Chiemi Mikura et al.

Patent Trials and Appeals Board

Nov 21, 2019

13830156 - (D) (P.T.A.B. Nov. 21, 2019)

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.
13/830,156 03/14/2013 Chiemi MIKURA 5867-0225PUS1 9731
127226 7590 11/21/2019
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
11/21/2019 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 CHIEMI MIKURA, SHUN KURIHARA,
AYAKA SHINDO, and RYOTA SAKAMINE

Appeal 2019-002740
Application 13/830,156
Technology Center 3700
____________

Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 15, 16, 18, 21, and 26–29. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(b). Appellant identifies itself as the sole real party in
interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a golf ball traveling a great
distance on driver shots, in particular, an improvement of a core of a golf
ball.” Spec. 1:5–6. Apparatus claims 1 and 15 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A golf ball having a spherical core and at least one cover
layer covering the spherical core,
wherein the spherical core has a hardness difference
between a surface hardness and a center hardness of 25 or more
and 80 or less in JIS-C hardness and is formed from a rubber
composition consisting essentially of:
(a) a base rubber,
wherein (a) the base rubber is a high-cis
polybutadiene having a cis-1,4 bond in a proportion of 40% or
more, and the high-cis polybutadiene has a molecular weight
distribution Mw/Mn ranging from 2.0 to 6.0,
(b) a metal salt of an α, β-unsaturated carboxylic acid
having 3 to 8 carbon atoms as a co-crosslinking agent,
(c) a crosslinking initiator,
(d) a carboxylic acid having 5 to 30 carbon atoms, or
only one compound selected from the group consisting of a salt
of a carboxylic acid having 5 to 11 carbon atoms, zinc laurate,
zinc myristate, zinc palmitate, zinc stearate, zinc behenate, zinc
montanate, and zinc 12-hydroxystearate, not including an α, β-
unsaturated carboxylic acid having 3 to 8 carbon atoms and/or a
metal salt thereof,
(e) a halogen-substituted thiophenol and/or a metal salt
thereof as an organic sulfur compound, and
a filler,
wherein (c) the crosslinking initiator is present in an
amount of more than 0.5 parts by mass and 5.0 parts by mass or
less with respect to 100 parts by mass of (a) the base rubber,
the spherical core has a center hardness ranging from 30
to 55.4 in JIS-C hardness and a compression deformation
amount of 4.1 mm or more and 6.0 mm or less when applying a
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load from an initial load of 98N to a final load of 1275N to the
spherical core; and
the golf ball has a compression deformation amount in a
range from 3.4 mm to 5.0 mm when applying a load from an
initial load of 98 N to a final load of 1275 N to the golf ball.
EVIDENCE
Name Reference Date
Melvin et al. (hereinafter
“Melvin”)
US 5,779,562 July 14, 1998
Higuchi et al. (hereinafter
“Higuchi”)
US 2008/0312008 A1 Dec. 18, 2008
Watanabe et al.
(hereinafter “Watanabe”)
US 2011/0143861 A1 June 16, 2011
Isogawa et al. (hereinafter
“Isogawa”)
US 2011/0250991 A1 Oct. 13, 2011
REJECTIONS
Claims 1–3, 6–9, 11–13, 26, and 28 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Higuchi and Watanabe.2, 3, 4

2 The Examiner initially listed claims 19 and 22, but their limitations were
subsequently incorporated into claim 1. See Ans. 2. The limitations of
claim 23 were also incorporated into claim 1. See Ans. 2. Because claim 23
is rejected as unpatentable over Higuchi and Watanabe, we (as does
Appellant) understand that claims 1–3, 6–9, 11, 12, and 26 now stand
rejected as being obvious in view of Higuchi and Watanabe, rather than as
being anticipated by Higuchi. See Final Act. 2, 6; Appeal Br. 13–15.
3 Claim 13 is rejected as being unpatentable over Higuchi and Watanabe.
See Final Act. 6. We consolidate the rejections involving these two
references.
4 Claim 28 depends directly from claim 1 and was initially rejected as being
unpatentable over Higuchi. See Final Act. 8. However, because claim 1 is
now understood as being rejected under the combination of Higuchi and
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Claims 4 and 5 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Higuchi, Watanabe, and Melvin.5
Claims 10, 15, 16, 18, 21, 27, and 29 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Higuchi, Watanabe, and Isogawa.6, 7
Claim 28 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Higuchi.8
ANALYSIS
The rejection of claims 1–3, 6–9, 11–13, 26, and 28
as unpatentable over Higuchi and Watanabe
Appellant argues claims 1–3, 6–9, 11, 12, and 26 together. See
Appeal Br. 13–15. Appellant presents separate arguments for claim 13. See
Appeal Br. 15–17. Appellant’s sole argument regarding claim 28 is that it
depends from claim 1. Appeal Br. 18. We select claims 1 and 13 for

Watanabe, we understand that claim 28 is likewise rejected under this
combination, and as such, is incorporated into this rejection.
5 Claims 4 and 5 each depend directly from claim 1. Thus, we include the
Examiner’s reliance on Watanabe in rejecting claim 1 in this rejection as
well.
6 The Examiner initially listed claims 20 and 24, but their limitations were
subsequently incorporated into claim 15. See Ans. 2. The limitations of
claim 25 were also incorporated into claim 15. See Ans. 2. Because claim
25 is rejected as unpatentable over Higuchi, Isogawa, and Watanabe, we (as
does Appellant) understand that claims 10, 15, 21, 27, and 29 now stand
rejected as being obvious in view of Higuchi, Isogawa, and Watanabe, rather
than merely Higuchi and Isogawa. See Final Act. 5, 6; Appeal Br. 9–12.
7 Claims 16 and 18 are rejected as being unpatentable over Higuchi,
Isogawa, and Watanabe. See Final Act. 7. We consolidate the rejections of
these three references.
8 Claim 28 depends directly from claim 1. Thus, we include the Examiner’s
reliance on Watanabe in rejecting claim 1 in this rejection as well.
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review, with remaining claims 2, 3, 6–9, 11, 12, 26, and 28 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 1
The Examiner primarily relies on Higuchi for teaching the limitations
of claim 1, but relies on Watanabe for teaching the limitations of
incorporated claim 23, which addresses a “compression deformation amount
of 4.1 mm or more and 6.0 mm or less.” See Final Act. 2, 3, 6, 7. The
Examiner states, “[a]s to [c]laim 23, Watanabe teaches” this compression
deformation range.9 Final Act. 7 (referencing Watanabe ¶ 31). The
Examiner’s reason to provide Higuchi’s core with a hardness having the
claimed compression deformation range as taught by Watanabe, is “to yield
the predictable result of improving ball performance.” Final Act. 7; see also
Watanabe ¶ 31.
Appellant contends that Higuchi “requires” a deformation range “of
from 2.0 to 4.0 mm” and that “[b]y modifying the golf ball of Higuchi et al.
’008 with the core hardness of Watanabe ’861, the primary reference,
Higuchi et al. ’008, is rendered inoperable for its intended purpose.” Appeal
Br. 14 (referencing Higuchi ¶ 64). Paragraph 64 of Higuchi discloses a
deformation range of “at least 2.0 mm . . . but not more than 4.0 mm.”
Emphasis added. This is in contrast with the recited range “of 4.1 mm or
more and 6.0 mm or less” and Watanabe’s range of generally 3.0 to 6.0 mm.
See Watanabe ¶ 31. Appellant thus argues that “the combination of Higuchi
et al. ’008 and Watanabe ’861 is improper.” Appeal Br. 14. As further
support, Appellant references “Table 6 and paragraph [0160] of Higuchi.”

9 Paragraph 31 of Watanabe discloses a range “generally from 3.0 mm to 6.0
mm.”
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Appeal Br. 14. Appellant specifically addresses Example 2 in Table 6,
which is the only example therein having a deflection value greater than 4.1
mm. Appellant states that Paragraph 160 of Higuchi criticizes this example
and, as such, Higuchi “actually teach[es] away” from the greater range that
is claimed. Appeal Br. 14.
The Examiner responds that a skilled person “would have considered
the teaching of Watanabe with regard to a slightly softer core having a
slightly higher compression deformation value.” Ans. 4. As indicated
above, Watanabe addresses a range (3.0 to 6.0 mm) that overlaps and also
exceeds Higuchi’s range of 2.0 to 4.0 mm. See Watanabe ¶ 31. Watanabe
further addresses core deflection stating that if it is “too large, the core may
lack sufficient rebound, which may result in a less than satisfactory
distance.” Watanabe ¶ 31. On the other hand, Watanabe additionally states
that if core deflection is too small, then “the ball may have an excessively
hard feel on full shots, and the spin rate may be too high” and hence, “an
increased distance may not be achieved.” Watanabe ¶ 31. Thus, we agree
with the Examiner in stating, “Watanabe teaches that the range of the value
for core deformation is important for optimizing distance and that the core
should be neither too hard nor too soft.” Ans. 4 (referencing Watanabe
¶ 31).
Interestingly, Higuchi has similar concerns regarding a core with “too
small a deformation” and also a “core that is too soft,” both of which have
detrimental impact on the play, feel, spin, and/or distance of the ball.
Higuchi ¶ 64; see also Ans. 4 (“Higuchi makes note of the same concern . . .
see paragraph 0064”). In view of such similarity, the Examiner states that
both references address “the issue of improving flight distance by optimizing
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hardness of the core” and that a skilled person “would have considered the
teaching of the references in combination.” Ans. 5.
In view of the similar, if not identical, goals of each cited reference,
we do not fault the Examiner for combining the teachings of Higuchi with
the core hardness values described in Watanabe. See Medichem S.A. v.
Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“Where the prior art
contains ‘apparently conflicting’ teachings (i.e., where some references
teach the combination and others teach away from it) each reference must be
considered ‘for its power to suggest solutions to an artisan of ordinary skill. .
. . consider[ing] the degree to which one reference might accurately discredit
another.’” (quoting In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)).
Further, regarding Appellant’s reference to Higuchi’s Table 6, and
particularly Example 2 therein, we note that Higuchi criticizes all seven
examples listed in Table 6, not just Example 2. See Higuchi ¶ 160. Further,
Examples 1–7 in Table 6 have different “Types” of solid cores than those
listed in Table 5, against which the Table 6 examples are compared.10, 11 To
be clear, Table 6 identifies a solid core “Type” as being one of Nos. 2 or 5
through 9; on the other hand, the examples in Table 5 to which Table 6 is
compared (see Higuchi ¶ 139) comprise a solid core “Type” of Nos. 1

10 A certain “Type” number is associated with a set of solid core
characteristics (i.e., diameter, deflection, and hardness distribution) with one
Type number pertaining to different characteristics than another.
11 Paragraph 139 of Higuchi states:
The golf balls obtained in above Examples 1 to 9 and
Comparative Examples 1 to 7 were each evaluated for ball
deflection, ball properties, flight performance, spin rate on
approach shots, scuff resistance and feel on impact. The results
are shown in Tables 5 and 6.
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through 5. In short, the two tables employ different “Types” of solid cores,
afterwhich Higuchi criticizes all the Table 6 examples. See Higuchi ¶ 160.
In a final analysis, Higuchi rates Table 6’s Example 2 as “Good” and thus
equal or better than those in Table 5 (which range between “Ordinary” and
“Good”).
Thus, in view of the above, we are not persuaded the Examiner erred
in combining Higuchi and Watanabe, or that their combination renders
Higuchi’s device “inoperable for its intended purpose.” Appeal Br. 14. Nor
are we persuaded that the language identified by Appellant (see Higuchi
¶¶ 64, 160) is such that Higuchi can be said to teach away from the
overlapping and higher deformation values disclosed in Watanabe. See
Appeal Br. 15. Accordingly, we sustain the Examiner’s rejection of claims
1–3, 6–9, 11, 12, 26, and 28 as being unpatentable over Higuchi and
Watanabe.
Claim 13
Claim 13 depends, ultimately, from claim 1 and recites measuring a
hardness at multiple points along a radius of the core, and plotting these
hardness values against distance, so that “R2 of a linear approximation curve
obtained from a least square method is 0.90 or higher.” Appellant
acknowledges that the Examples in Higuchi result in R2 values both above
and below this 0.90 value. See Appeal Br. 16 (“R2 is about 0.80”), 17 (“R2
of 0.95 or higher”). With respect to those examples whose values are higher
than 0.90 as recited, Appellant contends that Higuchi “do[es] NOT meet the
claimed limitation of ‘the spherical core has a hardness difference between a
surface hardness and a center hardness of 25 or more and 80 or less,’” which
is a claim 1 limitation.
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The Examiner relied on Higuchi Paragraph 71 for this claim 1
limitation. See Final Act. 2. Paragraph 71 teaches Shore D hardness
differences “between the surface and center of the solid core” as having
values as low as 20 and as high as 50, but preferably somewhere in-
between.12 See Higuchi ¶ 71. Hence, we are not persuaded that Higuchi
fails to disclose hardness differences “of 25 or more and 80 or less” as
recited.
Appellant additionally contends, “Higuchi ’861 teach[es] away from a
steadily increasing linear core hardness profile as disclosed by Watanabe
’861.” Appeal Br. 16. However, Paragraph 29 of Watanabe clearly
addresses JIS-C hardness values at different locations along the core’s radius
stating the “parameter serves in the inventive golf ball as an indicator
showing that the hardness has a slope at which it increases linearly from the
core center to the core surface.” Such a slope is consistent with Appellant’s
Figures 2–14. Accordingly, Appellant’s “teaching away” argument is not
persuasive when Watanabe clearly provides the same disclosure. In other
words, we are not persuaded the Examiner erred in rejecting claim 13 as
being obvious in view of Higuchi and Watanabe. We sustain the Examiner’s
rejection of claim 13.
The rejection of claims 4 and 5
as unpatentable over Higuchi, Watanabe, and Melvin
Claims 4 and 5 depend from claim 1. Appellant does not argue
patentability based on the additional limitations recited in claims 4 and 5, but

12 Additionally, Watanabe states, “the hardness differences between the core
center and the core surface in JIS-C units being at least 15, preferably from
16 to 40, and more preferably from 18 to 35.” Watanabe ¶ 28.
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instead merely contends that “Melvin et al. ’562 do not overcome the
deficiencies” of Higuchi and Watanabe. Appeal Br. 9. Because Appellant
has not apprised us of any such deficiencies as discussed above, we sustain
the Examiner’s rejection of claims 4 and 5 as being obvious over Higuchi,
Watanabe, and Melvin.
The rejection of claims 10, 15, 16, 18, 21, 27, and 29
as unpatentable over Higuchi, Watanabe, and Isogawa
Regarding claim 10, “Appellants submit that Isogawa et al. ’991 do
not overcome the deficiencies of” Higuchi and Watanabe. Appeal Br. 9.
We sustain the Examiner’s rejection of claim 10.
Regarding claims 15, 21, 27, and 29, Appellant argues these claims
together. See Appeal Br. 9–12. We select independent claim 15 for review.
Appellant’s argument regarding this independent claim mirror those
provided above regarding independent claim 1. For example, Appellant
acknowledges the rejection is based upon the combination of Higuchi and
Watanabe when addressing claim 15’s similar limitation of “a compression
deformation amount of from 4.1 mm to 6.0 mm.” Appeal Br. 10. Appellant
also argues, “the combination of references cannot change the principle of
operation of the primary reference or render the reference inoperable for its
intended purpose.” Appeal Br. 11. Appellant’s repeat of such arguments are
not persuasive for the reasons previously expressed.
Appellant additionally argues that, “as evidenced by the comparative
testing in the present specification, the claimed invention achieves
unexpectedly superior results due to the inclusion of component (e).”
Appeal Br. 12. Component (e) of claim 15 is a reference to employing “2,6-
dichlorothiophenol and/or a metal salt thereof as an organic sulfur
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compound, and a filler.” Appellant does not explain how the results of using
component (e) are unexpectedly superior; Appellant merely asserts it to be
so. Id. Further, the Examiner relies on an explicit teaching of this feature by
Isogawa. See Final Act. 6 (referencing the rejection of claim 10, which
contains a similar limitation and relying on Paragraph 64 of Isogawa for
disclosing its chemical synonym). The Examiner states that it would have
been obvious “to provide Higuchi with a known suitable substitute organic
sulfur compound” as this component (e). Final Act. 6. Appellant does not
dispute the Examiner’s findings on this point. Accordingly, we affirm the
Examiner’s rejection of claims 15, 21, 27, and 29.
Regarding claims 16 and 18, Appellant again repeats arguments
previously presented, which were not persuasive the first time. See Appeal
Br. 17–18.
Accordingly, we sustain the Examiner’s rejection of claims 10, 15, 16,
18, 21, 27, and 29 as unpatentable over Higuchi, Watanabe, and Isogawa.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6–9,
11–13, 26,
28
103(a) Higuchi, Watanabe 1–3, 6–9, 11–
13, 26, 28

4, 5 103(a) Higuchi,
Watanabe, Melvin
4, 5
10, 15, 16,
18, 21, 27,
29
103(a) Higuchi,
Watanabe, Isogawa
10, 15, 16, 18,
21, 27, 29

Overall
Outcome
1–13, 15, 16,
18, 21, 26–29

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No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED