Ex Parte Kennedy

Board of Patent Appeals and Interferences

Jan 30, 2004

09730867 (B.P.A.I. Jan. 30, 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written for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS J. KENNEDY, III
_____________
Appeal No. 2004-0240
Application No. 09/730,867
______________
ON BRIEF
_______________
Before GARRIS, TIMM, and JEFFREY T. SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-9 which are all of the claims in the application.
The subject matter on appeal relates to a golf ball dimple.
With reference to the Appellant’s drawing, the dimple comprises
an outer edge 12 and a concavity 14, the diameter x of the outer
edge being less than the diameter y of a portion of the concavity
beneath the outer edge, thereby to be define an undercut portion
16 of the dimple which increases the turbulence of the golf ball
surface to reduce drag and increase the distance the ball will
Appeal No. 2004-0240
Application No. 09/730,867
2
travel when struck. This appealed subject matter is adequately
illustrated by independent claim 1 which reads as follows:
1. A dimple arranged in a spherical surface of a golf
ball, comprising an outer edge defining a geometric
configuration at the intersection with the spherical surface
and a concavity in the ball surface, the diameter of the
outer edge being less than the diameter of a portion of said
concavity beneath said outer edge, thereby to define an
undercut portion of the dimple beneath the surface of the
golf ball, said undercut portion increasing the turbulence
at the golf ball surface to reduce drag and increase the
distance the ball will travel when struck.
The references set forth below are relied upon by the
Examiner as evidence of obviousness:
Miller 1,795,732 Mar. 10, 1931
Oka et al. (Oka) 5,174,578 Dec. 29, 1992
Hotchkiss, 500 Years of Golf Balls: History & Collector’s Guide,
pp. 78-80, 115-23 (Antique Trader Books, 1997).
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hotchkiss in view of Miller. According to the
Examiner, “it would have been obvious, in view of Miller, to one
having ordinary skill in the art at the time the invention was
made to modify the recesses of a conventional golf ball having
concave bottoms so as to be undercut enough to permit the entry
of concave, shiny, colored spangles to enable the ball to be more
easily seen” (answer, page 5).
Appeal No. 2004-0240
Application No. 09/730,867
3
Claims 5-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oka in view of Hotchkiss and Miller. The
Examiner concludes that “it would have been obvious, in view of
Miller, to one having ordinary skill in the art at the time the
invention was made to modify the recess of a golf ball such as
that of Oka . . . having concave bottoms so as to be undercut
enough to permit the entry of concave spangles to enable the ball
to be more easily seen” (answer, page 7).
A more complete exposition of the Examiner’s viewpoint as
well as the opposing position expressed by the Appellant are set
forth in the answer as well as the brief and reply brief.
OPINION
We cannot sustain either of the above noted rejections.
We share the Appellant’s fundamental viewpoint that the
applied references contain no teaching or suggestion for
combining them in the manner proposed by the Examiner. With
respect to each of the rejections before us, the Examiner
concludes that “it would have been obvious, in view of Miller,
. . . to modify the recesses of . . . [the Hotchkiss or the Oka]
golf ball having concave bottoms so as to be undercut enough to
permit the entry of concave . . . spangles to enable the ball to
Appeal No. 2004-0240
Application No. 09/730,867
4
be more easily seen” (answer, page 5 as well as page 7). Like
the Appellant, however we do not believe Miller would have
suggested such a modification.
This is because Miller contains no teaching or suggestion of
golf ball recesses which have “concave bottoms” or of golf ball
recesses which are associated with “concave . . . spangles”
(id.).
In the Miller golf ball, the recesses 2 and the
corresponding spangles 4 are convex, like the outer surface of
the ball 1, rather than concave (e.g., see figure 3 and the
disclosure relating thereto). Moreover, it is significant that
the Examiner has failed to explain why the convex recesses and
spangles of Miller would have suggested providing concave
recesses with concave spangles. This failure by the Examiner is
particularly significant since the above discussed deficiencies
of Miller were expressly argued by the Appellant (e.g., see the
last two sentences in the last full paragraph on page 5 of the
brief).
On the record before us, it is only the Appellant’s own
disclosure which teaches any reason for providing a concave
recess or dimple with an undercut portion as required by the
claims on appeal. For this reason and in light of the
Appeal No. 2004-0240
Application No. 09/730,867
5
infirmities of Miller, it is our determination that the Examiner
has formulated the rejections before us based upon impermissible
hindsight. See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). It follows that we cannot sustain the
Examiner’s Section 103 rejections of claims 1-4 based on
Hotchkiss in view of Miller and of claims 5-9 based on Oka in
view Hotchkiss and Miller.
The decision of the examiner is reversed.
REVERSED
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge ) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )
Appeal No. 2004-0240
Application No. 09/730,867
6
JEFFREY T. SMITH, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s decision to
reverse the prior art rejections advanced by the Examiner on this
appeal.
I share the Examiner’s conclusion that it would have been
obvious for one with ordinary skill in this art to include a
spangle in at least one of the recesses of a conventional golf
ball. The spangles being held in place by an undercut area in
the recess.
The subject matter of claim 1 is directed to an undercut
dimple arranged in a spherical surface of a golf ball. The
subject matter of claim 5 is directed to a golf ball containing
at least one undercut dimple. It is noted that the claimed
invention does not contain information describing the angle of
the wall of the undercut dimple. It is further noted that the
present record does not contain data that exhibits the alleged
improvement in flight of the golf ball that is achieved by the
use of one undercut dimple.
The Examiner has advanced motivation for incorporating a
spangle in at least one of the recesses of a conventional golf
ball. The spangles are held in place by an undercut area in the
recesses. For each ground of rejection, the Examiner urges that
Appeal No. 2004-0240
Application No. 09/730,867
7
a person having ordinary skill in the art would have been
motivated to incorporate a spangle in at least one of the
recesses of a conventional golf ball to enable the ball to be
more easily seen. Specifically, the Examiner determined that a
person having ordinary skill in the art would have been motivated
to use a concave spangle to fill a concave recess of a
conventional golf ball. (Answer, pages 5 and 7).
Appellant argues that there is no motivation to combine the
teachings of Hotchkiss and Miller and these references do not
encompass, teach or suggest the claimed invention. Specifically,
Appellant states “the most striking difference is the
characterizing feature of the claims, namely an undercut dimple.
In the claimed invention, the dimple is a ‘concavity in the ball
surface’ and the undercut portion is defined by the diameter of
the concavity being greater than the diameter of the outer edge
of the dimple. Hotchkiss does not disclose undercut dimples and
Miller does not disclose any dimples whatsoever. Moreover,
Miller’s ‘recesses’ are not concavities. In fact, spangles which
are arranged in Miller’s recesses have a convex outer surface.”
(Brief, p. 5).
The Examiner provides a dictionary definition for a dimple
as a “depression or indentation on a surface” and an indentation
Appeal No. 2004-0240
Application No. 09/730,867
8
as a “recess in a surface.” (Answer, p. 8). The Examiner
determined that the terms are interchangeable and teachings of
Miller are pertinent to the subject matter of the claimed
invention. (Id.). Appellant has failed to refute the Examiner’s
determinations. (Note, Reply Brief). Appellant also has not
argued that Miller’s undercut recess is not sufficient to reduce
drag and increase the distance the ball will travel when struck.
The present record indicates that a person of ordinary skill
in the art would have also recognized, based on the teachings of
Miller, that the inclusion of spangles in the recesses of a golf
ball would provide better visibility of the ball when hidden in
the grass. (See Miller, page 1, lines 12-15). A person of
ordinary skill in the art would have recognized that dimples
function to effect the flight distance of golf balls. (See
Hotchkiss and the prior art cited in the specification, page 2).
Further, a person of ordinary skill in the art would have
recognized that the shape of the dimple effects the golf ball
flight and aerodynamic performance. (See Hotchkiss and the prior
art cited in the specification, page 2). A person of ordinary
skill in this art would have reasonably expected that the use of
a spangle shaped and arranged in a dimple, as described in the
prior art, would each produce the same effect as when used
Appeal No. 2004-0240
Application No. 09/730,867
1Miller, page 1 lines 56-57, recognizes the suitability of
the spangle taking the shape of the recess.
9
individually and would supplement each other.1 “For obviousness
under § 103, all that is required is a reasonable expectation of
success.” In re O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988). Thus, a person of ordinary skill in this
art who wanted to achieve the advantages of improvement in flight
distance of golf balls and improved visibility would have been
motivated to incorporate spangles in at least one of the recesses
of a conventional golf ball.
Miller discloses that an undercut area in the recesses
prevents the spangles from being loosened at their edges. (Pg. 1,
ll. 58-61). Thus, the idea of using an undercut area in the a
dimple of a conventional golf ball to secure the spangle would
have been obvious to a person of ordinary skill in the art who
wanted to achieve the advantages of a golf ball having
improvement in flight distance, improved visibility and security
of the spangle.
It is the position of the majority that Miller does not
teach or suggest a golf ball having recesses which have concave
bottoms or golf ball recesses which are associated with concave
spangles. (Slip Op., page 4). Further the majority states “[i]n
Appeal No. 2004-0240
Application No. 09/730,867
10
the Miller golf ball, the recesses 2 and the corresponding
spangles 4 are convex, like the outer surface of the ball 1,
rather than concave (e.g., see figure 3 and the disclosure
relating thereto).” (Id.).
“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure
of the primary reference . . . . Rather, the test is 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). See also In re Sneed, 710
F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically
combinable to render obvious the invention under review.”); and
In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1973)
(“Combining the teachings of references does not involve an
ability to combine their specific structures.”) As stated above,
a person of ordinary skill in this art who wanted to achieve the
advantages of improvement in flight distance of golf balls,
improved visibility and security of the spangle would have been
motivated to incorporate a spangle in at least one undercut
recess of a conventional golf ball.
Appeal No. 2004-0240
Application No. 09/730,867
11
For the reasons set forth above and in the answer, I believe
the Examiner has established a prima facie case of obviousness
within the meaning of 35 U.S.C. § 103 with respect to at least
appealed claims 1 and 5. I express no view concerning the other
claims on appeal since the obviousness versus nonobviousness of
these claims has not been separately addressed by the majority.
In light of the foregoing, I would uphold the Examiner’s
Section 103 rejections, for the reasons provided above and by the
Examiner.
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
BRG/JTS:hh
Appeal No. 2004-0240
Application No. 09/730,867
12
LAW OFFICE OF LAWRENCE E. LAUBSCHER, JR.
1160 SPA RD.
STE. 2B
ANNAPOLIS, MD 21403