Ex Parte SAJIMA et alDownload PDFPatent Trial and Appeal BoardMay 21, 201813906839 (P.T.A.B. May. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/906,839 05/31/2013 127226 7590 05/23/2018 BIRCH, STEW ART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 Takahiro SAJIMA 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. 3673-0476PUS 1 7477 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 05/23/2018 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 T AKAHIRO SAJIMA and HIROT AKA NAKAMURA Appeal2017-008369 Application 13/906,839 Technology Center 3700 Before MICHAEL L. HOELTER, ANNETTER R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 1, 3, 4, 9, 10, and 21-24 under 35 U.S.C. § 103(a) as unpatentable over Hayashi (US 2003/0114252 Al; published June 19, 2003), Watanabe (US 2011/0143861 Al; published June 16, 2011), and Reiter (US 4,688,801; issued Aug. 25, 1987). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as DUNLOP SPORTS CO. LTD. Br. 1. 2 Appeal is taken from the Non-Final Office Action dated May 20, 2016. Appeal2017-008369 Application 13/906,839 STATEMENT OF THE CASE Claim 1 is the sole independent claim on appeal. Claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A golf ball comprising a spherical core and a cover covering the core and including two or more layers, wherein if JIS-C hardness values are measured at nine points obtained by dividing a region from the central point of the core to a surface of the core at intervals of 12.5% of radius of the core and including the central point of the core and the surface of the core, and the hardness values are plotted in a graph against distance (% ), then R2 of a linear approximation curve obtained by a least-squared method is equal to or greater than 0.95, and a JIS-C hardness Hi of an innermost layer of the cover is greater than a JIS-C hardness Hs at the surface of the core, wherein the core is formed by a rubber composition being crosslinked, the rubber composition includes: (a) a base rubber; (b) a co-crosslinking agent; ( c) a crosslinking initiator; and ( d) an acid and/ or a salt, and the cross-linking 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, and the acid and/or salt (d) is an aromatic carboxylic acid and/or a salt thereof, or a fatty acid and/or a salt thereof, which excludes stearic acid, stearate, and the co-crosslinking agent (b ); a difference (Hs-H(O)) between the JIS-C hardness Hs at the surface of the core and a JIS-C hardness H(O) at the central point of the core is equal to or greater than 15; 2 Appeal2017-008369 Application 13/906,839 an amount of the acid and/ or the salt ( d) is equal to or greater than 0.5 parts by weight but equal to or less than 40 parts by weight, per 100 parts by weight of the base rubber (a); a carbon number of a carboxylic acid component of the acid and/ or the salt thereof ( d) is equal to or greater than 1 but equal to or less than 30; the hardness H(O) at the central point of the core is equal to or greater than 40.0 but equal to or less than 70.0; and the hardness Hs at the surface of the core is equal to or greater than 78.0 but equal to or less than 95.0. ANALYSIS Independent claim 1 and dependent claims 3, 4, 9, 10, and 21-23 Regarding independent claim 1, the Examiner finds, inter alia, that Hayashi teaches the claimed rubber composition, including (a) a base rubber, (b) a co-crosslinking agent (i.e., Hayashi's "zinc acrylate and zinc methacrylate, metal salts of an a,B-unsaturated carboxylic acid having 3 to 8 carbon atoms"), and (c) a cross-linking initiator (i.e., Hayashi's dicumyl peroxide). Non-Final Act. 4--5 (citing Hayashi ,r,r 20-22). The Examiner determines that "Hayashi[] is silent as to component (d), an acid and/or a salt," and the Examiner relies on Reiter for teaching "a similar golf ball core formulation including a fatty acid or a salt (noting octanoic acid and the zinc salt)." Id. at 5 (citing Reiter 7:59-66). The Examiner finds that it would have been obvious to provide Hayashi's golf ball, as modified by Watanabe, "with a fatty acid salt as component ( d), as taught by Reiter ... [as] a known substitute core formulation." Id. The Examiner also relies on Reiter for teaching 3 Appeal2017-008369 Application 13/906,839 component ( d) being a zinc salt of carboxylic acid, (noting octanoic acid and the zinc salt, octanoic acid being a fatty acid having greater than 1 but equal to or less than 30 carbon atoms), which is included in a concentration equal to or greater than 0.5 but equal to or less than 40 parts by weight per 100 parts by weight of the base rubber. Id. (citing Reiter 7:59--8:1). The Examiner reasons that it would have been obvious to provide Hayashi's golf ball, as modified by Watanabe, "with zinc salt of octanoic acid, as component ( d), in the claimed concentration, as taught by Reiter, to provide ... an additional core formulation component, to yield the predictable result of facilitating the customization of the core hardness profile." Id.; see also, Ans. 4 ("the incorporation of component ( d), as taught by Reiter, facilitates customization of the core hardness profile," because "Reiter recognizes the influence of component ( d) on the core hardness (ball compression))" ( citing Reiter 8: 1-7) ). Alternatively, the Examiner reasons that "Reiter teaches that it is advantageous to include the fatty acid or salt," and therefore, a person of ordinary skill "would have been motivated to incorporate" Reiter's acid and/or salt into the rubber composition of Hayashi, as modified by Watanabe. Ans. 2 (citing Reiter 4:43---60, 7:59--61). Appellants do not dispute the Examiner's finding that Reiter discloses component ( d) of claim 1. Rather, Appellants argue that Reiter discloses component ( d) as "merely optional" instead of as an "essential" component. Br. 8 (citing Reiter 7:59--8: 1 ). Indeed, Reiter discloses that "[o]ptionally, if desired, a saturated aliphatic carboxylic acid ... may be incorporated ... in the dispersion of the coagent into the elastomer matrix." Reiter 7:59---64. However, we are not persuaded by Appellants' argument because it is well settled that a reference may be relied upon for all that it would have 4 Appeal2017-008369 Application 13/906,839 reasonably suggested to one having ordinary skill in the art, including non- preferred embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("'all disclosures of the prior art, including unpreferred embodiments, must be considered'") ( quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Appellants also argue that, in Reiter, "a saturated aliphatic carboxylic acid and the like is included in the rubber composition of the core in order to achieve 'the dispersion of the coagent into the elastomer matrix' and not for forming a linear hardness distribution in the core." Br. 8. Appellants further argue that "[ t ]he cited references fail to disclose or suggest forming a core having a hardness distribution as recited in amended claim 1 in order to improve flight distance in a shot with a driver or having a rubber composition of the core including the component ( d) in order to obtain the core." Id. Appellants conclude that because of these deficiencies, "one of ordinary skill in the art would have no proper reason, rationale, or motivation for modifying the cited references in order to arrive at the claimed invention." Id. We agree with Appellants that the Examiner's motivation for modifying Hayashi to include Reiter's component (d) to customize the core hardness profile of the golf ball based on Reiter's general disclosure of improving compression, as set forth supra, lacks sufficient factual underpinning. However, as set forth supra, the Examiner additionally reasons that modifying Hayashi, in view of Reiter, to include an acid and/or metal, is a simple substitution of one known core formulation for another (see Non-Final Act. 5) to obtain predictable results (see KSR Int 'l Co. v. Tele/ex Inc., 550 U.S. 398, 416 (2007)), and is also motivated by the 5 Appeal2017-008369 Application 13/906,839 advantage disclosed in Reiter (see Ans. 2; see also Reiter 7:59--64 (disclosing that the advantage of adding the acid and/or salt is "to aid in the dispersion of the co agent into the elastomer matrix")). Appellants' argument does not apprise us of error in these alternative reasons for modifying Hayashi as proposed by the Examiner. Notably, the Examiner's motivation is not required to be the same as Appellants' motivation(s) for including the claimed component (d). See KSR, 550 U.S. at 419 (''[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls."). 1\1oreover, Appellants' arguments are not commensurate in scope with the claim language, because claim 1 does not recite the argued advantages of including the claimed component (d) (see In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments "not based on limitations appearing in the claims")), and the Examiner relies on Watanabe, not Hayashi or Reiter, for disclosing that the hardness profile of a golf ball is a result effective variable. 3 Appellants also argue that Reiter discloses that "a coagent is required in order to achieve a golf ball exhibiting improved compression and fracture strength, while maintaining the desired rebound, click and feel required in a golf ball as compared with golf balls produced from cis-1, 4-plybutadiene elastomers devoid of the incorporation of the coagent of Reiter." Br. 8. ( citing Reiter 1 :23-28). Appellants submit because "Hayashi [] lack[ s] the 3 The Examiner finds that "Hayashi is silent as to the core hardness profile throughout," and relies on Watanabe for teaching that a gradual increase in core hardness from the center to the surface of the core is a result effective variable. Non-Final Act. 3--4 (citing Watanabe ,r,r 28, 29). 6 Appeal2017-008369 Application 13/906,839 required coagent," one of ordinary skill "would have no proper reason, rationale, or motivation to combine" Hayashi with Reiter. Id. 8-9. The Examiner responds that "[t]he similarity of the disclosures would have motivated one of ordinary skill in the art to consider the teaching of the references in combination" and that "[ t ]he difference in formulating the co- agent would not have caused one of ordinary skill [in Reiter] to discount the teaching of Reiter." Ans. 3. In support, the Examiner determines that "[b ]oth references employ a peroxide initiator with an unsaturated carboxylic acid to vulcanize the core composition." Id. The Examiner relies on Hayashi, as set forth supra, for disclosing the claimed co-crosslinking agent (b ), which Appellants do not dispute. Br. 8- 12. Regarding Hayashi's crosslinking agent, Hayashi discloses that [ t ]he rubber composition used herein contains, in addition to the main rubber component, a crosslinking agent ... selected from zinc salts such as zinc acrylate and zinc methacrylate, magnesium salts, and other metal salts of unsaturated fatty acids, esters such as triethanolpropane methacrylate, and unsaturated fatty acids such a methacrylic acids. Hayashi ,r 21. Regarding Reiter's coagent, Reiter discloses that curable compositions suitable for use in the production of ... the core of [a] two-piece golf ball, comprise an admixture of: ... a coagent comprising an admixture of a polyvalent metal salt of an unsaturated acid and an active hydrogen-containing organic filler, or the reaction product obtained by the reaction of an unsaturated carboxylic acid with an active hydrogen containing organic filler, followed by further reaction with a polyvalent metal compound in the presence of said unsaturated carboxylic acid, whereby said coagent functions as a cross linking agent with the polybutadiene elastomer. 7 Appeal2017-008369 Application 13/906,839 Reiter 4:39--55 (emphasis added). Regarding adding the claimed component ( d), Reiter discloses that adding zinc salts of a saturated aliphatic carboxylic acid "aid[s] in the dispersion of the coagent into the elastomer matrix," and "[a]s a result of improved dispersion of the coagent, it has been found that inclusion of such carboxylic acids or salts thereof, as indicated, may increase the PGA compression by 5% to 25%, without sacrificing fracture strength, rebound, or other desired physical properties of the golf ball." Reiter 7:59-- 8:7. In view of the record before us, Appellants have failed to provide sufficient argument or evidence that Reiter's acid or salt (i.e., the claimed component ( d)) is unsuitable to aid in the dispersion of Hayashi' s co- crosslinking agent to gain the advantages disclosed in Reiter, as determined by the Examiner, due to the similarities of the compositions. Put another way, Appellants fail to identify error in the Examiner's finding that because both Hayashi and Reiter "employ a peroxide initiator with an unsaturated carboxylic acid to vulcanize the core composition," as set forth supra, Reiter's teaching to further add an acid and/or salt to aid in the dispersion of Hayashi's cross-linking agent is an obvious modification to Hayashi. Appellants further argue that the rubber composition of the claimed invention, including the acid and/or salt ( d), forms a linear hardness distribution (R2 2: 0.95) in the core. The acid and/or the salt ( d) controls a JIS-C hardness H(O) at the central point of the core, a JIS-C hardness at the surface of the core, and a hardness difference (HS-H(O)). By having a core containing the rubber composition including the acid and/or the salt (d), the spin of the golfball is suppressed, and the flight distance is increased upon a shot with a driver ... . The cited reference fail to disclose these features or these unexpected advantages. 8 Appeal2017-008369 Application 13/906,839 Br. 9 (citing Spec. Tables I-7 to I-9). However, as explained supra, Appellants' argument must be commensurate in scope with the claim language, and here, claim 1 does not require the acid and/ or the salt ( d) to form or control the linear hardness, nor are the advantages of the golf ball claimed. Appellants' argument does not identify, with any specificity, errors in the Examiner's factual findings regarding the claim limitations, as set forth supra. Appellants also argue that regarding "unexpected superior results, the claimed invention only needs to be compared to the closest prior art and not a combination of references." Br. 9 (citing Manual of Patent Examining Procedure (MPEP) 716.02(e)(III)). Appellants conclude that because Hayashi, "the primary reference," fails to disclose component ( d), the claimed invention should be compared to a comparative example without component ( d) and not a combination of references. Id. Here, as discussed infra, the Examiner stated a prima facie case of obvious, pursuant to 35 U.S.C. § 103(a), and therefore, we agree that Appellants' evidence of unexpected results must compare the claimed invention with the closest prior art, which may or may not be the primary reference as stated in the Examiner's rejection. See MPEP 716.02(e) III, 9th ed., Jan. 2018. Regardless, Hayashi' s failure to disclose the claimed component (d) is not dispositive as to whether Appellants' evidence demonstrates that the results are unexpected; instead, such a comparison merely demonstrates that a difference exists. In other words, Appellants must show that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 9 Appeal2017-008369 Application 13/906,839 1992). Here, Appellants have failed to submit evidence of unexpected results, other than to point out that claimed component ( d) is missing from Hayashi. 4 Appellants' conclusory statement that "the claimed invention achieves unexpected and unpredictable results over the closes prior art" is insufficient to overcome the Examiner's prima facie case of obviousness. Br. 10. Appellants conclude that, in view of their arguments presented supra, "the cited references fail to disclose all of the claim limitations of claim 1," and therefore, the Examiner has failed to establish a prima facie case of obviousness. Br. 9. We disagree for the reasons discussed supra. Referring to the "exemplary rationales" (A) to (G), as set forth in Section 2143 of the MPEP, Appellants also conclude that "the cited references or the knowledge in the art provide no proper reason or rationale that would allow one of ordinary skill in the art to arrive at the claimed invention." Br. 9-10. However, Appellants' generic argument does not apprise us of error in the rationale articulated by the Examiner, as set forth supra. Specifically, Appellants do not provide any argument or evidence as to why Reiter's disclosure to optionally add an acid and/or salt, as discussed supra, is not representative of a "(B) Simple substitution of one known element for another to obtain predictable results." Br. 9. 4 Furthermore, although considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) ("[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness"). 10 Appeal2017-008369 Application 13/906,839 Accordingly, we sustain the Examiner's rejection of independent claim 1. Appellants chose not to present separate arguments for the patentability of claims 3, 4, 9, 10, and 21-23, and therefore, we also sustain these claims. Br. 10. Dependent claim 2 4 Claim 24, which depends from independent claim 1, recites "wherein a difference between (Hi-Hs) between the hardness Hi and the hardness Hs is equal to or greater than 4.1 but equal to or less than 4.9 ." Br. 3 (Claims Appendix). Aside from the arguments presented and addressed supra for the patentability of independent claim 1, Appellants do not dispute that the Examiner has set forth a prima facie case of obvious for claim 24. Rather, Appellants argue that the claimed range "achieves unexpectedly superior results." Br. 11. In support, Appellants reference the flight distance (m) corresponding to golf balls with an (Hi-Hs) in the claimed range, as set forth in Examples I-8 to I-12 of Table 1-2 of the Specification, as compared to Example 3 of Hayashi, which discloses a hardness difference (Hi-Hs) of 5, which is outside of the claimed range. Id. Appellants conclude that "the cited references fail to predict the unexpectedly superior results achieved by the present invention in terms of flight distance." Id. Appellants submit that because "the claimed invention has achieved unexpected results," Appellants' have overcome the Examiner's obviousness rejection. Id. at 12 ( citations omitted). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); Exparteishizaka, 24 USPQ2d 11 Appeal2017-008369 Application 13/906,839 1621, 1624 (BP AI 1992). Moreover, unexpected results must be established by factual evidence; attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-1 (Fed. Cir. 1997). Thus, the prior art references are not required to predict the unexpectedly superior results, as argued by Appellant. Appellants' conclusory statements are also insufficient to explain why any of the results evidenced in Table 1-2 of the Specification are not only different ( or even better), but are unexpectedly so. Accordingly, we sustain the Examiner's rejection of claim 24. DECISION The Examiner's decision rejecting claims 1, 3, 4, 9, 10, and 21-24 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation