Ex Parte Cheng et al

Patent Trial and Appeal Board

Apr 20, 2017

12318883 (P.T.A.B. Apr. 20, 2017)

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.
12/318,883 01/12/2009 Hsin Cheng 09-0229/201882-378555 7971
126323 7590 04/24/2017
Honigman Miller Schwartz and Cohn LLP/Nike
350 West Michigan Avenue, Suite 330
Kalamazoo, MI 49007
EXAMINER
GORDEN, RAEANN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
Patents@honigman.com
HV andenBrink@honigman.com
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HSIN CHENG, CHIEN-HSIN CHOU,
HIDEYUKIISHII, and YUTAKA KABESHITA
Appeal 2015-006589
Application 12/318,88s1
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hsin Cheng et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1, 2, 4—10, and 21—34.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 According to Appellants, Nike, Inc. is the real party in interest. Appeal Br.
3 (filed Oct. 30, 2014).
2 Claims 3 and 11—20 are canceled. Id. (Claims App. A-l and A-2).
Appeal 2015-006589
Application 12/318,883
INVENTION
Appellants’ invention relates “to a golf ball having long flight distance
and good hitting feel.” Spec. 1,11. 5—6.
Claims 1, 22, 25, and 31 are independent. Claim 1 is illustrative of
the claimed invention and reads as follows:
1. A golf ball, comprising:
a core made from a thermoplastic material, and having a
coefficient of restitution between about 0.78 and about 0.89, the
coefficient of restitution of the core being at least 0.01 higher
than a coefficient of restitution of said golf ball;
an intermediate layer enclosing said core and made from
a thermoset material;
a cover layer enclosing said intermediate layer, wherein
said cover layer consists of a single cover layer and said cover
layer having a surface hardness greater than 65 Shore D and
less than 75 Shore D;
wherein the golf ball has a compression deformation
between 2 mm and 4 mm; and
wherein the golf ball has a specific gravity between 0.97
and 1.2.
REJECTIONS
The following rejections are before us for review:
(I) The Examiner rejected claim 24 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(II) The Examiner rejected claims 1, 2, 4—10, 21—30, 32, and 33
under 35 U.S.C. § 103(a) as being unpatentable over Sullivan (US
2009/0181801 Al, pub. July 16, 2009 (hereinafter “Sullivan ’801”).3
3 We note Appellants refer to Sullivan ’801 as “Sullivan I.” See Appeal Br.
13.
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Application 12/318,883
(III) The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Sullivan ’801 and Ohama (US 6,986,718 B2, iss.
Jan. 17, 2006).
(IV) The Examiner rejected claims 31 and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Sullivan ’801 and Sullivan (US
2006/0128904 Al, pub. June 15, 2006 (hereinafter “Sullivan ’904”).4
ANALYSIS
Rejection I
The Examiner finds that the claimed ranges for zinc acrylate, zinc
oxide, and barium sulfate are not fully disclosed, because although the
minimum and maximum limits of the ranges are disclosed, the intermediate
values are not. See Final Act. 2 (mailed June 9, 2014).
Appellants do not set forth any arguments with respect to this
rejection. See Appeal Br. 13—26. Accordingly, we summarily sustain the
rejection of claim 24 under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description requirement.
Rejection II
Appellants have not presented arguments for the patentability of
claims 2, 4—10, 21—30, 32, and 33 apart from claim 1. See Appeal Br. 14—
24. Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select
claim 1 as the representative claim to decide the appeal of the rejection of
4 We note Appellants refer to Sullivan ’904 as “Sullivan II.” See Appeal Br.
13.
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Application 12/318,883
these claims, with claims 2, 4—10, 21—30, 32, and 33 standing or falling with
claim 1.
The Examiner finds that Sullivan ’801 discloses substantially all of
the limitations of independent claim 1, including a thermoplastic inner core,
a rubber outer core (intermediate layer), and a cover layer. Final Act. 3.
The Examiner further takes the position that because “the materials [of the
inner core] are identical [to Appellants’ core,] the properties associated with
the core will also be identical, such as the compression deformation and the
COR [(coefficient of restitution)].” Id. Based on Sullivan ’801 having the
same COR of the golf ball, the Examiner considers that “the relationship
between the COR of the core and golf ball is satisfied.” Id. The Examiner
also finds that because “the materials for the cores are identical and the outer
two layer materials are equivalent^] the specific gravity and compression [of
the golf ball] will also be equivalent.” Id.
Appellants argue that it is well known in the art that “golf ball
performance is highly unpredictable” because “thicknesses of the individual
layers will contribute to the COR of the layer, and the specific combinations
of the layer thicknesses and materials will contribute to the COR of the golf
ball as a whole.” Appeal Br. 15. Thus, Appellants contend that “a feature
like COR cannot be adequately predicted based solely on the [chosen]
materials.” Id. According to Appellants, even though Sullivan ’801
provides lists of possible materials, Sullivan ’801 “is simply not instructive
enough for one with ordinary skill to read the Sullivan [’801] disclosure and
come away with the claimed combination of materials to achieve the
claimed properties, especially COR, which requires a thickness component
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to calculate.” Id. at 15—16. In other words, Appellants contend that “the
Examiner’s assertion that an identical material would yield the claimed
COR” is not supportable because the “COR relationship would only be true
if the layer sizes and construction were also identical.” Id. at 16.
Claim 1 requires a thermoplastic core (inner core of Sullivan ’801), a
thermoset intermediate layer (outer core of Sullivan ’801), and a single
cover layer. See Appeal Br. A-1. We agree with the Examiner that Sullivan
’801 discloses “specific materials for each layer,” namely, a HPF 1000 or
HPF 2000 thermoplastic inner core, a rubber (thermoset) outer core
(intermediate layer), and a single cover layer made from ionomer blends.
See Ans. 6—7; see also Sullivan ’801 11, 13, 28, 30, 34. We further agree
with the Examiner that Appellants’ Specification likewise describes the use
of HPF 1000 or HPF 2000 as the core layer material. See Ans. 6—7 (citing
Spec. 3,11. 22—23, Table 1). The Examiner is also correct in that similar to
Appellants’ core diameters of 21, 24, and 28 mm made from HPF 2000,
Sullivan ’801 discloses a HPF 2000 golf ball core having a diameter of up to
25 mm (1 inch). Ans. 7; see also Spec. 8, Table 4; Sullivan ’801 7, 11-
Moreover, the Examiner correctly finds that Sullivan ’801 discloses a golf
ball COR of 0.78 or greater, which is the same as the COR of Appellants’
golf ball. Compare Sullivan ’801,146 with, Spec., Table 4.
Accordingly, because Sullivan ’801 has the same core, intermediate
layer, and cover layer materials, as broadly recited, as well as similar
dimensions for the core layer and the golf ball COR, the Examiner has a
reasonable expectation that the COR of the core will be at least 0.01 higher
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than the COR of the golf ball. Appellants have not provided any persuasive
evidence or technical reasoning to the contrary.
Appellants further argue that
Sullivan [’801] is improperly applied because it teaches so many
specific materials that a person of ordinary skill in the art cannot
know which material, in which thickness, and in what
combination with materials and thicknesses from the other layers
to select in order to produce the claimed golf ball of the present
application.
Reply Br. 5. Appellants assert that because Sullivan ’801 discloses so many
possible combinations, it “is simply not instructive enough to lead a person
of ordinary skill in the art to the claimed golf ball without undue
experimentation.” Id. at 5—6. Appellants contend “that merely disclosing
lists of possible materials for the various layers without providing additional
teachings to guide the selection to build an actual golf ball-let alone the
claimed golf ball-is legally insufficient to support an obviousness rejection.”
Id. at 6.
Although we appreciate that Sullivan ’801 discloses a wide variety of
materials for each of the layers, nonetheless, Sullivan ’801 also discloses
preferred materials. For example, Sullivan ’801 discloses that the center
(core) is preferably formed “from a highly resilient thermoplastic polymer
such as a highly neutralized polymer (‘HNP’) composition. Particularly
suitable thermoplastic polymers include Surlyn ® ionomers, Hytrel®
thermoplastic polyester elastomers, and ionomeric materials sold under the
trade names DuPont® HPF1000 and DuPont® HPF 2000.” Sullivan ’801
111 (emphasis added); see also Ans. 6. Sullivan ’801 further discloses
preferably using polybutadiene for making the outer core layer (intermediate
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layer) and an ionomeric composition for making the single cover layer. See
Sullivan ’801 Tflf 13, 28, 34. Similarly, Appellants’ Specification describes
HPF 1000 or HPF 2000 as a “primary material” for making core layer 10,
polybutadiene for making intermediate layer 20, and Surlyn® 8940 and
Surlyn® 9910 (ionomer resins) for making the single cover layer. See Spec.
3,11. 22—23, Spec. 5,11. 8—12, and Tables 1—3. As such, the Examiner has a
good reason to select HPF 2000 from the above-noted list of thermoplastic
polymers, because it is preferred by Sullivan ’801 to have a desired COR.
See Sullivan ’801,127 (choosing a core material “as long as the material
meets the desired coefficient of restitution.”); see also In re Susi, 440 F.2d
442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure
of the prior art was “huge, but it undeniably include [d] at least some of the
compounds recited in appellant’s generic claims and it is of a class of
chemicals to be used for the same purpose as appellant’s additives”).
Likewise, the Examiner has a good reason to select polybutadiene for
making intermediate layer 20, and Surlyn® 8940 and Surlyn® 9910,
(ionomer resins) for making the single cover layer as Sullivan ’801 discloses
that they are preferred materials.
Appellants also argue that the Examiner’s rejection is based on an
obvious to try rationale that cannot be maintained because this rationale
requires predictability and the golf ball art is highly unpredictable. See
Appeal Br. 17—19. According to Appellants, “a person of ordinary skill [in
the art] would have to test various permutations in the hopes of finding an
optimal result that has not been defined except in the Appellants’
specification.” Id. at 20. Appellants assert that because Sullivan ’801 does
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not provide direction, a person of ordinary skill would have to resort to a
“guess-and-check” method to search 53,667,753 permutations. See id. at
21-22.
We are not persuaded by Appellants’ argument because Sullivan ’801
gives sufficient guidance to a person of ordinary skill in the art with respect
to choosing the materials, amongst the many possible choices recited in
Sullivan ’801, to make the claimed core, intermediate layer, and cover layer
that would lead to a golf ball having the claimed properties (COR,
compression deformation, and specific gravity). See, e.g., In re Kubin, 561
F.3d 1351, 1358—60 (discussing “obvious to try” situations in light of In re
0’Fcirrell, 853 F.2d 894, 903 (Fed. Cir. 1988) and KSRInt’l Co. v. Teleflex
Inc., 550 U.S. 398, 421). Here, Sullivan ’801 discloses preferred materials,
such as HPF 1000 and HPF 2000 for making the core, polybutadiene rubber
for making the intermediate layer, and an ionomeric composition for making
a single cover layer. Sullivan ’801 Ull, 13, 28, 34. Moreover, as noted
above, Sullivan ’801 discloses that using these materials in making a golf
ball having a core diameter of up to an 1 inch (25 mm) results in a golf ball
COR of greater than 0.78, which is the same as the COR of Appellants’ golf
ball. As such, a person of ordinary skill in the art would at least initially
choose the preferred materials disclosed in Sullivan ’801, hence would be
choosing from a finite number of identified solutions, rather than arbitrarily
choosing materials disclosed in Sullivan ’801, as Appellants contend.
Lastly, Appellants argue that “using the same material in a similar
configuration does not necessarily produce the same result,” and, thus, the
COR value will not inherently be the same. See Reply Br. 6—7. Appellants
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explain that “the method of manufacturing the core will affect the
performance of the core.” Id. at 7. Appellants further take note with the
Examiner’s position that “small differences in core diameters between the
instant invention and Sullivan [’801] is negligible in regards to COR.” Id. at
8.
We do not find these arguments to be persuasive. As we have noted
above, because Sullivan ’801 has the same core, intermediate layer, and
cover layer materials, as broadly recited, as well as similar dimensions for
the core layer (25 mm diameter) and the golf ball COR, the Examiner has a
reasonable expectation that the COR of the core will be at least 0.01 higher
than the COR of the golf ball. Furthermore, we note that like Appellants’
golf ball, the golf ball of Sullivan ’801 is made by injection molding.
Compare Spec. 4,11. 14—15, with Sullivan ’801,146. Thus, the Examiner is
on solid footing to shift the burden to Appellants to prove that the golf ball
of Sullivan ’801 does not possess the properties of claim 1. In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). Moreover, attorney
argument such as the effect of the injection molding temperature on the core
COR (see Reply Br. 7) cannot take the place of evidence in the
record. EsteeLauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
Accordingly, for the reasons set forth above, the rejection of claim 1
as unpatentable over Sullivan ’801 is sustained. Claims 2, 4—10, 21—30, 32
and 33 fall with claim 1.
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Rejection III
The Examiner finds that “Sullivan [’801] discloses the outer core
layer is made from a rubber composition comprising polybutadiene, zinc
acrylate, zinc oxide, and barium sulfate, and peroxide but does not disclose
the quantities.” Final Act. 5. Nonetheless, the Examiner finds that Ohama
teaches a rubber composition comprising polybutadiene, 10-50 parts zinc
acrylate, 0.1 to 3 parts peroxide, and 1 to 50 parts barium sulfate and zinc
oxide. Id. The Examiner concludes that “[o]ne of ordinary skill in the art
would vary the ranges for optimal results.” Id.
Appellants assert that “in the golf ball art, an ‘optimal result’ is at best
a mutable target.” Appeal Br. 22. Appellants argue that the rejection is
based on impermissible hindsight reconstruction because “[t]he only
discemable reason that a person of ordinary skill in the art would be
prompted to vary the ranges disclosed in Sullivan (’801) and substitute from
Ohama ... is found in the teachings of the Appellants’ [Specification.” Id.
at 23.
Appellants’ arguments are not persuasive because Ohama discloses
why each element is used in a particular amount in making the core of a
solid (hard) golf ball. Specifically, Ohama discloses the range of 10-50
parts zinc acrylate is used so that the core is not too soft, but still has good
shot feel. See Ohama, col. 4,11. 36-48. Ohama further discloses that
peroxide is used in the range of 0.1 to 3.0 parts for correct vulcanization and
good shot feel. See id. at col. 4,11. 53—63. Ohama also discloses that barium
sulfate and zinc oxide are conventionally used in the core of solid golf balls
and are used in the range of 1 to 50 parts. See id. at col. 5,11. 16—26.
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As such, we agree with the Examiner that because Ohama teaches the
quantities of each ingredient and their respective effect on the resulting golf
ball, “varying the quantities of the ingredients is within the capabilities of
one skilled in the art and is done by routine experiment for the desired
performance.” Ans. 8. We further agree with the Examiner that it would
have been obvious for a person of ordinary skill in the art to use the ranges,
as taught by Ohama, to obtain the “desired performance” of a solid golf ball.
Id.
Therefore, we are not persuaded that the Examiner relied on
impermissible hindsight, as Appellants urge, but rather on the knowledge of
those skilled in the art at the time of the invention. Thus, for these reasons,
we likewise sustain the rejection of claim 24 as unpatentable over Sullivan
’801 and Ohama.
Rejection IV
The Examiner finds that Sullivan ’801 discloses substantially all of
the limitations of claim 31, but does not disclose an inner core having a
diameter of 28 mm. Final Act. 5—6. Nonetheless, the Examiner finds that
“Sullivan ’904 teaches a dual core with a center diameter up to 1.5 inches or
38.1 mm.” Id. at 6; see also Sullivan ’904 114. The Examiner concludes
that “[o]ne of ordinary skill in the art would vary the dimensions as an
obvious design choice.” Final Act. 6.
Appellants argue that Sullivan ’801 teaches a small core with a
maximum diameter of 25.4 mm and that “it’s unclear why a person of
ordinary skill in the art would even look to Sullivan [’904] for a larger core
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size.” Appeal Br. 23—24. Appellants assert that because Sullivan ’801 has
an upper limit to the size of the center, Sullivan ’801 “teaches away from
larger centers than those disclosed.” Id. at 24—25.
The Examiner responds that Sullivan ’904 “is cited as a secondary
reference to teach [that an] inner core diameter larger than 25 mm is not new
or innovative and is common in the art.” Ans. 7. The Examiner takes the
position that “[vjarying the dimensions of the layers is within the capabilities
of one skilled in the art.” Id.
Merely asserting that a change is an obvious design choice is
insufficient. See Cutsforth, Inc. v. MotivePower, Inc., 636 Fed. Appx. 575,
578 (Fed. Cir. 2016) (unpublished) (stating that a particular placement of an
element is a design choice does not make it obvious; a reason must be
offered as to why a skilled artisan would have made the specific design
choice). Although we appreciate that Sullivan ’904 broadly discloses that a
core having a diameter of up to 38.1 mm (1.5 inches) is known in the art, the
Examiner does not adequately explain why a person of ordinary skill in the
art would have enlarged the diameter of the inner core of Sullivan ’801
beyond the upper limit of 25.4 mm disclosed by Sullivan ’801 to the claimed
value of 28 mm.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 31 and 34 as unpatentable over Sullivan ’801 and Sullivan ’904.
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DECISION
The Examiner’s decision to reject claim 24 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is affirmed.
The Examiner’s decision to reject claims 1, 2, 4—10, 21—30, 32, and
33 under 35 USC 103(a) is affirmed.
The Examiner’s decision to reject claims 31 and 34 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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