DUNLOP SPORTS CO. LTD.

Patent Trials and Appeals Board

Apr 21, 2021

2020005449 (P.T.A.B. Apr. 21, 2021)

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.
15/785,109 10/16/2017 Takahiro SAJIMA 3673-0616PUS1 1309
2292 7590 04/21/2021
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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 and HIRONORI TAKIHARA
____________

Appeal 2020-005449
Application 15/785,109
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Nov. 5, 2019, hereinafter “Final
Act.”) rejecting claims 1, 6–8, and 10–15 under 35 U.S.C. § 103 as being

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. SUMITOMO RUBBER INDUSTRIES, LTD. is identified as
the real party in interest in Appellant’s Appeal Brief (filed Apr. 3, 2020,
hereinafter “Appeal Br.”). Appeal Br. 1.
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unpatentable over Yamaguchi,2 Maruoka,3 and Yokota.4,5 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention is directed “to golf balls including a core and a
cover.” Spec. 1, ll. 12–13.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A golf ball comprising a solid core and a cover
positioned outside the solid core, wherein
if FB2 is the golf ball secondary natural frequency and
FC2 is the solid core secondary natural frequency, then a
difference (FB2 - FC2) is greater than 420 Hz and not greater
than 760 Hz,
the secondary natural frequency FB2 of the golf ball is
not less than 2250 Hz and not greater than 3050 Hz,
the solid core secondary natural frequency FC2 is not less
than 1700 Hz and not greater than 2400 Hz,
a sum (FB2 + FC2) is not less than 4200 Hz and not
greater than 5000 Hz, and
the core has a compressive deformation Dc of not less
than 2.30 mm and not greater than 3.90 mm, wherein the
compressive deformation Dc is determined by applying an
initial load of 98N and applying a final load of 1274N.

2 Yamaguchi et al., US 6,123,629, issued Sept. 26, 2000.
3 Maruoka et al., US 6,589,124 Bl, issued July 8, 2003.
4 Yokota, US 2004/0142768 Al, published July 22, 2004.
5 Claims 2–5, 9, and 16 are canceled. Appeal Br., Claims App., 1–2.
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ANALYSIS
Claim 1
The Examiner finds Yamaguchi discloses a golf ball including, inter
alia, a cover and a solid core exhibiting a core secondary natural frequency
(FC2) in the range of 900–2400 Hz, i.e., 2000 Hz. Final Act. 3 (citing
Yamaguchi, Fig. 1); see also Yamaguchi, Table 2 (golf ball numbers 8–11
exhibiting core secondary natural frequencies of 1950, 2050, 2200, and 2400
Hz). The Examiner further finds that Yamaguchi’s golf ball “would
inherently have some second natural frequency” and that Maruoka discloses
a golf ball exhibiting a secondary natural frequency (FB2) in the range of
2000–5000 Hz, i.e., 2500 Hz. Final Act. 3 (citing Maruoka, col. 4, ll. 7–13).
Thus, the Examiner determines that it would have been obvious for a person
of ordinary skill in the art
to modify Yamaguchi to use a second natural frequency of
2000 to 5000 Hz as taught by Maruoka . . . because doing so
would be use of a known technique (using a secondary
frequency of a golf ball between 2000 and 5000 Hz, namely
2500 Hz) to improve a similar product (a two-piece golf ball
having a core secondary natural frequency of 2000 Hz) in the
same way (using a secondary frequency of a two-piece golf ball
of 2500 Hz so that the ball is not too hard and also has
sufficient rebound ability.

Id. According to the Examiner, the golf ball of Yamaguchi, as modified by
Maruoka, exhibits a difference FB2-FC2 of 500 Hz and a sum FB2+FC2 of
4500 Hz, which are “values within applicant’s claimed range.” Id.
The Examiner further finds that the core of Yamaguchi’s two-piece
golf ball “would inherently have some compression” and that Yokota
discloses a golf ball having a core, which when applying an initial load of 98
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N and a final load of 1274 N, experiences a compressive deformation Dc in
the range of 2.3 to 3.3 mm. Final Act. 4 (citing Yokota, paras. 25, 63).
Hence, the Examiner further determines that it would have been obvious to a
skilled artisan
to modify the combined Yamaguchi and Maruoka to use a core
having a compressive deformation Dc of not less than 2.30 mm
and not greater than 3.90 mm as taught by Yokota because
doing so would be use of a known technique (using known and
workable compression values for cores involved in golf balls
focused on natural frequency) to improve a similar product (a
two piece golf ball having a core with an inherent compression
value, the golf ball also focused on natural frequency) in the
same way (using known and workable compression values for
cores involved in golf balls focused on natural frequency, the
compression values allowing for soft feel and improved
resilience.

Id.
Appellant argues that:
(1) Yamaguchi fails to disclose a golf ball having a ball
secondary natural frequency range (FB2) in the range
of 2250 to 3050 Hz and a core compression deformation
(Dc) in the range of 2.3 to 3.9 mm (Appeal Br. 7–8);
(2) Maruoka fails to disclose a solid core golf ball having a core
secondary natural frequency (FC2) range in the range
of 1700 to 2400 Hz and a core compression deformation
(Dc) in the range of 2.3 to 3.9 mm (id. at 9–10);
(3) Yokota fails to disclose a golf ball having a ball secondary
natural frequency range (FB2) in the range of 2250 to 3050
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Hz and a core secondary natural frequency (FC2) range in
the range of 1700 to 2400 Hz (id. at 11); and
(4) neither Yamaguchi, Maruoka, nor Yokota discloses the
claimed range of the difference FB2-FC2 of 420–760 Hz and
the sum range of FB2+FC2 of 4200–5000 Hz (id. at 7–9, 11).
We are not persuaded by Appellant’s arguments because “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. [Each reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Yamaguchi’s core
secondary natural frequency (FC2) range of 900–2400 Hz encompasses the
claimed range of 1700–2400 Hz; Maruoka’s golf ball secondary natural
frequency (FB2) range of 2000–5000 Hz encompasses the claimed range
of 2250–3050 Hz; and Yokota’s core compression deformation (Dc) range
of 2.3–3.3 mm is encompassed by the claimed range of 2.3–3.9 mm. Hence,
Yamaguchi’s solid core golf ball, as modified by Maruoko and Yokota, will
have the following properties:
1. a ball secondary natural frequency (FB2) in the range of 2000–
5000 Hz (as per Maruoka), which encompasses the claimed range
of 2250–3050 Hz;
2. a core secondary natural frequency (FC2) in the range of 900–2400
Hz (as per Yamaguchi), which encompasses the claimed range
of 1700 to 2400 Hz; and
3. a core compression deformation (Dc) range of 2.3–3.3 mm, when
applying an initial load of 98 N and a final load of 1274 N, which
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is encompassed by the claimed range of 2.3–3.9 mm (as per
Yokota).
Furthermore, as per the Examiner’s example, employing simple arithmetic
operations, a skilled artisan would readily calculate the difference FB2-FC2
and the sum FB2+FC2 of Yamaguchi’s solid core golf ball, as modified by
Maruoko and Yokota, to be 500 Hz and 4500 Hz, respectively, when
considering FB2 to be 2500 Hz and FC2 is 2000 Hz.6 See Final Act. 3.
Appellant further argues that because Maruoka’s secondary natural
frequency corresponds to that of a hollow core golf ball, whereas the golf
balls of both Yamaguchi and Yokota have solid cores, a skilled artisan
would not look to Maruoka’s hollow core golf ball to further modify the
solid core golf ball of Yamaguchi, as modified by Yokota. Appeal Br. 11.
Thus, according to Appellant, the Examiner’s combination is based on
impermissible hindsight reconstruction. Id. at 10.
We are not persuaded by Appellant’s argument that the Examiner’s
determination of obviousness is based on impermissible hindsight
reconstruction. Rather, the Examiner’s modification is an improvement to
Yamaguchi’s solid core golf ball to provide Maruoka’s secondary natural
frequency (FB2) in the range of 2000–5000 Hz because Maruoka specifically
discloses that, in general, “the secondary natural frequency . . . is closely
connected with shot feel of golf balls” and, moreover, a frequency range
of 2000–5000 Hz provides for an optimum shot feel. See Maruoko, col. 3, ll.

6 A ball secondary natural frequency (FB2) of 2500 Hz is within Maruoka’s
disclosed range of 2000–5000 Hz and a core secondary natural frequency
(FC2) of 2000 Hz is within Yamaguchi’s disclosed preferable range of 900–
2400 Hz.
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61–63, col. 4, ll. 9–13 (if the secondary natural frequency is larger than 5000
Hz, the shot feel is poor because the ball is too hard, and if it is below 2000
Hz, the ball is too soft and the rebound characteristics are degraded).
We appreciate that Maruoka’s secondary natural frequency range
of 2000–5000 Hz is for a hollow core golf ball, whereas Yamaguchi’s golf
ball has a solid core; however, the Examiner is correct that Maruoka
discloses that a solid golf ball also exhibits a secondary natural frequency in
the 2000–5000 Hz range, namely, at 3700 and 4200 Hz. Examiner’s Answer
(dated May 18, 2020, hereinafter “Ans.”) 13 (citing Maruoka, Table 5,
Comparative Example No. 3, 4). Even though Maruoka’s secondary natural
frequencies of 3700 and 4200 Hz of a solid core golf ball are not within the
claimed range of 2250 to 3050 Hz, we do not agree with Appellant’s
position that a skilled artisan “would head away from the claimed FB2 range
of 2250-3050 Hz which is not preferred and is not exemplified.” Appeal
Br. 10 (emphasis added). In particular, we do not agree with Appellant that
“the modification of the Maruoka[‘s] . . . golf ball core to a solid core would
change its principle of operation” because the Examiner is not modifying
Maruoka’s hollow core to a solid core, but rather, is modifying Yamaguchi’s
solid core golf ball to exhibit a secondary natural frequency in Maruoka’s
frequency range. See id. (emphasis omitted).
Nonetheless, we appreciate Appellant’s contention that Maruoka’s
secondary natural frequencies of 3700 and 4200 Hz exhibit a poor shot feel.
See Reply Brief (filed July 17, 2020, hereinafter “Reply Br.”) 3. However, a
prior art reference must be considered in its entirety, i.e., as a whole,
including portions that would lead away from the claimed invention. W.L.
Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983).
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In this case, Maruoka discloses that (1) in general “the secondary natural
frequency . . . is closely connected with shot feel of golf balls”; (2) a solid
core golf ball exhibits a secondary natural frequency in the 2000–5000 Hz
range; and (3) secondary natural frequencies of 3700 and 4200 Hz result in a
poor shot feel. See Maruoka, col. 3, ll. 59–61, col. 12, ll. 1–2, Table 5.
Thus, considering Maruoka’s disclosure as a whole, a person of ordinary
skill in the art would have understood that a solid core golf ball exhibiting a
secondary natural frequency in the range of 2000–3700 Hz, which
encompasses the claimed range of 2250–3050 Hz, would have an adequate
shot feel. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan
must be presumed to know something about the art apart from what the
reference discloses.).
Furthermore, the Examiner is correct that a skilled artisan would
know from prior art, as evidenced by Moriyama7 and Sullivan,8 that solid
core golf balls have in general a secondary natural frequency above 2000 Hz
(also disclosed by Maruoka), and in particular, exhibit a secondary natural
frequency at 2575 Hz. Ans. 13 (citing Moroyama, para. 30; Sullivan,
Fig. 10). Thus, we agree with the Examiner’s position that “Sullivan
completely and unequivocally reinforces the idea in the Maruoka disclosure
that both . . . hollow and solid core golf ball[s] can have a desired FB2
between 2-5 KHz, specifically around 2500 Hz as used in the rejection.” Id.
Accordingly, for the foregoing reasons, modifying Yamaguchi’s solid core
golf ball to exhibit Maruoka’s secondary natural frequency range of 2000–
3700 Hz, and in particular, a value of 2575 Hz, as known in the prior art, is

7 Moriyama, US 2003/0228936 A1, published Dec. 11, 2003.
8 Sullivan et al., US 5,971,870, issued Oct. 26, 1999.
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not hindsight, as Appellant contends. See Appeal Br. 10; Reply Br. 3.
Rather, such a modification is merely the application of a known technique
(i.e., a known secondary natural frequency range and value) to a piece of
prior art ready for the improvement. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). A skilled artisan would have had good reason to
pursue the known options within his or her technical grasp. See id. at 421
(“If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense.”).
Furthermore, a preponderance of the evidence supports the
Examiner’s finding that the secondary frequencies of the core (FC2) and the
golf ball (FB2) are result-effective variables, thus, rendering their
optimization within the grasp of a person of ordinary skill in the art. See
Ans. 14. It is well settled that if the relevant comparison between disputed
claim limitations and the prior art pertains to a range of overlapping values,
the Federal Circuit has “consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003). Where a variable is known to affect a
particular desirable result, i.e., a “result-effective” variable, the “overlap
itself provides sufficient motivation to optimize the ranges,” and “it is not
inventive to discover the optimum or workable ranges by routine
experimentation,” because the desire to improve results would motivate
skilled artisans to experiment with, and improve upon, known conditions in
the prior art. In re Applied Materials, Inc., 692 F.3d 1289, 1295–96 (Fed.
Cir. 2012) (citations and quotations omitted).
In this case, Yamaguchi discloses that when the core secondary
natural frequency is below 850 Hz “the golf ball produces very low hit
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sound when hit” and when it “exceeds 2700 Hz, the golf ball produces very
high hit sound like a metallic sound.” Yamaguchi, col. 3, ll. 32–36 and 39–
42. As such, because Yamaguchi’s core secondary natural frequency
constitutes a result-effective variable and the disclosed range of 850 to 2700
Hz encompasses the narrower claimed range of 1700 to 2400 Hz, the
claimed range of 1700–2400 Hz is obvious and can be arrived at by routine
optimization. See Peterson, 315 F.3d at 1330 (the Federal Circuit
determined that “a prior art reference that discloses a range encompassing a
somewhat narrower claimed range is sufficient to establish a prima facie
case of obviousness.”). Moreover, Yamaguchi specifically discloses core
secondary natural frequencies of 1950, 2050, 2200, and 2400 Hz, which are
specific values in the claimed range of 1700–2400 Hz. See Yamaguchi,
Table 2 (golf ball numbers 8–11).
Similarly, Maruoka discloses that in general “the secondary natural
frequency . . . is closely connected with shot feel of golf balls” and if the
secondary natural frequency is larger than 5000 Hz, the shot feel is poor
because the ball is too hard, and if it is below 2000 Hz, the ball is too soft
and the rebound characteristics are degraded. Maruoka, col. 3, ll. 61–63,
col. 4, ll. 9–13. Maruoka further discloses that secondary natural
frequencies of 3700 and 4200 Hz for a solid core golf ball results in a poor
shot feel. Id. at col. 12, ll. 1–2, Table 5. As such, because Maruoka’s ball
secondary natural frequency constitutes a result-effective variable and the
disclosed range of 2000–3700 Hz encompasses the narrower claimed range
of 2250–3050 Hz, the claimed range of 2250–3050 Hz is obvious and can be
arrived at by routine optimization. See Peterson, 315 F.3d at 1330.
Moreover, the prior art of Sullivan evidences a golf ball having a secondary
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natural frequency of 2575 Hz, which is a specific value within Maruoka’s
disclosed range of 2000–3700 Hz and the claimed range of 2250–3050 Hz.
See Sullivan, Fig. 10.
As such, in light of the Yamaguchi and Maruoka disclosures
discussed supra, a skilled artisan would readily understand that optimizing
the secondary natural frequencies of both the ball and the core provides for
an optimum shot feel. Hence, we are not persuaded by Appellant’s
argument that a skilled artisan would not know how to choose appropriate
FC2 and FB2 values from the disclosures of Yamaguchi and Maruoka such
that the resulting difference FB2-FC2 and sum FB2+FC2 lies within the
claimed ranges of 420–760 Hz and 4200–5000 Hz, respectively. See Appeal
Br. 9–10; Reply Br. 3. For example, having a core secondary natural
frequency of 2050 Hz (FC2), as specifically taught by Yamaguchi in Table 2,
and a ball secondary natural frequency of 2575 Hz (FB2), as known in the
prior art (Sullivan), would result in a difference FB2-FC2 and a sum
FB2+FC2 of 525 Hz and 4625 Hz, respectively.
Lastly, Appellant argues that “all of the references fail to disclose or
recognize the advantageous properties exhibited by embodiments of the
claimed invention.” Appeal Br. 12. Pointing to Examples 1–4, 6–9, 11, 13–
15, 17, and 18 of the Specification, Appellant notes that the golf balls of
these examples have the following properties:
(1) FB2-FC2 =426 to 735 Hz;
(2) FB2+FC2 =4200 Hz to 4959 Hz;
(3) FC2=1779 to 2341 Hz;
(4) FB2=2329 to 2995 Hz;
(5) compressive deformation amount Dc= 2.40 to 3.80 mm;
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(6) core diameter range of 38.6 mm to 40.0 mm; and
(7) cover thickness range of 1.35 mm to 2.05 mm. Appeal Br. 4–5.
Appellant also refers to Comparative Examples 1–4 described in the
Specification and notes that although they employed similar core and cover
compositions, similar core diameters (38.4–40.2 mm), similar cover
thicknesses (1.25–2.15 mm), and “some overlapping FC2 and FB2 values,”
nonetheless, “exhibit (FB2 - FC2) values just below and above the claimed
range.” Id. at 5. Thus, Appellant contends that having the above noted
characteristics results in a solid core golf ball “exhibit[ing] advantageous
‘putter evaluation’ scores (positive/negative and low) and/or ‘feel at impact’
scores (‘A’ most preferred, ‘D’ least preferred), while also exhibiting
corresponding or advantageous approach performance spin rate (higher)
properties compared to Comparative Examples 1 to 4.” Id. Appellant
further notes that the Declaration filed under 37 C.F.R § 1.132 by Takahiro
Sajima on August 21, 2018 (hereinafter “Sajima Declaration”) also
demonstrates that golf balls having FB2 values of 2,230 Hz or 3052 Hz,
which are below and above the claimed range, respectively, “exhibit inferior
approach performance (higher spin), putter ‘feel’ performance and/or feel at
impact as compared to Examples 1 to 4, 6 to 9, 11, 13 to 15, 17, and 18.” Id.
Thus, according to Appellant,
[a] significant effect of the present invention is the result of a
combination of the second natural frequency of the core, i.e.
FC2, which is determined by the hardness, diameter and
composition of the core, and the secondary natural frequency of
a golf ball FB2 which is determined by the hardness, thickness
and composition of the cover in addition to the core
configuration.

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Id. at 5–6. As such, we understand Appellant’s arguments to allege that the
Specification and the Sajima Declaration show unexpectedly superior putter
evaluation scores, feel at impact scores, and approach performance spin rate
for a solid core golf ball having a ball secondary normal frequency FB2 in
the range of 2250–3050 Hz, a difference FB2-FC2 in the range of 420–760
Hz, and a sum FB2+FC2 in the range of 4200–5000 Hz. See Appeal Br. 6–7;
Sajima Declaration, p. 2.
When an applicant seeks to overcome a prima facie case of
obviousness by showing improved performance in a range that is within or
overlaps with a range disclosed in the prior art, the applicant must “show
that the [claimed] range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range.” In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Moreover,
even though applicant’s modification results in great
improvement and utility over the prior art, it may still not be
patentable if the modification was within the capabilities of one
skilled in the art, unless the claimed ranges “produce a new and
unexpected result which is different in kind and not merely in
degree from the results of the prior art.”
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Additionally, expected
beneficial results are evidence of obviousness just as unexpected beneficial
results are evidence of unobviousness. See Ex parte Novak, 16
USPQ2d 2041, 2043 (BPAI 1989), aff'd mem., 899 F.2d 1228 (Fed.
Cir. 1990); In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
First, we agree with the Examiner that from the Table presented by
Appellant on page 7 of the Appeal Brief “only Examples 14 and 15 remain
inside the claimed range,” as Examples 5, 10, and 16 exhibit a sum FB2+FC2
outside the claimed range. Ans. 7–8. Second, we agree with the Examiner
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“that the difference between an ‘A’ rating and a ‘B’ rating is one person (i.e.
one vote between a nine (9) and an eight (8)),” and, thus, “hardly appears to
be statistically ‘significant’ to the point of unexpected results, but is more
likely merely a difference in degree.” Id. at 7.
As such, in regards to Appellant’s comparison between the golf balls
of Example 15 and Comparative Example 3 (see Appeal Br. 6), we agree
with the Examiner that both have a feel impact score of “A”, even though
the difference FB2-FC2 of Comparative Example 3 (801 Hz) is outside the
claimed range of 420–760 Hz. See Ans. 9. Furthermore, we appreciate
Appellant’s position that there is a difference of 34 rpm in spin rate and 0.3
m in putter evaluation between the golf balls of Example 15 and
Comparative Example 3. See Appeal Br. 6. However, an even larger
difference is present between the golf balls of Examples 14 and 15 of the
claimed invention, namely, a difference of 61 rpm and a putter evaluation
of 0.4 m, even though FB2, FB2-FC2, and FB2+FC2 of the golf balls of
Examples 14 and 15 are all within the claimed ranges. See id. at 7, Table 2.
Thus, based on the comparison between Example 15 and Comparative
Example 3, we are not persuaded that the claimed ranges for FB2, FB2-FC2,
and FB2+FC2 are “critical.”
As to the comparison between the golf balls of Example 14 and Test-2
(see Appeal Br. 9), we appreciate that the Test-2 golf ball has values of FB2
and (FB2+FC2) “outside claimed ranges” and exhibits a putter evaluation
that is 1.2 m shorter and a feel impact score of “D” as compared to the golf
ball of Example 14. See Appeal Br. 6, Table. However, we are not
persuaded that the claimed ranges for FB2 and FB2+FC2 are “critical”
because other factors can influence the resulting difference in putter
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evaluation and feel impact score. For example, we agree with the Examiner
that the Test-2 golf ball employs core composition “H,” which accounts for
two of the three “D” rated golf balls, and, thus, can influence the resulting
difference in feel impact score. See Ans. 10; see also Appeal Br. 7, Table
(Test-2, Example 10, Example 16). Similarly, the resulting difference in
putter evaluation between the golf balls of Test-2 and Example 14 could be
the result of the thicker cover of the Test-2 golf ball, i.e., 2.15 mm. See
Appeal Br. 7, Table. For example, the golf ball of Comparative Example 3
has the same cover thickness of 2.15 mm as the Test-2 golf ball and
similarly exhibits a putter evaluation that is shorter than the golf ball of
Example 14 of the claimed invention. See Appeal Br. 7, Table (Test-2,
Comparative Example 3, Example 14).
Finally, with respect to the comparison between the golf balls of
Example 16 and Comparative Example 3 and, the comparison between the
golf balls of Example 10 and Comparative Example 2, we agree with the
Examiner that all of these golf ball samples are outside the claimed ranges.
See Ans. 10–11. In particular, the Comparative Example 2 golf ball exhibits
a difference FB2-FC2 and a sum FB2+FC2 outside the claimed ranges; the
Comparative Example 3 golf ball exhibits a difference FB2-FC2 outside the
claimed range; and the golf balls of Examples 10 and 16 exhibit a sum
FB2+FC2 outside the claimed range. See Appeal Br. 7, Table. The
Examiner is correct that because the golf ball of Comparative Example 3
exhibits a feel impact score of “A,” even though the difference FB2-FC2 is
outside the claimed range, “is telling as to the lack of criticality.” Ans. 10.
Furthermore, the drop in feel impact score to a “B” score in the ball of
Comparative Example 2, as compared to the ball of Comparative Example 3,
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could not reasonably have been unexpected to a person of ordinary skill in
the art. That is, because the golf ball of Comparative Example 3 exhibits a
difference FB2-FC2 outside the claimed range, whereas the golf ball of
Comparative Example 2 exhibits both a difference FB2-FC2 and a sum
FB2+FC2 outside the claimed ranges. See Appeal Br. 7, Table.
In conclusion, after reviewing all of the evidence before us, including
the totality of Appellant’s evidence, it is our conclusion that, on balance, the
evidence of obviousness discussed above outweighs the evidence of
nonobviousness submitted by Appellant. Accordingly, the subject matter of
claim 1 would have been obvious to a person of ordinary skill in the art
within the meaning of 35 U.S.C. § 103 at the time Appellant’s invention was
made. Therefore, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103 of independent claim 1 as unpatentable over
Yamaguchi, Maruoka, and Yokota.

Claims 6–8 and 10–15
In addition to the arguments discussed supra, which we did not find
persuasive, Appellant’s further argument amounts to a recitation of the claim
elements. See Appeal Br. 12–13. Such statements do not constitute a
separate argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted the same language in the prior rule
under 37 C.F.R. § 41.37(c)(1)(vii) as requiring “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”).
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Furthermore, Appellant does not adequately explain why Maruoka’s
and Yokota’s disclosures of a golf ball compression deformation (Db) range
of 2.5–3.2 mm and 2.2–3.5 mm, respectively, and that ball compression
deformation is a result-effective variable, does not render obvious the range
of claim 6 (1.8–3.0 mm). See Final Act. 4 (citing Maruoka, col. 4, ll. 14–21;
Yokota, para. 68). Even though the golf balls of Comparative Examples 3
and 4 have a ball compression deformation (Db) in the claimed range of 1.8–
3.0 mm, the feel at impact score of the Comparative Example 3 golf ball is
“A,” whereas for the golf ball of Comparative Examples 4 it is “C.” See
Appeal Br. 7, Table. Thus, we are not persuaded that the claimed ball
compression deformation (Db) range is “critical.”
Similarly, Appellant does not adequately explain why Yamaguchi’s
disclosure of a golf ball cover thickness of 1–5 mm does not render obvious
the ranges of claims 7 and 12–15. See Final Act. 5–6 (citing Yamaguchi,
col. 6, ll. 7–8). As the golf balls of Examples 14 and 15 have the same cover
thickness of 2.05 mm, yet exhibit different putter evaluations, we are not
persuaded that the claimed cover thickness ranges are “critical.” See Appeal
Br. 7, Table.
Appellant also does not adequately explain why Yokota’s disclosure
of a golf ball cover Shore D hardness range of 20–60 and that ball cover
hardness is a result-effective variable, does not render obvious the range of
claim 8 (54–67 Shore D). See Final Act. 5 (citing Yokota, para. 67).9 As
the golf balls of Examples 14 and 15 have the same ball cover Shore D

9 We consider the Examiner’s reference to Yokota’s paragraph 66 to be a
typographical error because the subject matter discussed here is in
paragraph 67.
Appeal 2020-005449
Application 15/785,109

18

hardness of 63, yet exhibit different putter evaluations, we are not persuaded
that the claimed ball cover Shore D hardness range is “critical.” See Appeal
Br. 7, Table.
Finally, Appellant does not adequately explain why Yamaguchi’s
disclosure of a golf ball core diameter range of 32.7–40.7 mm does not
render obvious the ranges of claims 10 and 11. See Final Act. 5 (citing
Yamaguchi, col. 5, ll. 7–10). As the golf balls of Examples 14 and 15 have
the same golf ball core diameter of 38.6 mm, yet exhibit different putter
evaluations, we are not persuaded that the claimed golf ball core diameter
range is “critical.” See Appeal Br. 7, Table.
Accordingly, for the foregoing reasons, we also sustain the rejection
under 35 U.S.C. § 103 of claims 6–8 and 10–15 as unpatentable over
Yamaguchi, Maruoka, and Yokota.

CONCLUSION

Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 6–8,
10–15
103 Yamaguchi,
Maruoka, Yokota
1, 6–8,
10–15

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)(1)(iv).

AFFIRMED