Ex Parte Simonutti

Patent Trial and Appeal Board

Dec 4, 2013

11389588 (P.T.A.B. Dec. 4, 2013)

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.
11/389,588 03/24/2006 Frank M. Simonutti WG0066H 1187
7590 12/04/2013
Wilson Sporting Goods Co.
8750 W. Bryn Mawr Ave.
Chicago, IL 60631
EXAMINER
GORDEN, RAEANN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
12/04/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte FRANK M. SIMONUTTI
________________

Appeal 2011-013446
Application 11/389,588
Technology Center 3700
________________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
PATRICK R. SCANLON, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-013446
Application 11/389,588

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-9, 11-17, and 19-23. Br. 2. Claim 10 has been
cancelled, claims 24-28 have been withdrawn, and claim 18 is only objected
to. Br. 2; Final Office Action mailed Jan. 4, 2011, p. 3. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to a limited flight golf
ball, wherein the limited flight is obtained through a reduction in resilience
properties of the core.” Spec. para. [0001]. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below:
1. A golf ball comprising
a core and
at least one cover layer, wherein the core has a C.O.R. of
less than 0.710 at a test velocity of 125 ft/s, and includes a
blend of:
20-80 phr of high-cis polybutadiene;
80-20 phr by weight of acrylonitrile-1,3-butadiene;
20-40 phr of a co-crosslinking agent;
0-10 phr of an activator;
10-30 phr of an inert filler; and
0.5 to 3 phr of a free-radical initiator, the golf ball
being configured for limited distance applications.

REFERENCE RELIED ON BY THE EXAMINER
Nesbitt US 5,209,485 May 11, 1993

Appeal 2011-013446
Application 11/389,588

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THE REJECTION ON APPEAL
Claims 1-9, 11-17, and 19-23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nesbitt. Ans. 4.

ANALYSIS
Appellant initially addresses the extended prosecution of the present
application due to the Examiner repeatedly withdrawing the final rejection
and issuing a new rejection based on a new combination of references (we
note that Nesbitt was first relied on by the Examiner in combination with
another reference and subsequently relied on by the Examiner as a stand-
alone reference). Br. 4-6. 37 C.F.R. § 1.181(a)(1) provides guidance to the
effect that petitions to the Director are appropriate in matters arising from
any action of an Examiner in an ex parte prosecution (as here) “which is not
subject to appeal to the [Patent Trial and Appeal] Board.” 37 C.F.R.
§ 41.31(c) provides guidance that matters appealable to the Board are those
relating to matters “affecting the merits of the invention.” We are also
instructed that “[t]here are a host of various kinds of decisions an examiner
makes in the examination proceeding— mostly matters of a discretionary,
procedural or nonsubstantive nature— which have not been and are not now
appealable to the board or to this court when they are not directly connected
with the merits of issues involving rejections of claims, but traditionally
have been settled by petition to the Commissioner.” In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971) (footnote omitted). Accordingly, an appeal
of this matter to the Board is not the proper vehicle since prolonged
prosecution does not address the merits of Nesbitt identified by the
Examiner and instead, is more properly identified as a procedural matter that
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Application 11/389,588

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is settled by petition to the Commissioner. Accordingly, relief for this
matter is not within the jurisdiction of the Board.
Regarding the Examiner’s rejection of unpatentability under § 103,
Appellant argues claims 1-9, 11-17, and 19-23 together. Br. 6-8. We select
claim 1 for review with claims 2-9, 11-17, and 19-23 standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner relies solely on Nesbitt for disclosing the limitations of
claim 1 and particularly for disclosing a golf ball core that “includes a high
cis polybutadiene and acrylonitrile butadiene blended in amounts to have a
core with a lower COR [(coefficient of restitution)]”. Ans. 4. Appellant
contends that Nesbitt “very specifically and directly teaches away from the
use acrylonitrile butadiene as required by the independent claims 1 and 13 of
the present Application.” Br. 7. Appellant acknowledges that Nesbitt
discloses the use of certain rubber blends that “produce the desired levels of
reduced COR values for golf balls,” nevertheless, Nesbitt also states that
“‘of critical importance, these materials must be blended in such amounts,
and under such conditions to produce commercially viable cured end
products . . . ’ See Col. 5, lines 14-16 (emphasis added).” Br. 7. Appellant
contends that Nesbitt “discloses that some blends of diene rubber
compositions were investigated and were found to have many processing
difficulties and therefore were not commercially viable end products.” Br.
7, see also Nesbitt 6:46-50. From this, Appellant concludes that Nesbitt
“teaches away from the use of acrylonitrile butadiene” as presently claimed
because “[o]ne of ordinary skill in the art would not look to Nesbitt et al. to
produce a golf ball in accordance with the pending claims.” Br. 7-8.
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Application 11/389,588

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The Examiner replies to the effect that “Appellant is claiming an
article claim (golf ball) and not the method of making the golf ball, the
process or steps taken to make the golf ball are not relevant to the final
product.” Ans. 6. More importantly, however, the Examiner responds
stating that “[w]hile it may not be convenient for Nesbitt to process the
material, it is clear from the disclosure that acrylonitrile butadiene is
satisfactory for producing a golf ball core with a COR from 0.560 to 0.640.”
Ans. 6, see also Nesbitt 5:14-28 and 6:46-50.
Our reviewing court has stated that “[t]he prior art’s mere disclosure
of more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed”. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (emphasis added). This court has also explained that
just because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994).
In the matter before us, Nesbitt clearly states that when using
acrylonitrile-butadiene rubber, “many processing difficulties resulted” and
that “of critical importance, these materials must be blended in such
amounts, and under such conditions to produce commercially viable cured
end products.” Nesbitt 6:46-50 and 5:14-16. Elsewhere, Nesbitt teaches
that “butadiene-acrylonitrile copolymers” are an example of material
“commonly utilized in golf ball construction.” Nesbitt 4:65 to 5:3. We
understand Nesbitt as disclosing “processing difficulties” and the need for
care when blending materials, but Appellant does not persuade us that these
passages “criticize, discredit or otherwise discourage” the use of
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acrylonitrile-butadiene rubber in the manufacture of golf ball cores; and
especially in view of Nesbitt’s expression that this material is commonly
used in such construction. Accordingly, we do not agree with Appellant that
Nesbitt teaches away from the use of this material as per our reviewing
court.
Appellant also contends that Nesbitt does not disclose a core that
“includes 20-80 phr of high-cis polybutadiene and 80-20 phr by weight of
acrylonitrile-1,3-butadiene.” Br. 8. Nesbitt discloses a core wherein “[t]he
diene rubber or elastomeric blends used herein may be selected from those
diene rubbers commonly utilized in golf ball construction” and further that
“[e]xamples of these materials include . . . polybutadiene, . . . [and]
butadiene-acrylonitrile copolymers, . . .” Nesbitt 4:65 to 5:3. Appellant
does not explain how this passage in Nesbitt fails to teach the use of the
claimed compositions. Instead, Appellant asserts that Nesbitt “fails to
disclose a core containing acrylonitrile-1,3-butadiene and having a C.O.R.
value of less [than] 0.710 at a test velocity of 125 ft/s, as required by
independent claims 1 and 13.” Br. 8.
Our reviewing court has also stated that “we hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we do not
find Appellant’s contention persuasive and we sustain the Examiner’s
rejection of claims 1-9, 11-17, and 19-23.
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DECISION
The Examiner’s rejection of claims 1-9, 11-17, and 19-23 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)(1)(iv).

AFFIRMED

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