to modify the golf ball of Hirau to include an envelope layer with the claimed chemical composition. The Examiner's statement that "it would have been obvious to one of ordinary skill in the art to try the claimed composition" (Ans. 3) amounts to a conclusory statement, and "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417--418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner does not offer sufficient evidence that there are a finite number of identified, predictable solutions to solve a problem evidenced by design need or market pressure to support the stated "obvious to try" rationale. See KSR, 550 U.S. at 421 (Explaining that the "obvious to try" rationale is based on choosing from a finite number of identified, predictable solutions, when there is a design need or market pressure to solve a problem). In our view, only through impermissible hindsight knowledge of the Appellants' disclosure would one of ordinary skill in the art having the cited prior art in hand have been led to modify the formulation of Hirau's envelope layer to include an aromatic carboxylic acid as taught by Sullivan 6 Appeal2018-001217 Application 13/667 ,985 in an amount taught by Reiter. Only through using such knowledge as a blueprint to reconstruct the claimed subject matter from the isolated teachings of the prior art would one reach the claimed subject matter. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) cert. denied, 389 U.S. 1057 (1968) ("A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art .... [The Board] may not ... resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis."). Because "[ o ]bviousness [cannot] be established by hindsight combination to produce the claimed invention," In re Dance, 160 F.3d 1339, 1343 (Fed. Cir. 1998), a prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence. Accordingly, we reverse the rejection of independent claims 1 and 25. For the same reasons, we also do not sustain the rejection of dependent claims 5, 8-12, 14--21, 23, 24, 26, and 27. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). The additional cited reference for rejection of claim 21 does not cure the deficiency. DECISION The decision of the Examiner to reject claims 1, 5, 8-12, 14--21, and 23-27 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation