SUMITOMO RUBBER INDUSTRIES, LTD.

Patent Trials and Appeals Board

Jul 2, 2021

2020004382 (P.T.A.B. Jul. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
16/004,618 06/11/2018 Kohei MIMURA 009700-SR0003 5695
78198 7590 07/02/2021
Studebaker & Brackett PC
8255 Greensboro Drive
Suite 300
Tysons, VA 22102
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
info@sbpatentlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KOHEI MIMURA and TAKAHIRO SAJIMA
__________

Appeal 2020-004382
Application 16/004,618
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6. Claim 7 has been canceled.
Appeal Br. 11 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Sumitomo
Rubber Industries, Ltd. Appeal Brief (“Appeal Br.”) 2, filed Feb. 19, 2020.
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Application 16/004,618
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to golf balls.” Spec. 1:12.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A golf ball having a plurality of dimples on a surface
thereof, wherein
a standard deviation Su of areas of all the dimples is not
greater than 1.62 mm2 , and
a standard deviation Pd of distances L between dimples of
all neighboring dimple pairs is not greater than 0.458 mm.
Appeal Br. 11 (Claims App.).

THE REJECTIONS
I. Claims 1, 2, and 4–6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sajima (US 2015/0031477 A1, published Jan. 29, 2015)
and Aoyama (US 2004/0132551 A1, published July 8, 2004).
II. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
Sajima, Aoyama, and Inoue (US 2015/0119168 A1, published Apr. 30,
2015).

ANALYSIS
Rejection I – Obviousness over Sajima and Aoyama
Appellant does not offer arguments in favor of dependent claims 2
and 4–6 separate from those presented for independent claim 1. Appeal Br.
2–9. We select claim 1 as the representative claim, and claims 2 and 4–6
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
As to claim 1, the Examiner finds that Sajima discloses a golf ball
having a plurality of dimples on a surface thereof, wherein a standard
Appeal 2020-004382
Application 16/004,618
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deviation Su of areas of all the dimples is not greater than 1.62 mm2. Non-
Final Act. 3 (citing Sajima ¶ 10, Table 3).2 The Examiner notes that “Sajima
teaches that dimples may be arranged advantageously by designing a dimple
pattern having a center-to-center distance as small as possible to increase the
occupation ratio” and thus, “suggest[s] that neighboring dimple pairs may be
set in close proximity and indicat[es] that dimple coverage is a result
effective variable.” Id. (citing Sajima ¶ 96). The Examiner acknowledges
that “Sajima does not report a standard deviation of distances between
dimples in neighboring dimple pairs.” Id. The Examiner, however, finds
that: (1) “Aoyama teaches a golf ball having dimples arranged to provide a
relatively high percentage of dimple coverage” (id. (citing Aoyama Table
2)); (2) “Aoyama indicates that relatively high dimple coverage improves
aerodynamic efficiency and is a result effective variable” (id. (citing
Aoyama ¶ 65)); and (3) Aoyama’s “dimple arrangement reflects that dimples
of all neighboring dimple pairs are nearly coincident” (id. (citing Aoyama
Fig. 5; emphasis added)). The Examiner explains, “[i]t follows that [the golf
ball of Aoyama’s Figure 5 has a] standard deviation of distances between
dimples of all neighboring dimple pairs [of] a small value.” Id. The
Examiner concludes that it would have been obvious to an ordinarily skilled
artisan to modify the golf ball of Sajima to have a “standard deviation of
distances between dimples of all neighboring dimple pairs being a small
value, as taught by Aoyama,” to provide “a packed dimple arrangement to
yield the predictable result of increasing dimple coverage.” Id. The
Examiner concedes that Sajima does not “set[] forth the range of values for
the standard deviation of distances between dimples of all neighboring

2 Non-Final Office Action (“Non-Final Act.”), dated Aug. 19, 2019.
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dimple pairs” as “not greater than 0.458 mm and less than 0.4 mm.” Id. at
3–4. The Examiner, however, reasons that it would have been obvious to an
ordinarily skilled artisan to further modify the golf ball of Sajima “to
provide a standard deviation range as claimed, since it has been held that
where the general conditions of a claim are disclosed in the prior art,
discovering the optimum or working ranges involves only routine skill in the
art.” Id. at 4 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Appellant contends that “neither Sajima nor Aoyama discloses a
range of acceptable standard deviations Pd of distances L between dimples
of neighboring dimple pairs, much less, the claimed range of standard
deviations Pd of distances L between dimples of neighboring dimple pairs
being not greater than 0.458 mm.” Appeal Br. 5–6 (emphases added).
Appellant, here, incorrectly characterizes claim 1 as requiring a range
of values. Claim 1 only requires a golf ball having two structural
requirements: (1) a standard deviation Su of areas of all the dimples that is
not greater than 1.62 mm2 and (2) a standard deviation Pd of distances L
between dimples of all neighboring dimple pairs that is not greater than
0.458 mm. Appeal Br. 11 (Claims App.). That is, claim 1 does not require a
plurality of golf balls having standard deviations Pd of distances L between
dimples of all neighboring dimple pairs that are from 0 to 0.458 mm. A
single golf ball, having any value from 0 to 1.62 mm2 for its standard
deviation Su and any value from 0 to 0.458 mm for its standard deviation
Pd, would meet the subject matter of claim 1. Thus, we are not persuaded
by Appellant’s contention that neither Sajima nor Aoyama discloses a range
of acceptable standard deviations Pd and a claimed range of standard
deviations Pd.
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Appellant contends that the Examiner incorrectly concludes that “[i]t
follows that the standard deviation of distances between dimples of all
neighboring dimple pairs would be a small value” from the Examiner’s
finding that Aoyama’s “dimple arrangement [in its golf ball as shown in
Aoyama’s Figure 5] reflects that dimples of all neighboring dimple pairs are
nearly coincident.” Appeal Br. 6. Appellant argues that “the Examiner’s
conclusion appears to be based entirely on the assumption that increasing
dimple coverage necessarily results in a sufficiently small standard deviation
Pd of distances L between dimples of ‘neighboring dimple pairs’ to satisfy
the claimed range of ‘not greater than 0.458 mm.’” Id. To demonstrate that
“maximizing the surface area of a golf ball occupied by dimples is not the
same as reducing the distance L between dimples of ‘neighboring dimple
pairs,’” Appellant provides two figures in its Appeal Brief. Id. More
particularly, Appellant’s Figure 1 illustrates four small dimples arranged to
have a land area therebetween of L1x by L1y. Id. Appellant’s Figure 2
illustrates two small dimples and two large dimples (in comparison to the
dimples of Figure 1) arranged to have a land area therebetween of L2x by
L2y. Id. at 7. Appellant argues that although “the dimple diameters in Fig.
2 are larger than the dimple diameters in Fig. 1,” “the land area in Fig. 2 is
smaller than a land area in Fig. 1.” Id.
This argument is not well-taken. First, Appellant’s Figures 1 and 2 in
the Appeal Brief appear to be presented to show that smaller dimple
diameters does not necessarily result in a golf ball that has more surface area
occupied by the dimples. See Appeal Br. 6–7. However, we note that the
surface area occupied by the dimples is not recited in claim 1. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
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claims.”). Further, Appellant does not explain how a standard deviation Pd
is determined in a golf ball having a dimple arrangement of Appellant’s
Figure 1 or a dimple arrangement of Appellant’s Figure 2 to correlate with
the above assertion concerning dimple diameter and surface areas of the
dimples. See Appeal Br. 6–7. Consequently, it is unclear why an
assumption that increasing dimple coverage necessarily results in a
sufficiently small standard deviation Pd of distances L between dimples of
“neighboring dimple pairs” would not satisfy a standard deviation Pd range
of “not greater than 0.458 mm.”
We also note that Appellant’s Figure 2 has different-sized dimples,
whereas Figure 1 has same-sized dimples. See Appeal Br. 6–7. We observe
that claim 1 does not require the golf ball to have different-sized dimples. A
standard deviation is a statistic that measures the dispersion of a dataset
relative to its mean.3 It stands to reason that a standard deviation Su of areas
of all the dimples of 0 (which is not greater than 1.62 mm2) would mean that
the dimples are of the same size. With such dimples of the same size that
are touching each other (i.e., “coincident” (see Non-Final Act. 3)), the golf
ball would have a standard deviation Pd of distances L between dimples of
all neighboring dimple pairs of 0 (which is not greater than 0.458 mm).
Thus, it appears to us that such a dimple arrangement would meet the subject
matter of claim 1.
Second, even when considering golf balls having different-sized
dimples, the Examiner correctly responds that the dimple arrangement
shown in Aoyama’s Figure 5 is relied on and that Appellant’s dimple

3 See https://www.investopedia.com/terms/s/standarddeviation.asp (last
accessed May 21, 2021).
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arrangement in its Figure 2 does not have the same dimple arrangement. See
Ans. 3 (responding that Appellant’s Figures 1 and 2 “depict a dimple
arrangement leaving relatively large unoccupied land areas,” whereas
Aoyama teaches “increas[ing] the dimple coverage by arranging dimples of
multiple sizes according to Figure 5 of Aoyama rather than according to
[A]ppellant’s figures, which leave a significant amount of unoccupied
space”); see also Appeal Br. 6–7.4 As such, Appellant’s contention does not
apprise us of Examiner error.
Appellant next argues that “the adjacent dimples of Aoyama are not
‘neighboring dimple pairs’ according to claim 1 and the present
[S]pecification since the adjacent dimples do not satisfy the conditions set
forth in the [S]pecification” and thus, it is unreasonable for the Examiner to
conclude that the golf ball of Aoyama’s Figure 5 has a standard deviation of
distances between dimples of all neighboring dimple pairs of a small value.
Appeal Br. 7–8.
Appellant’s naked assertion that “the adjacent dimples of Aoyama are
not ‘neighboring dimple pairs’” does not inform us of Examiner error. As
Appellant notes, the Specification discloses that “neighboring dimple pairs”
must meet the following two requirements: (1) a straight line that connects
the centers of these dimples to each other does not intersect any other
dimple, and (2) each of the two common inscribed lines of these dimples
does not intersect any dimple. Appeal Br. 7 (citing Spec. 17:2–9). We note
that requirement (2) above is rather broad. Requirement (2) does not define
“common inscribed lines.” See Spec. 17:8–9; see also generally, Spec. It
appears to us that there could be “common inscribed lines” other than the

4 Examiner’s Answer (“Ans.”), dated Mar. 25, 2020.
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tangent Tg lines depicted in Appellant’s Figures 6 and 8. See Spec. Figs. 6,
8, 10:11–14. Nonetheless, even if we consider the recited “neighboring
dimple pairs” in claim 1 as dimple pairs that meet the above two
requirements with “common inscribed lines” as the diagonal Tg lines
depicted in Appellant’s Figures 6 and 8, we fail to see why two adjacent
dimples that are either touching each other or are very close to touching each
other, as depicted in Aoyama’s Figure 5, do not meet the above two
requirements. We thus fail to see why Aoyama does not disclose
“neighboring dimple pairs.”
Given that Aoyama discloses “neighboring dimple pairs” in its Figure
5, and the “neighboring dimple pairs” either touch each other (i.e.,
“coincident”) or are close to touching each other, we agree with the
Examiner’s assessment that the standard deviation of distances between
Aoyama’s “neighboring dimple pairs” would be a small value. As pointed
out above, if all “neighboring dimple pairs” touch each other, then the
distance between them is 0 and the standard deviation would be also 0. See
also Ans. 4 (discussing that Aoyama’s “neighboring dimple pairs” meet the
two requirements discussed in Appellant’s Specification). Consequently, we
agree with the Examiner’s assessment that the dimple arrangement in
Aoyama’s Figure 5 having an increased dimple coverage would “inherently
reduce the standard deviation of distances between dimples of neighboring
dimple pairs.” Ans. 3; see also id. at 4 (“The dimple arrangement depicted
in Figure 5 of Aoyama shows a closely packed arrangement intended to
increase dimple coverage and consequently the distance between adjacent
dimples [(‘neighboring dimple pairs’)] is generally uniform, suggesting a
relatively small standard deviation of distances between the adjacent dimples
[(‘neighboring dimple pairs’)].”).
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We further observe the following. First, Appellant does not address
the rejection as set forth by the Examiner. Here, the Examiner takes the
position that the standard deviation of distance between “neighboring dimple
pairs” as claimed is obvious because “discovering the optimum or working
ranges involves only routine skill in the art.” Non-Final Act. 4 (citing In re
Aller). In other words, the Examiner determines that the standard deviation
of distance between “neighboring dimple pairs” is a result-effective variable.
See also Ans. 5 (“The [E]xaminer maintains the position that the degree of
dimple coverage is a result effective variable, . . . and a commensurately
small standard deviation of distances between dimples of neighboring
dimple pairs would follow”). Appellant does not appear to dispute this
determination. “[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation”). In re Aller, 220 F.2d at 456. “[T]he discovery
of an optimum value of a variable in a known process is usually obvious.”
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007). The
rationale for determining the optimal parameters for prior art result-effective
variables “flows from the ‘normal desire of scientists or artisans to improve
upon what is already generally known.’” Id. (quoting In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003).)
Second, in regard to claim 1’s requirement, “a standard deviation Pd
of distances L between dimples of all neighboring dimple pairs is not greater
than 0.458 mm,” Appellant directs our attention to Table 3 of the
Specification. Appeal Br. 3–4 (arguing that the golf balls in Appellant’s
Tables have “excellent flight performance”). Although Table 3 shows 4
examples, each having a standard deviation Pd of L that is equal to or less
than 0.458 mm, Table 3 does not provide any data in terms of flight
Appeal 2020-004382
Application 16/004,618
10
performance of golf balls that have a standard deviation Pd of L that is
greater than 0.458 mm. Thus, there is no comparison data to show that the
golf balls in Appellant’s Table 3 do indeed have “excellent flight
performance.” In regard to Appellant’s Table 4, the flight distance of
Comparative Example 1 is 261.4 m, which is better than the flight distance
of Appellant’s Example 5 which is 260.6 m. We thus observe that, contrary
to Appellant’s assertion, viewing the entirety of the data in Tables 3 and 4,
Appellant’s Specification does not show significant advantages in the flight
performance of Appellant’s golf balls. Consequently, we agree with the
Examiner that Appellant has not demonstrated criticality with regard to the
claimed subject matter. See Ans. 5. As such, Appellant has not shown the
occurrence of unpredictable results in regard to the claimed subject matter.
“The combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007). Id. at 416. As such, we
agree with the Examiner that the modification of Sajima’s golf ball with
closely packed dimples as taught by Aoyama would “yield predictable
results.” See Non-Final Act. 3.
In summary, and based on the record presented, we sustain the
Examiner’s rejection of claim 1 as unpatentable over Sajima and Aoyama.
We further sustain the rejection of claims 2 and 4–6, which fall with claim 1.

Rejection II – Obviousness over Sajima, Aoyama, and Inoue
Appellant does not provide any arguments as to the rejection of claim
3. Appeal Br. 9. Accordingly, as we find no deficiencies in the Examiner’s
rejection of claim 1, we likewise sustain the Examiner’s rejection of claim 3,
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11
for reasons similar to those discussed above for claim 1, as unpatentable
over Sajima, Aoyama, and Inoue.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–6 103 Sajima, Aoyama 1, 2, 4–6
3 103 Sajima, Aoyama,
Inoue
3
Overall
Outcome
1–6

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED