Ex Parte Endo et al

Patent Trial and Appeal Board

Dec 10, 2014

11172793 (P.T.A.B. Dec. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SEIICHIRO ENDO and
MASATOSHI YOKOTA
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Appeal 2012-011381
Application 11/172,793
Technology Center 3700
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Before JUSTIN T. ARBES, ANNETTE R. REIMERS, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 16, 17, 20, and 21. Appeal Br. 3. Claims 1–15, 18, 19,
and 22 have been cancelled. Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to multi piece golf balls having a
core, a mid layer and a cover.” Spec. 1.1 Independent claim 16, reproduced
below, is illustrative of the claims on appeal:
16. A golf ball which comprises a spherical
core, a mid layer positioned outside of the core,
and a cover positioned outside of the mid layer,
wherein the principal component of the base
polymer of said mid layer is an ionomer resin,
said mid layer having a hardness Hm as
measured with a Shore D type hardness scale of
equal to or greater than 62,
said cover having a hardness Hc as
measured with a Shore D type hardness scale of
equal to or less than 55,
said cover having a thickness of equal to or
less than 0.4 mm,
wherein a reinforcing layer which comprises
a thermosetting resin as a base polymer is provided
between the mid layer and the cover, and the
thermosetting resin is a two component cured
epoxy resin obtained by curing a bisphenol A type
epoxy resin with a polyamide amine curing agent
or a denatured product of the polyamide amine
curing agent, or a two-component cured urethane
resin obtained by a reaction of a base material
containing a polyol component with a curing agent
containing polyisocyanate or a derivative of the
polyisocyanate.

1 Because Appellants’ Specification does not provide line or
paragraph numbering, this opinion refers to page numbers.
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EVIDENCE RELIED ON BY THE EXAMINER
Yamagishi US 5,779,563 Issued July 14, 1998
Fushihara US 2003/0104880 A1 Published June 5, 2003
Higuchi US 6,652,392 B2 Issued Nov. 25, 2003

REJECTIONS ON APPEAL
Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higuchi, Fushihara, and Yamagishi. Ans. 4–5.
Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higuchi and Fushihara. Ans. 5–6.

ANALYSIS
The rejection of claims 16 and 17 under 35 U.S.C. § 103
The Examiner relies on the teachings of Higuchi for disclosing the
basic structure of the claimed golf ball, including the first three limitations of
claim 16. Ans. 4–5. The Examiner relies on Yamagishi for disclosing a
“three layer golf ball comprising an outer cover layer with a thickness of at
least 0.3 mm,” thereby satisfying the fourth limitation of claim 16. Id. at 5.
As to the final limitation of claim 16, the Examiner finds that “Higuchi
discloses [that] the adhesion or reinforcing layer may be an epoxy but does
not disclose the epoxy composition claimed by Applicant. Fushihara teaches
an adhesion layer comprising an epoxy resin [with the claimed composition].
. . . One of ordinary skill in the art would have modified the layer for
increased adhesion between the two adjacent layers . . . .” Id. (citing
Fushihara ¶ 22).
Appellants assert that “one skilled in the art would have no proper
reason or rationale to replace the composition of the adhesive layer of
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Higuchi with the epoxy composition of the epoxy coating film (2a) of
Fushihara ’880.” Appeal Br. 15. More specifically, Appellants first argue
that one of ordinary skill in the art would not have combined Higuchi and
Fushihara because those references are directed to “entirely different
objectives.” Id. According to Appellants, the epoxy coating film disclosed
in Fushihara is a “paint layer” not an “adhesive layer” such as that disclosed
in Higuchi. Id. at 13–14. Second, Appellants assert that the location of the
adhesive layer in Higuchi and the epoxy coating film in Fushihara are
different because “the epoxy coating layer in Fushihara ’880 is on top of the
ionomer resin cover” while “the adhesive layer in Higuchi ’392 is located
below the cover.” Id. at 16. Based on that premise, Appellants argue that it
would be improper to incorporate the epoxy composition taught by
Fushihara at the location taught by Higuchi. Id. Third, Appellants allege the
use of hindsight by the Examiner in combining the cited references. Id. at
17.
Appellants also generally assert that the Examiner erred in combining
the cited references by allegedly failing to assess all the factors under
Graham v. John Deere Co., 383 U.S. 1 (1966), including by failing to
“consider[] the unexpected results in Applicants’ specification, which is
required per the last Graham factor.” Appeal Br. 15–16.
The Examiner responds that the teaching or reason to combine
Higuchi and Fushihara can be found in both of those references, which teach
the use of an epoxy adhesive to improve the durability of the ball. For
example, in addition to the teaching from Fushihara regarding “increased
adhesion” discussed above (Ans. 5), the Examiner also relies on the
following teaching from Fushihara:
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The inventor of the present invention has found
that: an epoxy coating film prepared by curing an
epoxy resin with a polyamide curing agent has
superior compatibility with and adhesion to both
the ionomer resin cover and the polyurethane clear
coating film: and the use of specific polyol imparts
a superior durability against the deformation when
hit . . . .
Fushihara ¶ 11, quoted in Ans. 8. Further, the Examiner relies on Higuchi’s
teaching that the adhesive layer between the cover inner layer and cover
outer layer is “for the purpose of improving the durability against strikes.”
Ans. 7 (quoting Higuchi, col. 8, ll. 38–41) (emphasis omitted). As to the
allegedly different location of the epoxy layers in Higuchi and Fushihara, the
Examiner responds that “the location of the epoxy adhesion layer in
Fushihara is not relevant” because Higuchi “discloses the exact location
claimed in the instant invention.” Ans. 7.
In the Reply Brief, Appellants argue that Yamagishi “is improperly
cited and combined with the other two references” because it “has nothing to
do with the objectives or teachings of Fushihara ’880, Higuchi ’392 and/or
the claimed invention.” Reply Br. 7. Appellants also assert that paragraph
11 from Fushihara (cited by the Examiner at Ans. 8) does not show a linkage
between adhesion and durability because the statement regarding “superior
durability” “refers to the use of polyol in the outer most layer of its clear
coating film, and not the epoxy coating or paint film.” Reply Br. 7.
Appellants also argue in the Reply Brief that “the initial burden by the
Examiner of establishing a prima facie basis . . . has not been met” because
“neither . . . the Examiner’s Answer [n]or the latest Office Action . . .
mentions Appellants’ unexpected results.” Id. at 9. Appellants assert that
Inventive Example 6 in the Specification demonstrates “unexpectedly
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superior spin rate over Comparative Example 1.” Id. at 8 (citing Spec. 28,
Table 2).
We turn first to Appellants’ arguments regarding the alleged lack of a
teaching or reason to combine Higuchi and Fushihara. We disagree with
Appellants’ assertion that one of ordinary skill in the art at the time of the
invention would not have combined these two references because they
allegedly have “entirely different objectives.” Appeal Br. 15. Both
references teach a common purpose for both the optional adhesive layer in
Higuchi and epoxy coating 2a in Fushihara: improving the durability of a
golf ball by maintaining adhesion between an outermost layer and the layer
beneath.
Specifically, Higuchi discloses the use of epoxy resin base adhesives
to adhere an outermost polyurethane layer (“cover outer layer 3”) to an
underlying ionomer resin layer (“cover inner layer 2”). Higuchi, col. 2, ll.
33–40; id., col. 8, ll. 38–44; id., Fig. 1; see also Ans. 6–7. Higuchi teaches
that this adhesive layer is “for the purpose of improving the durability
against strikes.” Higuchi, col. 8, ll. 38–41; see also Ans. 7–8. Similarly,
Fushihara teaches the use of epoxy coatings (including the claimed epoxy) to
adhere an outermost polyurethane layer (“polyurethane clear coating film
2b”) to an underlying ionomer resin layer (the unnumbered “ionomer resin
cover”). See Fushihara ¶ 11; id., Fig. 1; see also Ans. 5–6, 8. Although
paragraph 11 in Fushihara does not necessarily teach the linkage between
adhesion and durability, a paragraph cited by Appellants (Appeal Br. 15, 16)
teaches that linkage: “If the mark intervenes between the polyurethane clear
coating film and the epoxy coating film, the durability of the mark can be
ensured due to the good adhesion between the polyurethane clear coating
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film and the epoxy resin coating film.” Fushihara ¶ 40 (emphasis added).
Although Appellants assert that the “concept” or “purpose” in Fushihara is
different because that reference discusses protecting a mark (e.g., identifying
numbers) underneath the outermost layer (Appeal Br. 15–16; Reply Br. 5–
6), we find the underlying teaching to be the same—improving adhesion of
the outermost layer to the layer beneath to enhance durability.
Accordingly, we are not persuaded by Appellants’ argument that one
of ordinary skill in the art at the time of the invention would not have
combined Fushihara and Higuchi because of allegedly different “objectives.”
We also are not persuaded by Appellants’ argument that a person of
ordinary skill in the art at the time of the invention would not or could not
have combined the teachings of Higuchi and Fushihara because the location
of the adhesive layer in Higuchi and the epoxy coating film in Fushihara are
allegedly different. First, as noted by the Examiner and not disputed by
Appellant, Higuchi teaches the location of the “reinforcing layer” recited in
claim 16. We are not persuaded by Appellants’ reasoning why both Higuchi
and Fushihara must teach the claimed location. Second, contrary to
Appellants’ assertions, we find the teachings of the locations of the adhesive
layer in Higuchi and the epoxy coating film in Fushihara to be similar if not
the same. As discussed above, both references disclose the use of an epoxy
to adhere an outermost polyurethane layer to an underlying ionomer resin
layer. See Higuchi, col. 2, ll. 33–40; id., col. 8, ll. 38–44; Fushihara ¶¶ 11,
40. The fact that Fushihara identifies the underlying ionomer resin layer as a
“cover” while Higuchi identifies the outer polyurethane layer as a “cover”
does not void the common teachings of those references.
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Further, we are not persuaded by Appellants’ assertions regarding
hindsight. As discussed above and as relied upon by the Examiner, the
common objectives and teachings of Higuchi and Fushihara provide a
“rational underpinning to support the legal conclusion of obviousness” not
present in a hindsight-based analysis. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 419 (2007).
We turn now to Appellants’ assertions regarding unexpected results.
We need not address the substance of those assertions, however, for
procedural reasons. Here, Appellants did not, until filing their Reply Brief,
set forth their arguments with sufficient clarity to permit the Examiner to
fully respond. For example, in the only sentence in the Appeal Brief that
mentions unexpected results, Appellants fail to identify what “results” in the
Specification are allegedly “unexpected.” See Appeal Br. 16 (“Applicants
also note the Examiner has not considered the unexpected results in
Applicants’ specification, which is required per the last Graham factor.”).
Further, Appellants in their Appeal Brief did not identify any specific
statements in the Specification that demonstrate unexpected results.
Appellants had the initial burden to put forth evidence of objective
considerations. See, e.g., In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997)
(“With a factual foundation for its prima facie case of obviousness shown,
the burden shifts to applicants to demonstrate that their claimed [invention]
possess an unexpected property over the prior art.”). Only if Appellants had
put forth such evidence in a timely manner (which they did not) could the
Examiner have erred by failing to consider such evidence. See, e.g., In re
Huai-Hung Kao, 639 F.3d 1057, 1067 (Fed. Cir. 2011) (“[W]hen secondary
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considerations are present, though they are not always dispositive, it is error
not to consider them.”) (emphasis added). Thus, we do not agree with
Appellants’ implicit assertion that the Examiner had the burden to rebut
objective considerations (such as unexpected results) even when such
assertions had not yet been made by Appellants. Reply Br. 8.
And a party cannot, as Appellants did here, wait until filing a Reply
Brief to make such assertions. See 37 C.F.R. § 41.41(b)(2) (2012) (“Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer . . . will not
be considered by the Board for purposes of the present appeal, unless good
cause is shown.”).2
For these reasons, we affirm the Examiner’s rejection of claim 16.
Because Appellants did not separately argue the patentability of claim 17
(which depends from claim 16), we also affirm the rejection of that claim.

The rejection of claims 20 and 21 under 35 U.S.C. § 103
Appellants rely on the same arguments regarding patentability of
independent claim 20 and dependent claim 21, both of which include the
same “wherein a reinforcing layer” limitation recited in claim 16. See
Appeal Br. 18. For the same reasons discussed above, we affirm the
rejection of claims 20 and 21.

2 For this same reason, we will not address Appellants’ argument, first
made in the Reply Brief, that Yamagishi was improperly combined with
Higuchi and Fushihara. Reply Br. 7.
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CONCLUSION
For the reasons set forth above, we AFFIRM the Examiner’s rejection
of claims 16, 17, 20, and 21 under 35 U.S.C. § 103.

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

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