Ex Parte Chrisman

Board of Patent Appeals and Interferences

Jun 16, 2009

09832141 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN W. CHRISMAN, III
__________

Appeal 2009-001028
Application 09/832,141
Technology Center 3700
__________

Decided: 1June 16, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-001028
Application 09/832,141

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

The following claims are representative.
1. A bowling ball, comprising:
a mass comprising a two-part resin; and
a fragrance at least partially dissolved in at least a portion of said two-part
resin of said mass.

9. The bowling ball of claim 1, further comprising a pigment, wherein a
scent of said fragrance correlates with a color of a pigment of or in said two-
part resin.

10. A method for manufacturing a bowling ball, comprising:
providing a liquid material;
blending at least one fragrance directly into said liquid material;
introducing said liquid material and said at least one fragrance into a cavity
of a mold; and
curing said material with said at least one fragrance therein.

20. A method for forming an article of manufacture, comprising:
providing a polyol;
blending at least a fragrance directly into said polyol;
substantially removing gas or gas bubbles from a mixture including said
polyol and said fragrance;
introducing said mixture and a polymerization catalyst therefor into a cavity
of a mold; and
permitting a blend including said polyol and said polymerization catalyst
therefor to at least partially polymerize to form the article of manufacture.

21. The method of claim 20, wherein said blending at least said fragrance
comprises dissolving at least one fragrance in said polyol.
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23. The method of claim 20, wherein said introducing includes blending said
polyol and said polymerization catalyst therefor.

24. The method of claim 20, wherein said introducing said polymerization
catalyst includes introducing isocyante into said cavity with said polyol.

31. The article of claim 27, wherein said two-part resin comprises a two-art
polyurethane.

32. The article of claim 27, further comprising a pigment.

33. The article of claim 32, wherein a scent of said fragrance correlates with
a color of said pigment.

Cited References
Coffey US 4,293,602 Oct. 6, 1981
Shibanai US 4,722,815 Feb. 2, 1988
Anderson US 4,762,493 Aug. 9, 1988

Oleesky et al, Handbook of Reinforced Plastics of the Society of the Plastics
Industry, "Epoxy Resins", pgs. 5 and 71, col. 1, ln. 20, New York, 1993.

Grounds of Rejection
1. Claims 1-3, 5, 7, 8, 10-27, 29 and 31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shibanai in view of Coffey.
2. Claims 9, 32 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shibanai in view of Anderson.

Rejection 1. Claims 1-3, 5, 7, 8, 10-27, 29 and 31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Shibanai in view of Coffey.

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Claims 20-27, 29 and 31-33
We separately address claims 20-27, 29 and 31-33 and claims 1-19.
Unlike claims 1-19, claims 20-27, 29, and 31-33 do not include any
limitation to a bowling ball. Claim 20 is directed to a method for forming an
article of manufacture, comprising: providing a polyol; blending at least a
fragrance directly into said polyol; substantially removing gas or gas bubbles
from a mixture including said polyol and said fragrance; introducing said
mixture and a polymerization catalyst therefor into a cavity of a mold; and
permitting a blend including said polyol and said polymerization catalyst
therefor to at least partially polymerize to form the article of manufacture.

ISSUE
The Examiner concludes that claims 1-3, 5, 7, 8, 10-27, 29, and 31 are
rendered obvious by the combination of Shibani and Coeffey, in view of the
knowledge in the art. In response to Appellant’s evidence and arguments of
commercial success, the Examiner concludes that there is no nexus between
the nature of the product and the claimed product’s commercial success and
that sales data alone is not indicative of commercial success.
Appellant contends that the Examiner has not presented a prima facie
case of obviousness (App. Br. 9), and that the evidence of commercial
success in the record overcomes any prima facie case of obviousness. (App.
Br. 11-12, 14.)
The issues are: Did the Examiner fail to present a prima facie case of
obviousness and err in the determination that there was no nexus between
commercial sales and the claimed product features based on the evidence of
record?

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FINDINGS OF FACT
1. Perfumed additives and perfumed polymers intended for the purpose of
making plastic articles with a fragrance are also well known. Shibanai
teaches compounds to be included in synthetic resin products in order to
enhance their smell. (Ans. 3.)
2. Shibani teaches the use of epoxy (col. 7, ln. 56) which is known in the art
to be available as a one-part or two-part resin. (Ans. 3.)
3. Where the claims call for a two-part resin and the fragrance being
dissolved therein, Shibanai directly teaches (col. 7, ln. 56) that smell can be
added to “epoxy resin coatings.” (Ans. 3.)
4. Epoxy resin is a known “two part” resin. See evidence in the copy of
Handbook of Reinforced Plastics, “Epoxy Resins”, pg. 71, col. 1, ln. 20,
which shows that “cure may be established using materials classed as
hardeners or curing agents,” which include catalysts or crosslinking agents
which copolymerize molecules. (Ans. 3.)
5. Shibanai also teaches that “it is also possible to mix perfume ... with a
synthetic resin compound followed by molding” (col. 1, ln. 26) but that this
“direct addition of perfume ... to synthetic resin compound is not as effective
as it seems” (col. 1, 35). (Ans. 3-4.)
6. Shibanai teaches an improved more effective method of adding fragrance
to a product that includes forming an inclusion compound consisting of
perfume included in cyclodextrin. (Ans. 4.)
7. While Shibanai does not detail the old and known methods of “mixing
perfume” and “direct addition of perfume” that is at least partially dissolved
within the resin, such are considered old when one further considers Coffey
as an example. (Ans. 4.)
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8. Coffey teaches that it is an old expedient and would have been obvious to
mix fragrances to two part resins in the forming of a fragrances polymer
product. (Ans. 4.)
9. Edwards and Wilbert, are further examples of direct mixing of fragrances
with a polyurethane prior to molding. The Examiner finds that the art is
replete with the successful addition of fragrance to two part polymer
products. (Ans. 4.) The motivation is simply to “impart to other polymeric
products pleasant odors” (Wilbert, col. 1, ln. 57). (Ans. 4.)
10. The Examiner finds that the ordinary artisan would have known that
once the catalyst is added to polyol, there a “working time” for the resin is
set when working with a two-part resin known in the polymer art. The
Examiner finds that mixing the fragrance into the polyol, the main
fundamental ingredient thereof, prior to the catalyst, does nothing more than
what would be obvious to the skilled artisan. (Ans. 8.)
11. The Examiner finds that the removal of gas “trapped” in a polymer
mixture is old and inherent in the art of plastics. Failure to do so results in
an inferior final product made by the visibility of “bubbles” that art trapped
after the product has fully cured. (Ans. 8.)
12. The Examiner finds that Appellant is not the inventor of removing
trapped air or gas known throughout the plastics industry. See U.S.
6,525,125, col. 10, ln. 55 which discloses a resin for production of bowling
balls and removing of gas bubbles under a vacuum at col. 11, ln 63. On pg.
8, [0032] of his specification, appellant admits to the use of a vacuum, as
well as “any known techniques.” (Ans. 8.)
13. With respect to claim 21, Shibanai discloses mixing fragrance inclusion
compounds (col. 2, ln. 45) “with a synthetic resin coating” (col. 3, ln. 57) for
“direct addition of perfume(s) ... to a synthetic resin compound” (col 1, ln.
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35). Shibanai discloses “epoxy resin” (col. 7, ln. 56) which is a broad
category of known polyols. (Ans. 9.)
14. The Examiner finds that polyol in the method of manufacturing of a
bowling ball is old. This is admitted by appellant on his specification,
paragraph [0004]. (Ans. 9.)
15. Webster’s New World Dictionary defines “dissolve” as “to merge with a
liquid.” (Ans. 9.)
16. Shibanai teaches a fragrance that is to be “merged” with a liquid
polymer. Shibanai, Examples 1-3, Cols. 8 and 9. The Examiner finds that a
catalyst is well known as being used with polyols to cause polymerization.
(Ans. 9.)
17. The Examiner finds that the use of isocyantes as called for by claim 24
is old. See pg. 5 of the Handbook of Reinforced Plastics, appended to the
Answer. They are mostly known for having a "foaming" affect on plastic
compositions. (Ans. 9.)
18. The Examiner finds motivation to combine the teachings of Shibanai
and Coffey with bowling balls two-part polyurethane bowling balls,
admittedly old and well known, in order to give them a better smell.
Fragrance inclusion products and methods that have been applied in the art
to be known to work on other polymer resin products would be expected to
work on a bowling ball made of similar polymers. The Examiner finds that
the level of ordinary skill necessary to recognize the results is low. The
Examiner concludes that based on the record, there is no new or different
function of the bowling ball of the instant invention and that the results of
adding fragrance to a polymer in a bowling ball give the predictable results
of having the bowling ball smell according to the fragrance added. (Ans. 9.)
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19. The Examiner finds that Appellant has done nothing more than apply
known techniques of including a fragrance into a plastic resin product to
yield a predictable outcome with only common tools of the trade. The
rejection suggests modifying known two-part polyurethane bowling balls,
admitted old by appellant at the bottom of pg. 2 of his specification, using
the products and techniques known in the art as suggested by Shinbanai and
Coffey. The Examiner concludes that one would recognize that known
techniques for imparting a fragrance in plastic products would yield the
same results in other products made of similar polymer materials. (Ans. 10.)

Commercial Success Evidence
20. “Prior to selling scented bowling balls, Storm sold fewer than 150,000
balls each year. In 1998, Storm sold 126,321 bowling balls, representing
gross revenues to Storm of $8,885,669.31. In 1999, Storm sold 145,320
bowling balls, representing gross revenues to Storm of $10,830,114.31.”
(Declaration of John Chrisman, III, June 28, 2005, ¶6.)
21. “Storm began marketing scented bowling balls in 2000. The first sales
occurred on April 12, 2000.” (Declaration of John Chrisman, III, June 28,
2005, ¶7.)
22. “Although scented bowling balls were only sold for seven and a half
months of that year, 59% of the balls we sold in the year 2000 were scented
(93,320 scented bowling balls (gross revenues of $6,510,180.90) of a total of
158,010 total bowling balls (gross revenues of $11,268,527.16) sold that
year). The scented bowling balls quickly began outselling our unscented
bowling balls.” (Declaration of John Chrisman, III, June 28, 2005, ¶8.)
23. After introducing the scented bowling ball, Storm’s sales of bowling
balls jumped significantly. “In 2001, we sold 213,464 bowling balls in all
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(gross revenues of $15,122,945.73), 153,504 (gross revenues of
$11,931,312.18) of which were scented, representing 72% of all of the
bowling balls we sold that year--an increase of 64% in scented bowling ball
sales and 35% of our total bowling ball sales over the previous year. While
our total sales increased significantly, the marketing expenditures did not.”
(Declaration of John Chrisman, III, June 28, 2005, ¶9.)
24. “Since 2001, we have maintained this high level of sales. Our sales of
scented bowling balls, at a rate of around 150,000 or more each year, has
continued to outpace our pre-2000 total bowling ball sales, which topped out
at 145,320. In addition, unscented bowling balls are selling at a rate of about
85,000 or more each year. In total, we have sold about 240,000 or more
bowling balls each year for the past three years.” (Declaration of John
Chrisman, III, June 28, 2005, ¶10.)
25. “As a result of the commercial success of Storm's scented bowling balls
since their introduction, our share of the market in which we participate has
increased to about 28%. Storm has become the number two manufacturer of
bowling balls in the world.” (Declaration of John Chrisman, III, June 28,
2005, ¶11.)
26. “Storm has sold more than 750,000 scented bowling balls, representing
gross receipts to Storm of over $55,000,000.00.” (Declaration of John
Chrisman, III, June 28, 2005, ¶12.)
27. “The commercial success that Storm has experienced by selling scented
bowling balls, as well as the unexpected results of scented bowling balls,
have resulted in a lot of positive press for the company, including news
stories on MSNBC.com (which can be viewed at
http://msnvideo.msn.com/video/default.aspx?replace=ac69fbce-795b-496e-
8069-afba 1464c46c%2Cd2bcab77-7573-4664-b01 b-23
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d80f866906%2Cb040f3 b4- 9d39-4df3-a639-528cca5362c2%2C65071231-
9da7-441 d-af97-bc892000ef4b%2Cf939a571-6194-45f4-a55d-
6969dcf5c278%2C6a701688-4518- 4fl 9-b594-33c278721
bfd%2C0bb3822d-0125-470c-ac0a- 4279c426154b%2C0c863dc8-8618-4fl
f-8db4-8a72ea88476d%2C2e 1 ab49f-83 c5- 4bc3-b30a-
8978d997flc6&autoStart=0), NBC Television (on “Today Show”), Fox
News Channel, ABC Television (on “Good Morning America”), on NBC
Television’s “Saturday Night Live,” and on a variety of local television
stations (including KING5 television in Seattle, Washington, and KUTV and
KSL-TV in Salt Lake City, Utah. The Fox News Channel, KUTV, “Saturday
Night Live,” and “Good Morning America” stories appear on the DVD
enclosed herewith as Exhibit 1. The “Today Show” and KSL-TV news
stories appear on the DVD enclosed herewith as Exhibit 2.” (Declaration of
John Chrisman, III, June 28, 2005, ¶13.)
28. “In addition, several newspaper and magazine articles demonstrate the
commercial success and unexpected results of Storm's scented bowling balls.
For example, Storm's scented bowling balls have been the subject of articles
in the Wall Street Journal (Exhibit 3), USA Today (Exhibit 4), and articles in
a number of other national, regional, and local newspapers and magazines
(Exhibit 5 - Exhibit 10), and received a mention in Sports Illustrated (Exhibit
11).” (Declaration of John Chrisman, III, June 28, 2005, ¶14.)
10. “As many of these articles indicate, Storm's scented bowling balls have
become so popular that fifteen (15) of the top pro bowlers, including
Professional Bowlers' Association (PBA) Hall of Fame member Pete Weber,
use them. In fact, nine (9) of the twenty (20) tournaments in the PBA’s
2003-2004 season were won with Storm’s scented bowling balls.”
(Declaration of John Chrisman, III, June 28, 2005, ¶15.)
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29. “To nearly everyone’s surprise-including plenty of bowlers who laughed
when they got their first whiffs-Storm's scented ball are quite popular,
according to pro-shop owners and others in the business, and they have
turned the little company into one of the hottest players in an otherwise
down-at-the-heels industry.” (New York Times, March 14, 2005.)
30. “Until now, Storm never argued that scents affected performance. But
Steve Kloempken, the company’s technical director, says computerized tests
indicate that the aromatic chemicals give Storm balls a bit of extra hook.
Storm’s odors might not be strong enough to knock down pins, but some
bowlers say the fragrances have occasionally distracted opponents. Others
say the smells relax them, and they’ve gotten in the habit of inhaling before
each throw. Tony Pena, manager of Action Pro Shop says he especially likes
the way the balls smell in his car. ‘It’s like an air freshener.’” (New York
Times, March 14, 2005.)
31. “You know when a professional bowler is looking for a new ball, they
look for things like the radius of gyration and even the flair potential. And
the real professionals look for the smell too.” (NBC News, King5.com, June
21, 2004.)
32. “At any given tournament, Solan has an ‘arsenal’ of eight balls, most of
which are scented. He chooses the ball to use based on specific conditions of
the lane, hook ratings and surface preparations. He has nearly 27 years of
bowling experience and has just recently moved from amateur to
professional status at the regional level.” (Desert News, July 19, 2004.)
33. “But what does the bowler get out of a scented ball? Cerar said he’s
heard two answers. One, it makes a nasty bowling bag smell better. And
two, it has a calming effect on the bowler who steps onto the lane and holds
the ball close to his nose before letting it fly. It puts him in the zone. There’s
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no I in team, but there is an om in aroma.” (Journal Sentinel, February 1,
2005.)
34. “Storm Bowling, the Brigham City, Utah, company that markets
fragranced bowling balls, says 15 top pro bowlers use its high-priced scented
balls (Pete Weber is one of them), and were rolled by the winners in nine of
the last 20 Pro Bowlers Association events.” (SouthcoastToday.com, June
14, 2004.)
35. “Pro bowler Ryan Shafer says he’s been successful with black cherry
and cinnamon scented balls, but one with a black licorice smell had an edge
once because his opponent hated black licorice.” (SouthcoastToday.com,
June 14, 2004.)
36. “The positive press received by Storm in connection with its scented
bowling ball, including that which is referenced in my June 24, 2005
declaration, has not been solicited by Storm. Storm does not have a public
relations expert or firm, and did not retain one to generate any of the press
which has been received by Storm or its scented bowling bail. Neither
Storm, nor any representative of Storm, solicited the newspaper, television,
and other media reports and accounts, including those referenced in my prior
declaration.” (Declaration of John Chrisman, III, March 31, 2006, ¶5.)
37. “The dramatic success of the scented bowling ball, as also described in
my June 24, 2005 declaration, was not the result of an increase in marketing
expenditures. While Storm has gradually increased its overall expenditures
in marketing since 2001, the increases have followed the surprising success
of the scented bowling ball; they did have not preceded that success. It is
clear from our sales and marketing expenditure history that Storm has only
been able to increase its expenditures because it first had increased sales
revenues from the scented bowling ball. This is also evidenced by the fact
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that the percentage of all balls sold by Storm which were scented balls
increased significantly without a corresponding emphasis in our marketing
of the scented balls.” (Declaration of John Chrisman, III, March 31, 2006,
¶6.)
38. “The unexpected and surprising success of the scented balls can only be
attributed to the unexpected and surprising market acceptance of the scented
balls.” (Declaration of John Chrisman, III, March 31, 2006, ¶6.)
39. “Bowling ball performance is critical to most purchasers of bowling
balls. For example, most bowlers are concerned with the ‘hook’ of a ball
across the hardwood bowling lane. This comes from the spin of the ball, but
is impacted by the friction.” (Declaration of John Chrisman, III, March 31,
2006, ¶7.)
40. “Accordingly, bowling ball manufacturers are reluctant to add materials
to a manufacturing process which may impact the performance or hook of
the ball. Storm was surprised to find that adding a fragrance to its bowling
balls did not adversely affect the balls’ performance. There is even some
evidence that it enhances the performance by increasing the move on the
hook of the ball at the back end of the lane.” (Declaration of John Chrisman,
III, March 31, 2006, ¶7.)
41. “The unexpected success of the scented bowling balls, and at least the
absence of an adverse effect on performance (if not a possible enhancement
of the balls’ performance) is evidenced by the surprising acceptance of the
balls by professional bowlers. As also described in my June 24, 2005
declaration, at least fifteen (15) of the top pro bowlers, including
Professional Bowlers' Association (PBA) Hall of Fame member Pete Weber,
use Storm's scented bowling balls. The professionals are so concerned with
performance that they would not use a ball that impacted their success
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negatively in any way.” (Declaration of John Chrisman, III, March 31,
2006, ¶8.)

PRINCIPLES OF LAW
An invention that would have been obvious to a person of ordinary
skill at the time of the invention is not patentable. As reiterated by the
Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the
framework for the objective analysis for determining obviousness under 35
U.S.C. § 103 is stated in Graham v. John Deere Co. Obviousness is a
question of law based on underlying factual inquiries. The factual inquiries
enunciated by the Court are as follows:
(1) Determining the scope and content of the prior art;
(2) Ascertaining the differences between the claimed invention and the
prior art; and
(3) Resolving the level of ordinary skill in the pertinent art.
In addition, objective evidence, sometimes referred to as “secondary
considerations” (e.g., commercial success, long-felt but unsolved needs,
failure of others, unexpected results) relevant to the issue of obviousness
presented by the Applicant must be evaluated.
The question of obviousness must be resolved on the basis of these
factual determinations. While each case is different and must be decided on
its own facts, the Graham factors, including secondary considerations when
present, are the controlling inquiries in any obviousness analysis. As stated
by the Supreme Court in KSR, “While the sequence of these questions might
be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
407 (2007). The obviousness analysis “need not seek out precise teachings
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directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S.
398, 418, 127 S. Ct. 1727, 1741 (2007). This “person of ordinary skill is
also a person of ordinary creativity, not an automaton.” Id. at 1742.
With respect to commercial success as a secondary indicator of
nonobviousness, “evidence related solely to the number of units sold
provides a very weak showing of commercial success, if any.” In re Huang,
100 F.3d 135, 140 (Fed. Cir. 1996). Moreover, “a nexus is required between
the sales and the merits of the claimed invention.” Huang at 140. That is,
for commercial success of a product embodying a claimed invention to have
true relevance to the issue of nonobviousness, that success must be shown to
have in some way been due to the nature of the claimed invention, as
opposed to other economic and commercial factors unrelated to the technical
quality of the patented subject matter. Cable Electric Products, Inc. v.
Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985).
Moreover, “[w]hen prima facie obviousness is established and
evidence is submitted in rebuttal, the decision-maker must start over.” In re
Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Hedges, 783 F.2d 1038,
1039 (Fed. Cir. 1986) (“If a prima facie case is made in the first instance,
and if the applicant comes forward with reasonable rebuttal, whether
buttressed by experiment, prior art references, or argument, the entire merits
of the matter are to be reweighed”).

ANALYSIS
Claims 20, 21, 23, 24, and 31
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Appellant contends that Shibanai and Coffey do not suggest either a
bowling ball with a two-part resin or method of forming an article of
manufacture that includes use of a polyol and a polymerization catalyst for
the polyol (Br. 10) and that there is no motivation to combine the cited
references. (Br. 11.)
We are not convinced by Appellant’s argument. Shibanai discloses
that epoxy is known in the art to include one and two part resins. (FF 2, 3, 4,
14.) Appellant has present no evidence showing that the use of a two part
epoxy resin would not have been obvious, given the disclosure by Shibani
(FF 2, 3, 4, 14). As to the motivation to combine Shibanai and Coffey, we
agree with the Examiner that addition of fragrance to polymer, in any
product form is old as evidence by both Shibanai and Coffey which are
analogous art and related to the claimed subject matter.
With respect to claim 20, Appellant argues that “both Shibanai and
Coffey lack any teaching or suggestion of “substantially removing gas or gas
bubbles from a mixture including [a] polyol and [a] fragrance.” (App. Br.
10.) We are not persuaded by this argument. Appellant has admitted in the
Specification at page 8, [0032] that techniques are known for removing gas
bubbles from escaping a liquid, including the use of a vacuum. (FF 11, 12.)
The obviousness analysis “need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418, 127 S.
Ct. 1727, 1741 (2007). This “person of ordinary skill is also a person of
ordinary creativity, not an automaton.” Id. at 1742. The Specification
evidences that one of ordinary skill in the art would know how to remove
gas bubbles from liquid in the manufacture of polyols. (FF 12.)
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Regarding claim 21, Appellant argues that Shibanai and Coffey do not
teach dissolving a fragrance in a polyol. (App. Br. 10.) However, Shibanai
teaches merging a fragrance in a polyol. (FF 16.)
With respect to claim 23, Appellants argue that Shibanai and Coffey
do not teach blending a polymerization catalyst with a polyol. (App. Br. 10.)
Shibanai teaches a fragrance incorporated into an epoxy resin
(expoxidized polyolefin). (FF3.) It is known in the art that epoxy resins may
be hardened with a catalyst. (FF 4.) Therefore, we are not persuaded by
Appellant’s arguments.
With respect to claim 24, Appellant argues the cited references fail to
teach the incorporation of an isocyanate. (App. Br. 11.) However,
isocyanates are known antifoaming agents known to incorporated in plastics.
FF17. “[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the relevant question is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007). We find the incorporation of isocyanates into plastic is a
predictable use of a known element according to its established function.
Previously presented arguments are argued for claim 31. (App. Br.
11. Shibanai discloses a polyurethane resin at col. 7, ll. 54-57. For the
reasons herein, based on the facts in evidence, we find that the Examiner has
presented a prima facie case of obviousness for the subject matter of claim
31, which has not been rebutted by Appellant’s arguments of record.
In the present case, we do not find that Appellant’s evidence of
commercial success is commensurate with the scope of claim 20.
“[O]bjective evidence of nonobviousness must be commensurate in scope
with the claims.” In re Lindner, 457 F.2d 506, 508 (CCPA 1972).
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Appellant’s Declaration evidence does not show commercial success or
unexpected results for any product made by the claimed method for forming
an article of manufacture. There is no evidence of record supporting
commercial success for any product, other than a bowling ball. Because
claim 20 is significantly broader in scope than the evidence of commercial
success presented, we do not find the evidence of commercial success
proffered overcomes the prima facie case of obviousness made by the
Examiner. The obviousness rejection of claims 20-27, 29 and 31-33 is
affirmed.

Claims 1-19
We find that Appellant’s evidence of commercial success provides a
nexus between increased product sales and the nature of the claimed
product.
The facts herein support a nexus between the fragrance in the claimed
bowling ball and its desirability and associated increased sales. (FF 29, 31,
32, 33, 34, 36.) In particular, several news articles indicated that the balls
were purchased by amateur and professional bowlers because of the scent.
(FF 29, 31, 32, 33, 34, 36.) In addition, the evidence of record shows that
increased sales were not the result of increased marketing. (FF 23-27, 37,
38.) In our view, the evidence of record shows that increased sales were
significant and associated with the nature of the product, the bowling ball’s
scent.
Thus, when entire merits of the prima facie case are reweighed in
view of Appellant’s evidence of commercial success, we conclude that
evidence of record supports Appellant’s position and the obviousness
rejection of claims 1-19 is reversed.
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Appeal 2009-001028
Application 09/832,141

Rejection 2. Claims 9, 32 and 33 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Shibanai in view of Anderson.

ADDITIONAL FINDING OF FACT
42. Anderson teaches that it is known in the art to add a fragrance related to
the color of the object. (Abstract.)
43. Anderson teaches that it is known to impregnate a wax crayon or clay
with color. (Anderson, claims 1 and 6.)
44. Shibanai discloses adding a pigment, zeolite, to a synthetic resin
product. (Col. 1, ll. 45.)

ANALYSIS
Appellant contends that the Examiner has not established a prima
facie case of obviousness for claims 9, 32 and 33, and argues that these
claims are allowable because independent claims 1 and 27 are allowable for
reasons previously argued by Appellant. (App. Br. 15.)
We agree with the Examiner that applying a pigment to a polymer
resin to give them color is old and well known and that the evidence of
record in view of the skill of one of ordinary skill in the art establishes a
prima facie case of obviousness. For the reasons discussed herein, we find
the evidence of commercial success convincing as to claim 9. We do not
find the evidence of commercial success to be convincing for claims 32 and
33 for the reasons already discussed.
The rejection of claim 9 is reversed. The rejection of claims 32 and
33 is affirmed.

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Appeal 2009-001028
Application 09/832,141
SUMMARY
The obviousness rejections of claims 1-19 is reversed. The
obviousness rejections of claims 20-27, 29 and 31-33 is affirmed.

AFFIRMED-IN-PART

Ssc:

BRICK G. POWER
TRASK, BRITT & ROSSA LAW OFFICES
P.O. BOX 2550
SALT LAKE CITY, UT 84110
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