Ex Parte SAJIMA et al

Patent Trial and Appeal Board

Feb 14, 2019

13886291 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/886,291 05/03/2013
127226 7590 02/19/2019
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Takahiro SAJIMA
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.
3673-0474PUS 1 1033
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/19/2019 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 T AKAHIRO SAJIMA and HIDETAKA INOUE
Appeal2017-009287
Application 13/886,291 1
Technology Center 3700
Before STEVEN D. A. McCARTHY, MICHAEL L. HOELTER, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.
MITCHELL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1--4, 9, and 11-19 as set forth in a Non-final
Office Action and modified in the Examiner's Answer. Non-final Office
Action (Sept. 28, 2016) ("Non-final Act."); Examiner's Answer (Apr. 20,
2017) ("Ans."); 37 C.F.R. § 41.3l(a)(l). We have jurisdiction under
35 U.S.C. § 6(b).
1 The Appellant states that the application was assigned to Dunlop Sports
Co. Ltd. ("Dunlop") on May 6, 2013, indicating that Dunlop is the real party
in interest. Appeal Brief (Feb. 28, 2017) ("Appeal Br.") at 1.
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Application 13/886,291
The Examiner rejected all of the pending claims as indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicant regards as the invention and rejected all of the pending claims
as unpatentable over various combinations of prior art. The Appellant
argues that the claims are definite, and the Examiner's rejection should be
reversed. The Appellant also argues that one of ordinary skill in the art
would have no proper reason, rationale, or motivation to modify prior art
cited by the Examiner in order to arrive at any claimed invention. For the
reasons explained below, the Examiner provided adequate evidence to
support a determination of indefiniteness, and adequate evidence and
reasoning based on rational underpinnings to support a determination of
obviousness of the claimed subject matter. Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to golf balls that include a center,
an inner envelope layer, an outer envelope layer, and a cover. Amended
Specification (Feb. 29, 2016) ("Spec."), 1:11-14. Claims 1 and 19 are the
only independent claims. Claim 1 illustrates the subject matter on appeal
and is reproduced below with the disputed claim language shown in italics
for emphasis.
1. A golf ball comprising a core and a cover positioned
outside the core, wherein
the core comprises a center, an mner envelope layer
positioned outside the center, and an outer envelope layer
positioned outside the inner envelope layer,
the cover comprises one or more layers,
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wherein the center, the inner envelope layer, and the outer
envelope layer are formed from a rubber composition;
wherein the rubber composition of at least one of the
center, the inner envelope layer, and the outer envelope layer
includes:
(a) a base rubber;
(b) a co-crosslinking agent;
( c) a crosslinking initiator; and
(d) an acid and/or a salt other than an a,B-
unsaturated carboxylic acid having 3 to 8 carbon atoms or a metal
salt thereof,
the co-crosslinking agent (b) is:
(b 1) an a,B-unsaturated carboxylic acid having 3 to 8
carbon atoms; or
(b2) a metal salt of an a,B-unsaturated carboxylic acid
having 3 to 8 carbon atoms, and
a component having the greatest hardness in a range from
a central point of the golf ball to a surface of the golf ball is an
outermost layer of the cover;
wherein the acid and/ or the salt ( d) 1s an aromatic
carboxylic acid and/or a salt thereof;
wherein a carbon number of a carboxylic acid component
of the carboxylic acid and/or the salt thereof is equal to or
greater than 1 but equal to or less than 8; and
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wherein an amount of the acid and/or the salt (d) is equal
to or greater than 1.0 parts by weight but equal to or less than 5.0
parts by weight, per 100 parts by weight of the base rubber (a).
Appeal Br. Claims Appendix ("Appeal Br. Cl. Appx."), 1.
EVIDENCE
Reiter us 4,688,801 Aug. 25, 1987
Yoshida US 6,361,454 Bl Mar. 26, 2002
Kato US 6,855,074 B2 Feb. 15,2005
Watanabe US 2006/0229143 Al Oct. 12, 2006
Sullivan US 2011/0143863 Al June 16, 2011
REJECTIONS
The Non-final Office Action includes the following rejections:
1. Claims 1--4, 9, and 11-19 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim
the subject matter which the applicant regards as the invention;
2. Claims 1, 9, 11-13, and 15-18 are rejected under 35 U.S.C. § 103
as unpatentable over Watanabe, Kato, and Sullivan;2
2 Appellant cancelled claims 5-8 and claim 10. See Amendment Under
37 C.F.R. § 1.116 (March 18, 2016), 3. Both the Appellant and the
Examiner addressed only pending claims 1--4, 9, and 11-19 in briefing on
appeal. See generally Appeal Br., Ans., Reply Brief (June 19, 2017)
("Reply"). Therefore, we address only pending claims 1, 9, 11-13, and 15-
18 for this rejection, and not claims 5-8 and 10 that the Examiner
inadvertently included in the rejection. See Non-final Act. ,r 7.
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3. Claims 2--4 and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Watanabe, Kato, Sullivan, and Yoshida; 3 and
4. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Watanabe, Kato, and Reiter.
ANALYSIS
Indefiniteness
In the Non-final Office Action, the Examiner stated that the
independent claims, claims 1 and 19, are indefinite because "the limitation
providing for the carbon number of a carboxylic acid component of the
carboxylic acid and/or salt thereof, may refer to the carboxylic acid
component of (b ), the co-crosslinking agent, or to the carboxylic acid
component of (d) the acid and/or salt." Non-final Act. ,r 4.
The Appellant responds that appropriate antecedent basis exists
because the limitation of claims 1 and 19 immediately preceding the wherein
clause at issue refers explicitly to component ( d) rather than component (b ).
Appeal Br. at 8.
In answer, the Examiner notes that the independent claims describe
component (b) as a carboxylic acid or salt of the carboxylic, and maintains
3 Appellant argues the patentability of claim 1 with regard to the first three
rejections at issue here. Appeal Br. 8-15. Appellant does not argue
separately for patentability of dependent claims 2--4, 9, and 11-18. See id.;
id. at 15 (stating "[c]laims 2--4 and 14 ultimately depend from independent
claim 1. As such, the unexpectedly superior results ... would also rebut any
alleged primafacie case of obviousness with respect to this rejection.").
Therefore, we select claim 1 as the representative claim, and claims 2--4, 9,
and 11-18 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
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that the Appellant could clarify this wherein clause at issue by stating
explicitly that it is intended to further characterize component (d). Ans. ,r 3.
The Appellant replies that the carbon number of the carboxylic acid of
component (b) is already defined in claims 1 and 19, so the limitation at
issue that describes the carbon number could only refer to component ( d).
Reply 3.
We sustain the indefiniteness rejection on the basis provided in the
Non-final Office Action and agree that limitation could be clarified
unequivocally simply by specifying that it applies to component ( d).
Although Appellant notes that the carbon number of component (b) is
explicitly defined in the independent claims prior to the wherein clause at
issue that also defines a carbon number, the Examiner is correct that the
limitation specifying that "a carbon number of a carboxylic acid component
of the carboxylic acid and/ or the salt thereof is equal to or greater than 1 but
equal to or less than 8" could apply to either component (b) or
component ( d) because both are carboxylic acids or salts thereof. Appeal
Br. Cl. Appx. at 1-2. To avoid any ambiguity, we sustain the Examiner's
rejection of claims 1--4, 9, and 11-19 under 35 U.S.C. § 112(b ).
Unpatentability over Watanabe, Kato, and Sullivan
The Examiner found that Watanabe discloses each limitation in
claim 1 except the limitations that the core comprises an outer envelope
layer formed from a rubber composition and that component ( d) is an
aromatic carboxylic acid and/or a salt thereof. Non-final Act. ,r 7. The
Examiner found that Kato teaches an outer envelope layer formed from a
rubber composition. Id. The Examiner stated that it would have been
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obvious to one of ordinary skill in the art at the time the invention was made
to provide Watanabe with a rubber outer core envelope layer as taught by
Kato to "yield the predictable result of facilitating the customization of the
response to the ball." Id. As to the remaining limitation, the Examiner
found that Sullivan, which involves golf ball core rubber compositions,
teaches that such a composition may include a component ( d) that is a salt of
a carboxylic acid and may be an aliphatic acid ( such as zinc stearate) or an
aromatic acid (such as benzoic acid with a carbon number greater than 1 but
equal to or less than 8). Id. The Examiner stated that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to provide Watanabe, as modified, with a known substitute component ( d),
such as an aromatic carboxylic acid as taught by Sullivan. Id.
The Appellant argues that the Examiner provides no appropriate
rationale to combine the teachings of modified Watanabe and Sullivan
because the Examiner supports the obviousness rejection with a mere
conclusory statement by asserting that Sullivan's component ( d) is a known
substitute for Watanabe's stearic acid and zinc stearate without providing
any explanation for the statement. Appeal Br., 9. The Examiner maintains
that "it would have been obvious to substitute one of the other components
in place of zinc stearate, disclosed by both Watanabe and Sullivan, with an
aromatic carboxylic acid or salt, as taught by Sullivan." Ans. ,r 4. The
Examiner supports this conclusion regarding the obvious substitution of an
aromatic carboxylic acid or salt as component ( d) stating that Sullivan
teaches a similar rubber composition as in Watanabe "including the same
components and disclosing materials suitable as component ( d), including
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zinc stearate as well as other materials, some of which are aromatic
carboxylic acids or salts." Id. ,r 4.
The Appellant further argues that the inclusion of the claimed
component ( d) as taught by Sullivan is not an obvious substitution because
the inclusion of component ( d) leads to unexpected results in the form of
improved flight distance that would not be predictable to one of ordinary
skill in the art. Appeal Br. at 10-11. The Appellant points to results
obtained by forming the inner envelope layer from a rubber composition
including the claimed acid and/or salt component ( d), such as those reported
for Example 15 in the application's Specification. Id. The Appellant
compares inventive Example 15 to Example 2 and Comparative Example 7,
neither of which contain component ( d) as claimed, to show that the claimed
invention has an unexpectedly superior flight distance. Id. The inner
envelope layer of Example 15 includes zinc octoate, whereas zinc octoate is
present in the center of Example 2 rather than in the inner envelope layer.
Id. The inner envelope layer of Comparative Example 7 does not contain
acid/salt component (d). Id. at 11. Example 15's flight distance was 181.3
meters, Example 2's flight distance was 180.5 meters, and Comparative
Example 7's flight distance was 180.0 meters. Spec. Table 11 at 68, Table
15 at 72. Thus, the maximum flight difference between these examples is
1.3 meters.
The Appellant also submitted an additional example in a 3 7 C.F .R.
§ 1.132 Declaration to provide what Appellant terms a proper side-by-side
comparison of the claimed invention and a golf ball that does not meet the
claim limitations by comparing three golf balls that are the same except for
the inner envelope layer. Appeal Br. at 12-13. See also Declaration Under
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37 C.F.R. § 1.132 (Jun. 20, 2016) ("Sajima Dec."). The inner envelope layer
of the Additional Example includes 5 parts by weight of zinc stearate, which
has a carbon number of 18 that is outside of the claims' carbon number
range for component ( d). The inner envelope layer of Example 17 includes
5 parts by weight of zinc myristate, which has a carbon number of 14 that is
also outside of the claims' carbon number range for component ( d). Appeal
Br. at 13. The inner envelope layer of Example 15 includes 5 parts by
weight of zinc octoate, which has a carbon number of 8 that is within the
claimed range for component (d). The Additional Example's flight distance
was 180.4 meters, Example 17's flight distance was 180.7 meters, and
Example 15's flight distance was 181.3 meters. Sajima Dec. at 2. The
Appellant asserts that all of these examples show that the greater flight
distance achieved with inventive Example 15 demonstrates that the claimed
golf ball is unexpectedly superior to golf balls that are outside of the scope
of the claimed carbon number range for component ( d).
The Examiner answers that Example 15 includes zinc octoate in the
inner envelope layer, which is "a salt of an aliphatic acid and does not satisfy
the limitations of Claim 1, requiring an aromatic acid or salt." Ans. ,r 5.
Thus, the Examiner maintains that the comparison between Example 15 and
Example 2 does not establish unexpected results of the claimed golf ball
over the prior art. Id.
Regarding the Additional Example provided in the declaration, the
Examiner answers that although Example 15 provides an additional 0.9
meters of flight distance over the Additional Example, this difference in
flight distance is to be expected with a variation of the concentration and
selection of material. Ans. ,r,r 6, 8. The Examiner also states that the prior
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art teaches the inclusion of several alternative materials, including fatty acids
and fatty acid salts, and a range for their concentrations. Id. ,r 6. The
Examiner contends that "the claimed composition does not define a golf ball
having superior and unexpected results over balls not possessing the claimed
features" because similar results were obtained by including a
component ( d) that is outside the scope of the claimed invention, such as
those used in Examples 17 and 18. Id. ,r,r 5---6.
The Appellant replies that the difference between the flight distance of
Example 15 and the flight distances of Examples 17 and 18 is 0.3 to 0.6
meters. Reply, 3. The Appellant argues that a person of ordinary skill in the
art would find such a difference to be very significant. Id. The Appellant
also argues that the difference in flight distance is evidence of unexpected
results that overcome any prima facie case of obviousness. Id. at 4.
After considering the arguments submitted by the Examiner and the
Appellant, we are not persuaded that the Examiner erred in rejecting claims
1, 9, 11-13, and 15-18 under 35 U.S.C. § 103 as unpatentable over
Watanabe, Kato, and Sullivan. As explained by the Examiner, the combined
prior art references disclose each limitation found in the Appellant's claims.
The Appellant does not dispute that the references disclose each of the claim
limitations, but argues that the Examiner provided no motivation to combine
the teachings of Watanabe and Sullivan. We agree with the Examiner's
determination that one having ordinary skill in the art would have been led
by the teachings of both Kato and Sullivan to modify Watanabe's core and
rubber compositions. The Specifications of Watanabe, Kato, and Sullivan
each discuss goals of improving flight distance which is also a goal of the
invention claimed here. See Watanabe [0001]; Kato 1:22-26, 2:5-10, 2:20-
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23; Sullivan [0006]; Spec. 1: 17-23. Also, we agree with the Examiner that
Sullivan, which teaches golf ball core rubber compositions that may include
a component ( d), teaches a known substitute component ( d), that as we
discuss below, we agree would produce predictable results. Non-final Act.
,r 7. Therefore, we find that the Examiner has articulated adequate reasoning
based on rational underpinnings for the proposed combination of Watanabe,
Kato, and Sullivan.
The Appellant also argues that the differences in flight distance
between a golf ball made according to the claims and one that is not, as
discussed in the Specification and the Sajima Declaration, show unexpected
results for the claimed invention that overcome the Examiner's obviousness
rejection. We find on this record that Appellant has failed to show that the
range of flight differences between the claimed golf ball and those outside of
the claimed composition would represent a significant difference in flight
distance to one of ordinary skill in the art. See Sajima Declaration
( conclusory statement that the superior results achieved by the claimed
invention were unexpected); Appeal Br. 13 ( conclusory statement that
inventive Example 15 is unexpectedly superior).
The Appellant uses Example 15 as the best example of the claimed
invention, but there are other examples in the Specification with similar or
better flight distances that do not meet the claim limitations, such as
Examples 5 and 10. Spec. Table 12 at 69, Table 13 at 70. Example 5 has a
flight distance of 181.9 meters and Example 10 has a flight distance of 181.5
meters. Id. On this record, we agree with the Examiner that the Appellant's
flight distance results are to be expected with a variation of the concentration
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and selection of the material. Thus, we sustain the rejection of the claims
under 35 U.S.C. § 103.
Unpatentability over Watanabe, Kato, Sullivan, and Yoshida
Claims 2--4 and 14 depend from claim 1, either directly or indirectly.
As discussed above, the Examiner found that the combination of Watanabe,
Kato, and Sullivan discloses each limitation in claim 1.
The Appellant relies on the same arguments discussed above that were
used to address the obviousness rejections over Watanabe, Kato, and
Sullivan as a group. Appeal Br., 9-13, 15. For the reasons discussed above,
we do not find error in the Examiner's rejection of claims 2--4 and 14. Thus,
we sustain the rejection of claims 2--4 and 14.
Unpatentability over Watanabe, Kato, and Reiter
The Examiner found that Watanabe discloses everything in claim 19
except the limitation that the core comprises an outer envelope layer formed
from a rubber composition and the limitation that component ( d) is not
stearic acid or zinc stearate. Non-final Act. ,r 9. The Examiner found that
Kato teaches an outer envelope layer formed from a rubber composition. Id.
The Examiner stated that it would have been obvious to one of ordinary skill
in the art at the time the invention was made to provide Watanabe with an
outer core envelope layer as taught by Kato to "yield the predictable result of
facilitating the customization of the response to the ball." Id. The Examiner
found that Reiter teaches a component ( d) that is a fatty acid or a zinc salt of
the fatty acid, such that the fatty acid may include stearic acid, myristic acid,
octanoic acid, and lauric acid. Id. at 8-9. The Examiner also found that
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Reiter's carboxylic acid component of the carboxylic acid and/or salt thereof
may exclude stearic acid and may have a carbon number in the range of 1 to
8 because Reiter discloses octanoic acid as a possible fatty acid choice. Id.
Reiter also teaches that the amount of acid and/or salt ( d) may be 1.0-5.0
parts by weight per 100 parts by weight of base rubber. Id. The Examiner
stated that it would have been obvious to one of ordinary skill in the art at
the time the invention was made to provide Watanabe with a known
substitute component ( d) composed of the claimed amount of fatty acid or
salt excluding stearic acid and zinc stearate and having the claimed carbon
number as taught by Reiter. Id.
The Appellant relies on the same arguments described above that were
used to address the obviousness rejections over Watanabe, Kato, and
Sullivan as a group. Appeal Br. at 9-13, 16-21. For the reasons discussed
above, we do not find error in the Examiner's rejection of claim 19. Thus,
we sustain the rejection of claim 19.
DECISION
The decision of the Examiner rejecting claims 1-4, 9, and 11-19 is
affirmed.
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)(l )(iv).
AFFIRMED
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