Ex Parte MIMURA et al

Patent Trial and Appeal Board

Sep 19, 2018

14788311 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/788,311 06/30/2015
2292 7590 09/21/2018
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Kohei MIMURA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3673-0541PUS1 3504
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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 KOHEI MIMURA and TAKAHIRO SAJIMA
Appeal2017-009418
Application 14/788,311 1
Technology Center 3700
Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
PAUL J. KORNICZKY, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant is the Applicant, Dunlop Sports Co. Ltd., identified by the
Appeal Brief as the real party in interest. Br. 1.
Appeal2017-009418
Application 14/788,311
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim, with claims 2-9 depending
therefrom. Claim 1 is reproduced below:
1. A golf ball comprising a core and a cover positioned
outside the core, wherein
the golf ball has a large number of dimples on a surface
thereof,
the cover has a Shore D hardness of equal to or greater
than 30 but equal to or less than 50,
the golf ball has an amount of compressive deformation of
equal to or greater than 3. 0 mm but equal to or less than 5. 0 mm,
the amount of compressive deformation being measured under
conditions of an initial load of 98 Nanda final load of 1274 N,
and
the golf ball meets the following mathematical formula (I):
0.806 < ((LI + L2) /2) < 0.920 (I),
where: LI represents a ratio (CLI/CDI) of a lift
coefficient CL 1 relative to a drag coefficient CD 1, the lift
coefficient CL 1 and the drag coefficient CD 1 being measured
under conditions of a Reynolds number of 1.290 x 105 and a spin
rate of 2820 rpm; and L2 represents a ratio (CL2/CD2) of a lift
coefficient CL2 relative to a drag coefficient CD2, the lift
coefficient CL2 and the drag coefficient CD2 being measured
under conditions of a Reynolds number of 1. 771 x 105 and a spin
rate of 2940 rpm.
REJECTIONS
1. Claims 1 and 3-9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Shinohara (US 2010/0062876 Al, published Mar. 11,
2010) and Maehara (US 5,935,023, issued Aug. 10, 1999).
2. Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over
Shinohara, Maehara, and Moriyama (US 2002/0119838 Al, published Aug.
29, 2002).
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Appeal2017-009418
Application 14/788,311
OPINION
Shinohara/Maehara - Claims 1 and 3-9
Appellant argues claims 1 and 3-9 as a group. Br. 4--9. 2 We select
claim 1 as representative. Claims 3-9 stand or fall with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv). Appellant does not dispute the majority of the
Examiner's findings or the rationale provided for combining the teachings of
Shinohara with those of Maehara. Rather, Appellant focuses its arguments
on whether the combination of references teaches the recited "compressive
deformation of equal to or greater than 3.0 mm but equal to or less than 5.0
mm, the amount of compressive deformation being measured under
conditions of an initial load of 98 Nanda final load of 1274 N," and,
whether "the golf ball meets the ... mathematical formula (I)." See Br. 4--9.
With respect to the "compressive deformation" limitation, the
Examiner finds that Shinohara teaches "compressive deformation of equal to
or greater than 3.0 but equal to or less than 5.0 mm, measured under an
initial load of 98 Nanda final load of 1275 N." Final Act. 3 ( citing
Shinohara ,r 184 ). Indeed, the cited portion of Shinohara states that "[ t ]he
ball has a deflection, expressed as the deformation of the ball when
compressed under a final load of 1,275 N (130 kgf) from an initial load of 98
N (10 kgf), of ... at least 3.0 mm, but generally not more than 5.0 mm."
Shinohara ,r 184. Although the final load is 1 N higher in Shinohara, the
Examiner explains that "[i]t is inherent that a golf ball would exhibit a
slightly larger compression value when measured using a greater final load."
Ans. 2. That is, because Shinohara states "not more than 5.0 mm" of
2 Appellant did not file a Reply Brief to address the positions taken by the
Examiner in the Answer, leaving many of those positions unrebutted.
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Appeal2017-009418
Application 14/788,311
deflection at 1275 N, it necessarily follows there would also be "not more
than 5.0 mm" of deflection at a lower load ( e.g., 1274 N).
Appellant responds by contending that "one of skilled in the art would
not have been led to the recited amount of compressive deformation through
routine experimentation and optimization." Br. 5. That is not persuasive of
Examiner error when the reference, itself, as noted above, teaches the recited
compressive deformation. 3 Appellant additionally disputes that the recited
"compressive deformation" is inherent in Shinohara. Id. at 6-7. However,
Appellant's contention in that regard fails to identify any error in the
Examiner's determination, alleging, instead, that
the Examiner can not simply assert that the golf ball in the cited
references may have the claimed amount of compressive
deformation, and fails to provide facts and technical reasoning
that reasonably support that the golf ball in the cited references
must and always have the claimed amount of compressive
deformation.
Id. at 7. We see no reason why the application of less force would produce
more compress10n.
As for the "mathematical formula (I)," Appellant also focuses on
whether the Examiner has established that (LI + L2) / 2 is a result-effective
variable for purposes of routine optimization. See Br. 7-9. The problem
with that argument is that, again, the Examiner does not need routine
3 We appreciate that Appellant's contention may be in response to the
Examiner's additional statement regarding ball hardness being a result-
effective variable. See Final Act. 3. That statement, however, is not fatal to
the rejection because, as noted above, in the Answer, the Examiner
additionally relies on the teachings of Shinohara, itself, explaining that the
recited "compressive deformation" is inherent based on Shinohara' s
teachings. See Ans. 2.
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Appeal2017-009418
Application 14/788,311
optimization to establish unpatentability. There is no dispute that the
"mathematical formula (I)" is defined by lift and drag characteristics
("CLl," "CL2," "CDl," "CD2") of the golf ball under specified conditions.
That is, the "mathematical formula (I)" is a functional limitation. Claim 1
recites that those lift and drag characteristics are "measured," meaning that
those characteristics are determined empirically based on testing the golf
ball to determine its performance. The Examiner explains that "the prior art
golf ball includes the structural features of the claimed invention and that the
ball of the prior art is capable of performing as claimed, namely ... by
meeting the claimed inequality expressing a range for the value of (L 1 +
L2)/2." Ans. 3.
Although the lift and drag characteristics are caused by the underlying
structure of the golf ball, Appellant chose to claim those features
functionally. A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 439 F.2d 210,212
(CCP A 1971) (there is nothing intrinsically wrong with drafting claims that
define something by what it does rather than what it is). Yet, choosing to
define an element functionally, i.e., by what it does, carries with it a risk:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
Swinehart, 439 F.2d at 213.
Here, the Examiner has a reasonable basis to believe the functional
limitation defined by the "mathematical formula (I)" is present in the prior
art, which is sufficient to shift the burden to Appellant to show the golf ball
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Application 14/788,311
of Shinohara, as modified by Maehara, does not possess the functional
limitations of claim 1. Other than the "compressive deformation" limitation,
Appellant does not dispute the Examiner's findings with respect to the
teachings of the recited golf ball structure in the asserted prior art or the
rationale for their combination. In fact, Shinohara, itself, teaches each of the
structural limitations recited in claim 1, as well as the further details of those
features recited in claims 3-10. See Final Act. 3-5 (citing Shinohara ,r,r 14,
7 4, 180, 184 ). Appellant does not even respond, let alone rebut in any
persuasive manner, the Examiner's determination that the golf ball of
Shinohara has the characteristics defined by the "mathematical formula (I)."
Accordingly, we are not apprised of error in the rejection of claims 1
and 3-9.
Shinohara/Maehara/Moriyama - Claim 2
Claim 2 depends from claim 1, and the Examiner rejects that claim as
unpatentable over the combined teachings of Shinohara, Maehara, and
Moriyama. See Final Act. 5. Appellant does not present separate arguments
with respect to that rejection, relying, instead, on the arguments discussed
above relative to claim 1, which we do not find persuasive. Br. 9-10.
Accordingly, we are not apprised of Examiner error in the rejection of claim
2.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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