Ex Parte Murakami et al

Patent Trial and Appeal Board

Sep 21, 2017

13303217 (P.T.A.B. Sep. 21, 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.
13/303,217 11/23/2011 Ryo Murakami 5867-0148PUS1 9758
127226 7590 09/25/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
BUTTNER, DAVID J
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRDEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYO MURAKAMI, KAZUYOSHI SHIGA, and
TAKAHIRO SHIGEMITSU
Appeal 2017-002286
Application 13/303,217
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002286
Application 13/303,217
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—4, 8, 21—26, 29-32, and 39—53.
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The Specification states that the invention relates to a golf ball resin
composition. (P. 1,11. 5—6.) Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A golf ball resin composition having a melt flow rate
(190°C, 2.16 kg) of 25.01 g/10 min or more and 80 g/10 min or
less, said composition comprising:
(A) at least one resin component selected from the group
consisting of
(a-1) a binary copolymer composed of an olefin
and an a,P-unsaturated carboxylic acid having 3 to 8
carbon atoms, (a-2) an ionomer resin consisting of a
metal ion-neutralized product of a binary copolymer
composed of an olefin and an a,P-unsaturated carboxylic
acid having 3 to 8 carbon atoms, (a-3) a ternary
copolymer composed of an olefin, an a,P-unsaturated
carboxylic acid having 3 to 8 carbon atoms, and an a,P~
unsaturated carboxylic acid ester, and (a-4) an ionomer
resin consisting of a metal ion-neutralized product of a
ternary copolymer composed of an olefin, an a,P~
unsaturated carboxylic acid having 3 to 8 carbon atoms,
and an a,P-unsaturated carboxylic acid ester;
and
1 According to the Appellants, the Real Party in Interest is SRI Sports
Limited. (Appeal Brief filed August 1, 2016, hereinafter “App. Br.,” 1.)
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(B) an anionic surfactant containing sulfur in a content of from
3 parts by mass to 65 parts by mass with respect to 100 parts by
mass of (A) the resin component.
THE REJECTIONS
The Examiner rejected claims 1—4, 8, 21—26, 29—32, and 39-53 under
35 U.S.C. § 103(a) as follows:
I. claims 1—4, 8, 21—26, 29-32, 39-42, 44-47, and 49-52 as
obvious over Bulpett2 optionally in view of JP’846;3
II. claims 1—4, 8, 21—26, 29—32, 39-42, 44-47, and 49—52 as
obvious over Bulpett in view of JP’846 and Iizuka;4 and
III. claims 40-43, 45—48, and 50-53 as obvious over Bulpett,
Hayashi,5 Iizuka, and JP’846.
(Examiner’s Answer mailed September 29, 2016, hereinafter “Ans.” 2—7.)
Rejection II
The Examiner found that Bulpett discloses a blend of thermoplastic
having neutralized acid groups and a plasticizing agent such as a surfactant.
(Ans. 2.) The Examiner found that Bulpett discloses that the melt flow rate
(MFR) of the composition is “preferably” no greater than 20g/10 min.
(Ans. 2, 4; citing Bulpett 1101.) The Examiner found also that Iizuka
discloses that ionomeric golf ball compositions should have a melt index
2 US 2010/0048327 Al, published February 25, 2010.
3 JP 58-84846, published May 21, 1983. Citations to English translations of
record.
4 US 2010/0311884 Al, published December 9, 2010.
5 U.S. Patent No. 6,565,455 B2, issued on May 20, 2003.
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Application 13/303,217
(i.e., melt flow rate)6 of 10-60 g/10 min if the composition is injection
molded. (Ans. 4; lizuka,| 36.) The Examiner determined that the MFR of
25.01g/10 min would have been obvious over the disclosure of Bulpett and
Iizuka because Bulpett in paragraph 137, discloses injection molding and
higher flow rates provide better flow properties and injection moldability.
(Ans. 4.)
The Examiner found that Bulpett fails to disclose a specific level of
plasticizing surfactant level. (Ans. 2.) The Examiner found that the amount
of plasticizer is a result effective variable with respect to improving
processability. (Ans. 2—3.) The Examiner stated that it would have been
within routine experimentation to find the optimum plasticizer level.
(Ans. 3.) The Examiner found that more plasticizer provides easier flow.
(Ans. 3.) The Examiner found that in view of Bulpett’s disclosure with
respect to the acid level of the polymer and overall neutralization level,
Bulpett informs the amount of surfactant plasticizer that may be added.
(Ans. 3.) The Examiner also found that JP’846 discloses typical amounts of
plasticizer at levels of 0.2 — 200 pph in ionomers. (Ans. 3.) Thus, the
Examiner concluded it would have been obvious to utilize sufficient
plasticizing surfactant in Bulpett’s composition to achieve a MFR of at least
25.01 g/10 min. (Ans. 3.)
6 The terms “Melt Flow Index (MF1)” and “Melt Flow Rate (MFR)” are
referred to interchangeably by both the Examiner and Appellants in the
record on Appeal. Accordingly, we do the same as appropriate.
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ISSUE
Appellants contend that the plasticizer disclosed in Bulpett has a
different meaning than the typical plasticizer that provides easier flow.
(App. Br. 10-11.) According to Appellants, Bulpett discloses the use of the
disclosed compounds as “neutralizers” and not “plasticizers” such that the
reasoning of the rejection, which applies certain well known aspects of
plasticizers to the compounds disclosed in Bulpett, is in error. (App. Br. 11.)
Appellants argue that as disclosed in Bulpett, increasing the neutralization of
the ionomer resin reduces fluidity, such that one of ordinary skill in the art
would have understood that the compounds used in Bulpett would decrease
fluidity and would lower the MFR, rather than improve the fluidity of the
composition. (App. Br. 12.) Appellants contend that one of ordinary skill in
the art would have adjusted the MFR of the highly neutralized ionomer to no
greater than 20g/10 min based on the express teaching in Bulpett to this
effect. (App. Br. 13—15.)
Regarding JP’846, Appellants argue that Bulpett is directed to highly
neutralized polymer compositions, neutralized to at least 70%, whereas
JP ’846 discloses adding a surfactant to an ionomer resin having a
neutralization degree as low as 35%, such that one of ordinary skill in the art
would not have combined Bulpett with JP’846. (App. Br. 16—17.)
Appellants argue that even if JP’846 and Bulpett were combined properly,
JP’846 does not disclose a resin composition having the MFR recited in the
claims without exceeding the amounts of anionic surfactant recited in the
claims. (App. Br. 17—18.)
Regarding the Examiner’s reliance on Iizuka, Appellants argue that
Iizuka discloses a material containing an ionomer resin and an organic
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acid/organic acid metal salt, which Bulpett discloses have compatibility
issues and may lead to molding defects, such that one of ordinary skill in the
art would not have referred to the MFR disclosed in Iizuka in order to adjust
the MFR disclosed in Bulpett. (App. Br. 20—21.)
Accordingly, the issue before us in this appeal is:
Have Appellants shown that the Examiner reversibly erred in
determining that a golf ball resin composition having an amount of anionic
surfactant containing sulfur and the MFR recited in claim 1 would have been
obvious to one of ordinary skill in the art in view of the prior art of record in
this appeal?
ANALYSIS
We confine our discussion to appealed claims 1 and 42, which contain
claim limitations representative of the arguments made by Appellants
pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
We are not persuaded by Appellants’ argument that the anionic
surfactants containing sulfur disclosed in Bulpett are not plasticizers in the
typical sense, i.e., compounds providing easier flow. Bulpett expressly
discloses that the anionic surfactants are “plasticizers,” which may be used
to form a highly or fully neutralized polymer composition from partially
neutralized polymers. (144.) Notably, and as pointed out by the Examiner,
Bulpett separately discusses neutralization of acid copolymers with
ammonium-based compounds such as tetramethylammonium hydroxide
(Ans. 8—9; Bulpett || 28-43,132.)
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If, as argued by Appellants, Bulpett did not intend to use the term
“plasticizer” to indicate that the compounds disclosed would provide easier
flow, then there would have been no reason for Bulpett to use the term
“plasticizer” in describing further “neutralizing components.” Thus,
although Appellants attempt to relate tetramethyl ammonium hydroxide as
disclosed in Example 1 (198) to the quaternary ammonium surfactants
disclosed as plasticizers, i.e., benzyltrimethylammonium hydroxide, flflf 63,
64) (App. Br. 12—13; Reply Brief filed November 29, 2016, 3), we agree
with the Examiner that such a comparison is irrelevant. (Ans. 10.) There is
no indication on this record that tetramethyl ammonium hydroxide is an
anionic surfactant even though it may bear some structural resemblance to
benzyltrimethylammonium hydroxide.
Further, we agree with the Examiner that Appellants’ reliance on the
MFIs disclosed in the specific examples of Bulpett is not well taken, as such
relate to only specific embodiments in Bulpett, and further the MFI in those
embodiments is measured at a much lower temperature (132.5°C) versus the
temperature of the MFR (190 °C) recited in claim 1. (App. Br. 15; Bulpett,
Tables 1 and 2; Ans. 11.)
We are not persuaded by Appellants’ argument that as a result of the
expected relationship that increasing neutralization percentage would
decrease melt flow rate, achieving a MFR recited in the claims with at least
70% neutralization disclosed in Bulpett would be “technically difficult.”
Bulpett itself is directed to obtaining golf ball compositions with improved
processability. (| 6.) As the Examiner points out, Iizuka exemplifies a
composition having a neutralization level of 80% and a MFR of 32g/10 min,
indicating that ionomer compositions having higher neutralization
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percentages may be produced with melt flow rates a recited in claim 1.
(Ans. 13, citing Iizuka Example 2.) Thus, we are not persuaded by
Appellants’ argument.
We are not persuaded by Appellants’ argument that Bulpett criticizes
the compositions of Iizuka such that one of ordinary skill in the art would
not have applied the MFR disclosed in Iizuka in formulating a golf ball resin
composition according to Bulpett in view of JP’846. Rather, we agree with
the Examiner’s position that Iizuka discloses general conditions for MFRs
desirable for injection molding. (Ans. 12—13.) That is, Iizuka discloses that
MFR for injection molding are “recommended” to be at least 3.0 g/10 min
but “preferably” not more than 100.0 g/10 min. (| 36.) There is no
indication in Iizuka that such MFRs are unique to the specific composition
disclosed therein.
In this regard, although Bulpett discloses that the MFI is “preferably
no greater than about 20 g/10 min,” Bulpett also does not criticize MFIs
above 20g/10 min. (| 101.) That is, Bulpett does not place any limits on the
MFI that could be obtained. In addition, Appellants point to a similar
teaching in Hayashi in discussing Rejection III that the MFI is
“recommended” to be not more than 20 g/10 min. (App. Br. 22; Hayashi,
col. 10,11. 16—23.) Notably, in this passage, Hayashi describes that when the
MFI is too low, processability decreases markedly, but Hayashi does not
describe any particular reason for limiting the MFI to not more than
20 g/10 min. (Hayashi, col. 10,11. 16—23.) Thus, the prior art supports the
Examiner’s rationale that one of ordinary skill in the art would have a reason
to pursue compositions with higher MFRs for improved processability.
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We are also not persuaded by Appellants’ arguments that one of
ordinary skill in the art would not have combined JP’846 with Bulpett due to
the differences in neutralization percentage disclosed in the two references.
In this regard, Appellants do not offer sufficient explanation as to why the
degree of neutralization would mean that one of ordinary skill in the art
would not have looked to JP’846 for amounts of plasticizer, particularly in
view of the above discussion where we found Appellants’ arguments with
respect to the difference between a “neutralizing agent” and “plasticizer” to
be unpersuasive.
As to Appellants’ contention that more than 100 parts per weight of
the anionic surfactant would be required to obtain a MFR of at least
25.01 g/10 min in view of Table 1 in JP’846, we agree with the Examiner
that JP’846 is relied upon for general amount of surfactant, and that
depending on the initial MFR of the base polymer, smaller amounts of
surfactant/plasticizer would be required to raise the MFR to the desired
level, e.g., greater than 25.01 g/10 min. (Ans. 11.) Thus, the particular
compositions in JP’846 requiring more than 100 parts per weight are not
dispositive of any error on the part of the Examiner.
Accordingly, we affirm the Examiner’s decision to reject claim 1 as
obvious over Bulpett, JP’846, and Iizuka.
Claim 42
Regarding claim 42, the Examiner found that Bulpett discloses
amounts of fillers, which quality as component “C” as low as “about” 5%
based on the composition, which would render the amount of 4.95 pph
obvious. (Ans. 4.)
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Appellants argue that the amount of filler disclosed in Bulpett will be
higher than 5 weight percent, such that Bulpett teaches away from a content
of component (C) of 1—4.92 parts by mass as recited in the claims. (App. Br.
19-20.)
We are not persuaded by Appellants’ arguments that because Bulpett
discloses amounts of fillers from about 5—65 weight percent, Bulpett teaches
away from amounts of fillers from 1 4.92 percent by weight. Bulpett does
not criticize or otherwise discredit amounts of filler below about 5 weight
percent. (See Bulpett 1104.) In addition, Appellants do not meaningfully
address the Examiner’s rationale that “about” 5% by weight would render
obvious the amount of filler recited in the claims. (Ans. 4.)
Thus, we affirm the Examiner’s rejection of claim 42.
Rejection III
The Examiner relies on Hayashi for disclosing sodium carbonate as a
metal source and a common compound for supplying neutralizing metal ions
for making ionomers. (Ans. 5.)
Regarding Rejection III, Appellants rely on similar arguments as
addressed above with respect to Bulpett, JP’846, and Iizuka. (App. Br. 22.)
Regarding Hayashi, Appellants argue that, similar to Bulpett, Hayashi
discloses that the MFR of the composition is no more than 20g/10 min, such
that Hayashi fails to disclose the MFR recited in the claims. (App. Br. 22—
23.) We addressed Appellants’ position above and found it to be
unpersuasive.
Accordingly, we affirm the Examiner’s decision to reject claims 40—
43, 45—48, and 50—53 as obvious over Bulpett, JP’846, Iizuka, and Hayashi.
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Rejection I
Because we have affirmed Rejection II as discussed above, which is
based on similar art as applied in Rejection I, and covers the same claims as
in Rejection II, we find it unnecessary to address Rejection I.
CONCLUSION
Appellants have failed to demonstrate that the Examiner reversibly
erred in determining that a golf ball resin composition having an amount of
anionic surfactant containing sulfur and the melt flow rate recited in claim 1
would have been obvious to one of ordinary skill in the art in view of the
prior art of record in this appeal.
ORDER
We affirm the Examiner’s decision rejecting claims 1—4, 8, 21—26,
29-32, and 39-53 under 35 U.S.C. § 103(a).
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
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