13906493 (P.T.A.B. Feb. 14, 2018)

Ex Parte Sajima

Patent Trial and Appeal BoardFeb 14, 2018

13906493 (P.T.A.B. Feb. 14, 2018)

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. 13/906,493 05/31/2013 Takahiro SAJIMA 5867-0233PUS1 7502 127226 7590 02/16/2018 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/16/2018 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 TAKAHIRO SAJIMA Appeal 2017-004581 Application 13/906,493 Technology Center 3700 Before ANTON W. FETTING, PHILIP J. HOFFMANN, and ALYSSA A. FINAMORE, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection of claims 15—22, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the “invention relates to a golf ball.” Spec. 1, 1. 5. Claim 15 is the only independent claim on appeal. Below, we reproduce claim 15 as illustrative of the appealed claims. 1 According to Appellant, the real party in interest is the Applicant, “DUNLOP SPORTS CO. LTD.” Br. 1. Appeal 2017-004581 Application 13/906,493 15. A golf ball comprising a core composed of a spherical center and an envelope layer and at least one cover layer disposed outside the core, wherein the spherical center has a hardness difference between a maximum hardness and a minimum hardness within the spherical center of less than 5 in JIS-C hardness, the envelope layer is formed from an envelope layer rubber composition containing (a) a base rubber, (b) an a,P-unsaturated carboxylic acid having 3 to 8 carbon atoms and/or a metal salt thereof as a co- crosslinking agent, (c) a crosslinking initiator and (d) a carboxylic acid and/or a salt thereof excluding the (b) a,P-unsaturated carboxylic acid having 3 to 8 carbon atoms and/or a metal salt thereof, the outermost cover layer has a hardness that is highest from among the spherical center, envelope layer and any other cover layer of the golf ball, and the envelope layer rubber composition contains (d) the carboxylic acid and/or the salt thereof in an amount of 1 part by mass or more and less than 40 parts by mass with respect to 100 parts by mass of (a) the base rubber, and the spherical center is formed from a center resin composition comprising at least one selected from the group consisting of an ionomer resin, a thermoplastic polyamide elastomer, a thermoplastic polyester elastomer, a thermoplastic polyurethane elastomer, and a thermoplastic styrene elastomer as a resin component. 2 Appeal 2017-004581 Application 13/906,493 REJECTIONS AND PRIOR ART The Examiner rejects claims 15—22 under 35 U.S.C. § 103(a) as unpatentable over Watanabe (US 2006/0229143 Al, pub. Oct. 12, 2006) and Umezawa (US 2011/0045923 Al, pub. Feb. 24, 2011). The Examiner rejects claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over Watanabe, Umezawa, and Bulpett (US 2010/0048327 Al, pub. Feb. 25, 2010). ANALYSIS Obviousness rejection of independent claim 15 and its dependent claims 16—22 As set forth above, claim 15 recites a golf ball comprising a core composed of a spherical center and an envelope layer, and a cover layer disposed outside the core, and specifies further details for each of the center, the envelope layer, and the cover layer. See Br., Claims App. The Examiner rejects claim 1 based on a combination of Watanabe and Umezawa. See Final Action 3—5. More specifically, the Examiner proposes “to provide Watanabe . . . with a spherical center composition formed of a resin composition . . ., as taught by Umezawa.” Id. at 5. Appellant argues that the rejection is in error because one of ordinary skill would not have replaced Watanabe’s rubber inner core (analogous to the claimed “spherical center”), which “is relatively soft [at] 50 in JIS-C hardness,” with Umezawa’s “inner core layer formed from a resin composition . . . [, which] is from 76 to 80 in JIS-C hardness.” Br. 7 (citations to Watanabe and Umezawa omitted); see also id. at 5—7. Based on our review, we do not sustain the rejection because the Examiner does not provide an adequate 3 Appeal 2017-004581 Application 13/906,493 reason with the required rational underpinning to modify Watanabe based on Umezawa. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[Rejections on obviousness 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.”). For the reasons discussed above, it is clear that Watanabe and Umezawa have (using claim 15’s nomenclature) different spherical centers. Further, the Examiner does not establish that any of the other layers, including (using the claim’s nomenclature) the envelope layer and cover, are the same or similar. Conversely, it appears that there are differences at least between Watanabe’s and Umezawa’s envelope layers. See Br. 5—7. The Examiner’s reasoning for replacing Watanabe’s rubber center with Umezawa’s resin center includes “[a] person of ordinary skill in the art would have understood the advantage of formulating the composition of each layer for optimum performance” (Answer 3), and that [both] Watanabe and Umezawa teach a golf ball having a core comprised of a center and an envelope layer. The core centers and envelope layers are of similar diameter and the envelope layers are formed from vulcanized rubber compositions. Both references report test data disclosing a greater flight distance of the inventive ball when struck with a driver, indicating a common effort to increase distance. The [EJxaminer maintains the position that a person of ordinary skill in the art would have considered the teaching of both references together {id. at 4). This reasoning, in our opinion, is insufficient to support the rejection. For example, the Examiner speculates that one of ordinary skill in the art would have understood adding Umezawa’s resin center to Watanabe’s golf ball would improve performance. The Examiner, therefore, does not explain 4 Appeal 2017-004581 Application 13/906,493 adequately why one of ordinary skill would have chosen to use the particular resin center disclosed by Umezawa in Watanabe’s golf ball. Thus, based on the foregoing, we do not sustain claim 15’s rejection. We also do not sustain the Examiner’s obviousness rejection of claims lb- 22 that depend from claim 15 and which are rejected by the Examiner for similar reasons as claim 15. Obviousness rejection of claims 25 and 26 Each of claims 25 and 26 depends from claim 15. Inasmuch as the Examiner does not demonstrate that Bulpett remedies the above-discussed deficiency in claim 15’s rejection, we also do not sustain the rejection of claims 25 and 26. DECISION We REVERSE the Examiner’s obviousness rejections of claims 15— 22, 25, and 26. REVERSED 5