DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Jun 22, 2020

2019006559 (P.T.A.B. Jun. 22, 2020)

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.
15/353,280 11/16/2016 Hironori TAKIHARA 3673-0577PUS1 7796
2292 7590 06/22/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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 HIRONORI TAKIHARA,
KOHEI MIMURA, KOSUKE TACHIBANA, and
KAZUYA KAMINO
Appeal 2019-006559
Application 15/353,280
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, 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 1–7 and 10–12. See Final Act. 1. 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 Br. 1.
Appeal 2019-006559
Application 15/353,280

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CLAIMED SUBJECT MATTER
The claims are directed to a golf ball having dimples. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A golf ball comprising a core, a mid layer positioned outside
the core, and a cover positioned outside the mid layer, wherein
the golf ball has a plurality of dimples on a surface thereof,
the dimples have a plurality of different diameters,
[(1)2] a percentage So of a sum of areas of the dimples
relative to a surface area of a phantom sphere of the golf ball is
equal to or greater than 81.0%,
[(2)] a percentage Rs of a number of the dimples each
having a diameter of equal to or greater than 9.60% but equal to
or less than 10.37%, of a diameter of the golf ball, relative to a
total number of the dimples, is equal to or greater than 50%,
[(3)] a percentage Rs’ of a number of the dimples each
having a diameter of equal to or greater than 10.10% but equal to
or less than 10.37%, of the diameter of the golf ball, relative to
the total number of the dimples, is equal to or greater than 50%,
[(4)] each hemisphere of the golf ball has a dimple pattern
that includes three units that are rotationally symmetrical with
respect to each other,
[(5)] the dimple pattern of each unit includes two small
units that are mirror-symmetrical with respect to each other,
[(6)] the golf ball dimples satisfy the following
mathematical formula (2.1):
Rs ≥ -2.5 * So + 273 (2.1), and
[(7)] the golf ball dimples satisfy the following
mathematical formula (2.5):
Rs’ ≥ -2.2 * So + 252 (2.5).

2 Appellant enumerates the claimed limitations as indicated above, in
brackets. Appeal Br. 4. For convenience, we shall also refer to these
numbered limitations.
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REJECTIONS
Claims 1–7 and 10–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Watanabe (US 2011/0143861 A1, published June 16,
2011), Isogawa (US 2013/0324318 A1, published Dec. 5, 2013), and Fitchett
(US 2012/0046132 A1, published Feb. 23, 2012). Final Act. 3.
Claims 1, 6, 7, and 10–12 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1–8 of
copending Application No. 15/338,889.3 Final Act. 9.
OPINION
Claim 1:
The Examiner finds that, viewing the dimple features shown in Table
3, Watanabe discloses a golf ball having a percentage So of limitation (1), a
percentage Rs of limitation (2), and dimples satisfying a mathematical
formula of limitation (6). Final Act. 3 (citing Watanabe ¶¶ 135, 136, 141;
Tables 3, 4). In regard to a percentage Rs’ of limitation (3), the Examiner
finds that the 234 dimples of No. 2 in Table 3 would meet this limitation;
however, these dimples would not satisfy the mathematical formula of
limitation (7) because “[a]n occupation ratio of 81 % generates a value for
the right hand side of the claimed inequality expression of 73.8 being
slightly greater than 71.” Id. at 3–4 (emphasis added). In other words, the
Examiner finds that Watanabe’s golf ball comes close to meeting both

3 The double-patenting rejection is not contested and therefore not further
addressed herein. See Appeal Br. 10. “Once the provisional rejection has
been made, there is nothing the examiner and the applicant must do until the
other application issues.” In re Mott, 539 F.2d 1291, 1295–96 (CCPA 1976);
see also MPEP § 804(I).
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limitations (3) and (7). The Examiner, however, finds that in view of the
dimple pattern D2 of Table 6 of Isogawa, this reference discloses “[d]imple
diameters meeting the claimed range of equal to or greater than 10.10 to
10.37 %,” i.e., limitation (3). Id. at 4. The Examiner acknowledges that
“Isogawa teaches 222 dimples having dimples with diameters within the
range plus 28 dimples having a diameter of 4.5 mm, which is slightly outside
the range” but reasons that “[a] total of 250 within the claimed di[a]meter
range in a pattern of 324 dimples would provide a ratio of 77 %, which is
greater than or equal to 71.6, see [Isogawa] Table 6, pattern D2.” Id.
(emphasis added). In other words, the Examiner finds that Isogawa’s golf
ball meets limitation (7) and comes close to meeting limitation (3).
The Examiner, thus, concludes that it would have been obvious to
modify Watanabe’s golf ball to provide “a dimple pattern having 77 % of the
dimple diameters within the claimed range or nearly within the claimed
range, as taught by Isogawa,” to provide “an aerodynamically effective
dimple pattern” and “yield the predictable result of improving the flight
performance of the ball.” Final Act. 4. The Examiner also acknowledges that
Watanabe’s modified golf ball does not have “28 of 250 dimples having a
diameter which is a fraction of a millimeter larger than the diameter range as
claimed.” Id. Consequently, the Examiner concludes that it would have been
obvious “to decrease the diameter of 28 dimples, to meet the claimed range,
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
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involves only routine skill in the art.” Id. (citing In re Aller, 220 F.2d 454,
456 (CCPA 1955)).4
Appellant contends that Watanabe “fails to disclose or suggest any of”
limitations (4), (5), and (7). Appeal Br. 5. Appellant also contends that
Fitchett “fails to disclose or suggest any of” limitations (1)–(3), (6), and (7).
Id. at 6. Appellant further contends that Isogawa “fails to disclose or
suggest” limitations (4) and (5). Id. at 7.5 These contentions are unpersuasive
in that they attack the references individually. See Final Act. 3–4; Ans. 4.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (internal citation omitted).
Appellant further contends that “significant patentable distinctions
exist over Watanabe [] which fails to adequately support prima facie
obviousness against claim 1.” Appeal Br. 5. The Examiner correctly
responds that

4 The Examiner relies on Fitchett for limitations (4) and (5). Final Act. 5.
5 To the extent Appellant is arguing that there is no motivation to combine
the teaching of Fitchett to the teaching of Watanabe, such argument is also
unavailing. See Appeal Br. 6 (arguing that an artisan “would not attempt to
modify Watanabe [] in view of Fitchett” and that “[t]he only basis would be
improper hindsight reconstruction”). The Examiner correctly responds that
“a symmetrical arrangement of dimples [of Fitchett] provides uniform ball
flight performance, in any axis of rotation. As noted above[,] Watanabe
states that the inventive dimple catalog may be combined with known
dimple patterns.” Ans. 4; see also Fitchett Abstr., ¶¶ 5, 151; Fig. 3A.

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Watanabe teaches [the] claimed features related to the catalog of
dimples, noting the exemplary dimple catalog, displayed in
Table 3, including 234 dimples within the claimed range of 10.10
to 10.37 % of ball diameter, and group, No. 1, of 12 dimples
having a diameter greater than 10.37% of the ball diameter, being
4.6 mm instead of 4.42 mm, placing those 12 dimples outside the
claimed range by a difference of 0.18 mm, diameter. In order to
satisfy the claimed inequality expression, the value Rs’ must be
equal to or greater than 73.8%. A modification of Watanabe, to
reduce the diameter of the 12 dimples by 0.18 mm would place
246 of the 330 dimples within the claimed range and yield an Rs’
value of 74.5%. Watanabe teaches the claim limitations directed
to the catalog of dimples, except for the single feature noted
above.
Ans. 3. In other words, there are no “significant patentable distinctions” over
Watanabe’s golf ball and the golf ball of claim 1 in terms of dimple sizes
and numbers.
According to Appellant, Example 1 in Table 7 of Appellant’s
Specification is an embodiment of the subject matter of claim 1 and
“exhibits advantages[]” in the “flight distance over Comparative Example
1.” Appeal Br. 5. Appellant then directs our attention to Table 2 of the
Sajima Declaration,6 which shows flight test results of Appellant’s Samples
1 and 2 versus Sample 3, which represents the flight test result of Isogawa’s
golf ball. Id. at 7. According to Appellant, “the comparative tests of the
Sajima Declaration show advantageous flight distance properties for the
Sample 1 and Sample 2 embodiments of the claimed invention over those of
Sample 3.” Id. at 8.

6 Declaration of Takahiro Sajima, under 37 C.F.R. § 1.132, dated February
21, 2018.
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We observe that, contrary to Appellant’s assertion, viewing the entire
data in Table 7, Appellant’s Specification does not show significant
advantages in the flight distance of Appellant’s golf balls (230.0 m for Ex. 1
and 230.2 m for Ex. 2) over the flight distance of the Comparative Examples
(229.2 m for “Com. Ex. 1”; 230.0 m for “Com. Ex. 2”; and 230.1 m for
“Com. Ex. 3”). Spec. 44, Table 7. Further, the Examiner correctly responds
that, in regard to the Sajima Declaration, “[t]he difference in flight distance
between Sample 2 and Sample 3 is less than one-half meter.” Ans. 5.
Notably, Sample 1 and Sample 2 (Appellant’s golf ball) have a flight
distance of 230.0 m and 229.5 m, respectively, whereas for Sample 3
(Isogawa’s golf ball) has a flight distance of 229.1 m. See Sajima
Declaration, Table 2. Thus, the data from the Sajima Declaration also does
not show significant advantages in the flight distance of Appellant’s golf
balls over the flight distance of Isogawa’s golf ball.
Appellant contends that Isogawa’s “dimple design falls outside”
limitation (7). Appeal Br. 6. Referring to Table 2 of the Sajima Declaration,
Appellant notes that Sample 1 and Sample 2 (Appellant’s golf ball) have
rearranged Rs’ values of 7.11 and 0, respectively, whereas Sample 3
(Isogawa’s golf ball) has a rearranged Rs’ value of -31.77. Id. at 7. Appellant
argues that in viewing the D2 dimple pattern of Isogawa’s Table 6, “only the
‘B’ dimples satisfy the Rs’ definition, while the ‘C’ dimples at 10.07% fall
below the 10.10% minimum of Rs’, which means that 122/324 or 38%,
satisfy Rs’ which is less than the 50% minimum.” Id. at 8.
The Examiner correctly responds that
Sample 3 configured according to the catalog of dimples, D2,
disclosed by Isogawa, and repeated on page 8 of appellant’s
brief, includes 122 dimples within the claimed range for Rs’ and
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100 dimples having a diameter lower than the claimed range by
1/100 of a millimeter (10.10 % of ball diameter being 4.31 mm).
An alteration of the diameter of the 100 dimples would place the
ball well within the claim limitation for Rs’. The ball exhibits an
Rs’ related figure significantly different from Samples 1 and 2,
when the calculation is performed on the basis of 122 dimples
being within the claimed range. Essentially, the claimed
inequality expression including Rs’, eliminates dimples differing
very little in structure, from dimples used in the calculation. The
calculated value of Rs’ will differ markedly between two golf
balls having a very slight difference in their dimple catalogs.
Ans. 5 (emphases added). Thus, the Examiner explains that the difference in
the rearranged Rs’ values shown in Table 2 of the Sajima Declaration is due
to the exclusion of dimples in Isogawa’s golf ball that have diameters, which
only slightly fall outside the claimed range.
Appellant contends that the discussion above concerning Isogawa
would suggest that Isogawa “fails to provide any suggestion as to which
direction [an ordinary artisan] should head in order to ‘optimize.’” Appeal
Br. 8. Appellant argues that an ordinary artisan “would more likely modify
[Isogawa’s] dimple pattern D2 away from the claimed invention and closer
to the other disclosed dimple patterns, i.e. patterns D1 and D3 to D12, which
are all farther removed from the claimed invention.” Id. at 9.
As discussed above, the flight test results comparing other golf balls
with those of Appellant’s do not suggest a significant difference, i.e.,
unexpected results. See also Ans. 5 (explaining that “the test data does not
support a finding of criticality commensurate with the scope of the claims”).
Further, Appellant does not direct us to any portion of Isogawa that
discredits, criticizes, or disparages Appellant’s dimple size ranges. Like our
appellate reviewing court, “[w]e will not read into a reference a teaching
away from a process where no such language exists.” DyStar Textilfarben
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GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
Further, “where 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).)
In the Office Action, the Examiner reasons that it would have been
obvious to combine the teachings of the cited prior art to have “an
aerodynamically effective dimple pattern, to yield the predictable result of
improving the flight performance of the ball.” Final Act. 4. Portions of
Watanabe, identified by the Examiner, that demonstrate dimple size and
dimple numbers as result-effective variables––thus supporting the
Examiner’s proposed modification––are: (1) “to further enhance the
aerodynamic properties and improve the distance, as in ordinary golf balls, it
is preferable for numerous dimples to be formed on the surface of the cover.
By optimizing such parameters as the number of dimple types and the total
number of dimples . . . .” (Watanabe ¶ 135 (emphasis added); see also id. ¶
136); and (2) “[n]or is any particular limitation imposed on the geometrical
arrangement of the dimples; use may be made of a known arrangement,
. . . from the standpoint of reducing variability in the flight of the ball,
preferred use may be made of a dimple arrangement . . . .” (Id.
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¶ 139). Moreover, in the Answer, the Examiner correctly responds that “at
paragraph 0104, Isogawa indicates that turbulization may be promoted by
providing a relatively low standard deviation of dimple diameters, which
would have motivated alteration to reduce the difference in dimple
diameters.” Ans. 4. We agree with the Examiner that a “minimal degree of
alteration [is] required, in order to modify the disclosed dimple catalogs to
meet the claimed limitations” and that the cited prior art “represents a
disclosure of the general conditions of the invention and the necessary
modification is within that contemplated by the cited case law.” Id. at 5.

Claims 2–7 and 10–12:
Appellant contends that “[t]hese claims recite additional features
including one or more features selected from layer hardness, layer
dimensions and dimple dimensions.” Appeal Br. 10.
The Examiner correctly responds that “Watanabe teaches that the golf
ball parameters driving the calculations associated with Claims 2 and 3 are
result effective variables and that a person of ordinary skill in the art would
have been motivated to optimize the parameters using values within the
disclosed ranges.” Ans. 6. Further, Appellant’s mere reiteration of recited
language of the claims does not inform us of error in the Examiner’s reliance
on the cited art. See 37 C.F.R. § 41.37(c)(1)(iv) (statements that merely point
out what a claim recites are not considered to present an argument for
separate patentability of the claim); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (Rule 41.37 requires more than recitation of the claim
elements and a naked assertion that the elements are not found in the prior
art).
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CONCLUSION
The Examiner’s rejection of claims 1–7 and 10–12 over prior art is
affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 10–12 103 Watanabe,
Isogawa, Fitchett
1–7, 10–12

TIME PERIOD FOR RESPONSE
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