Ex Parte Ohama

Patent Trial and Appeal Board

Sep 18, 2013

12219509 (P.T.A.B. Sep. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEIJI OHAMA
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Appeal 2011-011856
Application 12/219,509
Technology Center 3700
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Before: WILLIAM V. SAINDON, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011856
Application 12/219,509

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
5 and 7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is the sole independent claim
appealed, and is illustrative of the appealed subject matter.
1. A golf ball which comprises a core
and a cover positioned outside the core, the core
having a center and a mid layer positioned outside
the center, wherein
the resilience coefficient Ec of the center,
the resilience coefficient Em of the core and the
resilience coefficient Eb of the golf ball satisfy the
following formula (5):
Ec>Eb>Em (5).

REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Boehm US 2006/0189413 A1 Aug. 24, 2006

REJECTION
Appellant seeks our review of the following rejection.
1. Claims 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Boehm.

Appeal 2011-011856
Application 12/219,509

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ANALYSIS
Boehm discloses wide, overlapping ranges of values for the COR
(coefficient of restitution) of various portions of a golf ball according to its
disclosure. See, e.g., Boehm, paras. [0014], [0030]. The Examiner finds
that one particular combination of the values within the disclosed ranges
satisfies the claim 1 limitation that “the resilience coefficient Ec of the
center, the resilience coefficient Em of the core and the resilience coefficient
Eb of the golf ball satisfy the following formula (5): Ec > Eb > Em.”1 Ans.
3.
Appellant contends the Examiner erred because Boehm does not
suggest arbitrarily using any values within the disclosed ranges but discloses
a particular relationship between the COR values of various portions of a
ball according to its disclosure. App. Br. 10-11. Specifically, Appellant
argues, Boehm “discloses that the COR of each assembly is greater than the
next larger subassembly toward the cover.” Id. at 10 (citing Boehm, para.
[0027]). Therefore, Appellant suggests, Boehm requires the relationship
“CORC > CORC1 > CORC2 > … > CORBall,” i.e., a relationship where the
ball has a lower COR value than the core of the ball or any of the
subassemblies composing the core of the ball. App. Br. 10. Accordingly, in
the terms of claim 1, Appellant argues that Boehm discloses at most Ec >
Em > Eb, but does not suggest the claim limitation “Ec > Eb > Em.” Id.
In response, the Examiner cites case law for the proposition that a
prior art reference can provide support for a conclusion of obviousness of
inventions not directly tied to the problem and invention discussed in the

1 The Examiner and Appellant appear to treat the term “coefficient of
restitution” used in Boehm and the term “resilience coefficient” used in
claim 1 as interchangeable. See Ans. 3-5; App. Br. 9-11.
Appeal 2011-011856
Application 12/219,509

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prior art reference. Ans. 5 (citing In re Heck, 699 F.2d 1331, 1332-33 (Fed.
Cir. 1983)). In connection with this, the Examiner asserts that “Boehm
clearly provides ranges that meet the limitation of Appellant’s claimed
formula: Ecore > Eball > Emid.” Ans. 5. The Examiner then indicates that the
rejection properly relies on Boehm because “Boehm reasonably suggests
Appellant’s claimed formula with the ranges of the COR values disclosed in
paragraphs [0014, 0030].” Ans. 5 (citing Merck & Co. v. Biocraft Labs.,
874 F.2d 804 (Fed. Cir. 1989)).
The Examiner does not identify any reason that a person of ordinary
skill in the art would think Boehm suggests any exception to the disclosed
relationship between the COR values of various portions of a ball according
to its disclosure. Absent such an exception, Boehm appears to suggest using
COR values from the disclosed ranges only in combinations that would
adhere to the disclosed relationship of progressively decreasing COR values
from the center of the ball outward. See, e.g., Boehm, paras. [0026], [0027];
see also App. Br. 10-11. Consistent with Appellant’s argument, this
relationship would appear to always result in a COR value of the ball (i.e.,
Eb) lower than the COR value of the ball’s core (i.e., Em). See App. Br. 10-
11. As Appellant notes, this would not satisfy the claimed relationship Eb >
Em. See id. Accordingly, we do not believe the Examiner has supported by
a preponderance of the evidence the contention that “Boehm reasonably
suggests Appellant’s claimed formula with the ranges of the COR values
disclosed in paragraphs [0014, 0030].” Ans. 5.
Additionally, the Examiner does not explain why the claimed
invention would have been obvious in view of Boehm even though Boehm
does not appear to suggest it. Without some further reasoning or evidence to
Appeal 2011-011856
Application 12/219,509

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provide rational underpinning, we do not believe the Examiner has
supported a conclusion of obviousness by merely noting that the relevance
of a prior art reference can extend beyond the problem and invention it
discloses. See Ans. 5 (citing Heck, 699 F.2d at 1332-33); KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398 418 (2007) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”) (Internal citation and
quotations omitted). Accordingly, we do not sustain the rejection of
independent claim 1 or of claims 5-7 depending therefrom.

DECISION
We reverse the Examiner’s decision rejecting claims 1-5 and 7.

REVERSED

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