95000122 (B.P.A.I. Jun. 24, 2011)

Ex Parte 6506130 et al

Board of Patent Appeals and InterferencesJun 24, 2011

95000122 (B.P.A.I. Jun. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ ACUSHNET COMPANY Requester and Respondent v. Patents of CALLAWAY GOLF COMPANY Patent Owner and Appellant ____________ Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 Technology Center 3900 ____________ Before JAMESON LEE, ROMULO H. DELMENDO, and DANIEL S. SONG, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 2 The Patent Owner requests rehearing of our March 9, 2011 Decision (hereinafter “original Dec.”), in which we affirmed the Examiner’s rejections of claims 4 and 5 of the ‘130 Patent, claims 1-6 of the ‘293 Patent, claims 1-22 of the ‘156 Patent, and claims 1-6 of the ‘873 Patent (Request for Rehearing filed April 11, 2011, hereinafter “Req. Reh’g”). On May 11, 2011, the Requester filed an Opposition to the Patent Owner’s Request for Rehearing. We DENY the Patent Owner’s request to modify our original Decision. Shore D Hardness Values The Patent Owner contends that the discussion in our original Decision (p. 21) concerning the Shore D hardness values recited in claim 1 of the ‘293 Patent is internally inconsistent (Req. Reh’g 2). According to the Patent Owner, “[i]f sometimes the ‘on the ball’ Shore D hardness values recited in claim 1 result and sometimes they do not, depending on the particular materials selected, then it cannot be true that the Shore D hardness values recited in claim 1 ‘naturally follow as a necessary consequence’ of selecting the materials described in Nesbitt and Molitor” (Req. Reh’g 2-3). On this matter, we are in complete agreement with the Requester (Opposition at 2-5). Also, as pointed out in our original Decision (p. 19), it is undisputed that the foamable ionomer resin blends and the foamable thermoplastic polyurethane exemplified in Molitor ‘637 are the same materials that may be used as the inner cover layer and the outer cover layer, respectively, in claim 1 of the ‘293 Patent. Because Nesbitt explicitly Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 3 directs a person of ordinary skill in the art to the teachings of Molitor ‘637 for options in the selection of materials suitable as the inner cover and outer cover layers, the recited Shore D hardness values would necessarily follow from the otherwise obvious selection of the same foamable ionomer resin blends and the foamable polyurethane exemplified in Molitor ‘637. In re Kao, 2011 WL 1832537 * 10 (Fed. Cir. 2011) (“This is not a case where the Board relied on an unknown property of prior art for a teaching. Rather, Maloney’s express teachings render the claimed controlled release oxymorphone formulation obvious, and the claimed ‘food effect’ adds nothing of patentable consequence.”). Further on this point, we think that the following guidance from In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc), is instructive: This court, in reconsidering this case in banc, reaffirms that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to rebut that prima facie case. Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have . . . . There is no question that all evidence of the properties of the claimed compositions and the prior art must be considered in determining the ultimate question of patentability, but it is also clear that the discovery that a claimed composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case. As to the Patent Owner’s other arguments at pages 3-4 of the Request, we simply refer to the Requester’s rebuttal in the Opposition at pages 3-5, which we adopt as our own. Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 4 Predictability The Patent Owner’s argument based on unpredictability is not persuasive (Req. Reh’g 4-5). As indicated in our original Decision, we have fully considered the Patent Owner’s arguments and evidence offered in this appeal but find them insufficient to outweigh the strong evidence in support of obviousness. Merely asserting unpredictability based on a subjective belief that the prior art teachings were “wrong” does not satisfy the Patent Owner’s burden to rebut the prima facie case of obviousness. Secondary Considerations The Patent Owner argues that the “result speaks for itself” (Req. Reh’g 6). It does not. When, as here, a prima facie case of obviousness is established, the burden shifts to the Patent Owner to come forward with evidence sufficient to rebut the prima facie case. Dillon, 919 F.2d at 692-93. Additionally, our reviewing court stated that “there is a . . . fundamental requirement that must be met before secondary considerations can carry the day.” In re Kao, 2011 WL 1832537 * 8. “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Id. In this appeal, we have not been directed to sufficient objective evidence demonstrating criticality – in terms of commercial success, unexpected results, or otherwise – for the claimed Shore D hardness values (the asserted novel features of the claimed invention). While the Patent Owner alleges that “the patented technology, embodied in the Pro V1 ball, Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 5 profoundly changed the entire golf industry” (Req. Reh’g 6), we do not know whether the feature that is actually responsible for such a result is even reflected in the claim language at issue (FF 23, 25). While we appreciate that the Patent Owner need not prove that every embodiment within the scope of the claims provides unexpected results or commercial success, it is also not helpful to merely assert that the commercially successful product falls within the scope of the claim. Otherwise, a broadly drafted claim that encompasses both the invention as well as the prior art would be per se patentable without any regard as to whether the actual critical features responsible for the success are reasonably reflected in the claim. Kao, 2011 WL 1832537 *10 (“In short, if it is not established that the claimed and novel range for a controlled release oxymorphone formulation causes commercial success where the prior art range would not, then it will be difficult to show the required nexus.”). In sum, while we have reconsidered our decision in light of the Patent Owner’s arguments, we decline to modify our opinion in any respect. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. §§ 1.304, 1.983, and 41.81. DENIED rvb Appeals 2010-012258; 2011-001247; 2011-001248; & 2011-001255 Reexamination Controls 95/000,122; 95/000,120; 95/000,121; & 95/000,123 Patents 6,506,130 B2; 6,210,293 B1; 6,503,156 B1; & 6,595,873 B2 6 cc: Patent Owner: DOROTHY P. WHELAN FISH & RICHARDSON PC P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 Third-Party Requester: CLINTON H. BRANNON MAYER BROWN LLP 1999 K STREET, N.W. WASHINGTON, DC 20006