Ex Parte BenderDownload PDFPatent Trial and Appeal BoardMay 31, 201613436070 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/436,070 03/30/2012 126323 7590 06/02/2016 Honigman Miller Schwartz and Cohn LLP/Nike 350 West Michigan Avenue, Suite 330 Kalamazoo, MI 49007 FIRST NAMED INVENTOR Aaron Bender 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. 12-0211 US/201882-361746 CONFIRMATION NO. 1636 EXAMINER PERREAULT, ANDREW D ART UNIT PAPER NUMBER 3788 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): Patents@honigman.com abudde@honigman.com HV andenBrink@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AARON BENDER Appeal2014-006019 Application 13/436,070 Technology Center 3700 Before JOHN C. KERINS, STEP AN ST AI CO VICI, and SEAN P. O'HANLON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Aaron Bender (Appellant) seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 7-18. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. THE INVENTION Appellant's invention is directed to a kit of parts including a golf ball with a rubber core, a cure indicator, and a set of instructions for heating the Appeal2014-006019 Application 13/436,070 golf ball and cure indicator. Independent claim 7, reproduced below, is illustrative: 7. A kit of parts, comprising: a golf ball including a cover layer surrounding a core made of rubber, the core having an outer thickness that is crosslinked rubber and an inner thickness that incorporates the center and is substantially uncrosslinked rubber that includes a crosslinking agent; a cure indicator; a set of instructions indicating to a consumer to: heat the golf ball and cure indicator until the cure indicator changes color to a preselected color, and then quench the golf ball so as to cause the golf ball to exhibit a desired play characteristic when hit with a golf club. THE REJECTIONS ON APPEAL 1 The Examiner has rejected: (i) claims 7-18 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention; (ii) claims 7, 11-13, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Tutmark (US 2011/0177890 Al, published July 21, 2011) in view of Yokota (US 5,795,247, issued Aug. 18, 1998); (iii) claims 7, 11-13, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Tutmark in view ofMaruko (US 5,810,677, issued Sept. 22, 1998); 1 The Examiner has withdrawn twelve additional rejections of claims 7-18 under 35 U.S.C. § 103(a). Ans. 11. 2 Appeal2014-006019 Application 13/436,070 (iv) claims 7, 11-13, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Tutmark in view of Kim (US 7,819,761 B2, issued Oct. 26, 2010); (v) claims 7, 11-13, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Tutmark in view of Ishii (US 2011/0053707 Al, published Mar. 3, 2011); (vi) claims 8-10 and 14--16 under 35 U.S.C. § 103(a) as being unpatentable over Tutmark in view of Yokota, Maruko, Kim, or Ishii, as applied to claims 7 and 13, and further in view of Sullivan (US 5,542,677, issued Aug. 6, 1996). (vii) claims 7-18 (provisionally) on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-25 of copending U.S. application No. 13/341,374 and over claims 1-21 of copending U.S. application No. 13/779,515. ANALYSIS Claims 7-18-Indefiniteness The Examiner finds the recitation in claim 7 of "an inner thickness ... is substantially uncrosslinked rubber" to be indefinite because Appellant has not made it clear as to whether Appellant intends the rubber to be crosslinked or uncrosslinked. Final Act. 3. Additionally, the Examiner finds the phrase "the center" to lack sufficient antecedent basis (id. at 4), and, as such, the center "could refer to a center of other portions of the device such as the ball, the cover layer, the core, the outer thickness, etc." Ans. 12. Appellant contends that "crosslinked" and "uncrosslinked" are antonyms and that one of ordinary skill in the art would understand that an 3 Appeal2014-006019 Application 13/436,070 inner thickness that is substantially uncrosslinked rubber and includes a crosslinking agent would not encompass crosslinked rubber. Appeal Br. 4-- 7. Appellant further submits that "the center" as recited in claim 7 has inherent antecedent basis because the claim refers to "a golf ball" which inherently includes a center. Id. at 7. We agree with Appellant's positions on both points. As to the former, the recitation of an inner thickness that "is substantially uncrosslinked rubber that includes a crosslinking agent" would readily be understood by one of ordinary skill in the art as not being a crosslinked rubber, nor inclusive of crosslinked rubber. As to the latter, though explicit antecedent basis for "the center" is not present in the claim language, we find that one of ordinary skill in the art would understand "the center" to refer to the center of the claimed "golf ball." Because the language of the claim requires that the core's2 "inner thickness ... incorporates the center," interpreting "the center" as referring to either a center of "the cover layer" or "the outer thickness" is not reasonable. For these reasons, the rejection of claims 7-18 as being indefinite is not sustained. Claims 7, 11-13, 17, and 18----0bviousness-Tutmark/Yokota or Maruko or Kim or Ishii The Examiner interprets claim 7 as a product-by-process claim and, with respect to the core, concludes "all that is required [of the golf ball] is a rubber outer thickness and a rubber inner thickness with any crosslinking 2 Persons of ordinary skill in the golf ball art would recognize that the core is the center of the golf ball, and thus the center of the core is the center of the ball itself. 4 Appeal2014-006019 Application 13/436,070 related agent." Ans. 13; see also, Final Act. 18, 19, 21, 23. Following this interpretation, the Examiner finds that Tutmark discloses a golf ball as claimed, with the exception of the crosslinking agent, for which he relies alternatively on Yokota, Maruko, Kim, and Ishii. Final Act. 17-24. The Examiner additionally finds that Tutmark discloses a cure indicator in the form of another of the disclosed set of three golf balls. Id. at 18, 20, 21, 23. Appellant submits that the Examiner errs in characterizing the claims as product-by-process claims because the claims do not recite a process. Appeal Br. 9. As a result of that mischaracterization, Appellant contends, the Examiner inappropriately ignores the distinction between the claimed "crosslinked rubber" and "uncrosslinked rubber" limitations. Id. Moreover, Appellant submits that the Examiner's citation to a second golf ball in Tutmark as disclosing a "cure indicator" is inadequate because the reference does not discuss curing rubber or utilizing a second golf ball as an indicator of such curing. Reply Br. 10. We find the Examiner's interpretation of claim 7 as a product-by- process claim to be misguided. To fit into the product-by-process category, a claim must define a product in terms of the process used to manufacture that product. In re Brown, 459 F.2d 531, 535 (CCPA 1972) (product claimed by listing process steps used to obtain same is product-by-process claim). Such is not the case in claim 7, which is directed to a kit of parts including a golf ball having particular characteristics, a cure indicator, and instructions to a consumer for potentially performing some process on that golf ball. See Claims Appendix. Moreover, regarding the claimed golf ball, the Examiner's misguided claim interpretation leads to an improper conclusion concerning the required 5 Appeal2014-006019 Application 13/436,070 properties of that golf ball. The claimed golf ball does not simply require a core having "a rubber outer thickness and a rubber inner thickness with any crosslinking related agent" as proffered by the Examiner. See, e.g., Final Act. 18. Rather, the outer thickness of the core must be "crosslinked rubber" and the inner thickness of the core must be "substantially uncrosslinked rubber" with a crosslinking agent present. See Claims Appendix. We agree with Appellant that the Examiner inappropriately ignores the distinction between the claimed "crosslinked rubber" and "uncrosslinked rubber." The Examiner does not assert that Tutmark---or any of the other cited references---discloses a golf ball core having an outer thickness that is crosslinked rubber and an inner thickness that incorporates the center and is substantially uncrosslinked rubber, and, thus, the Examiner has not established that all of the claim limitations are found in the prior art. The Examiner does not rely on Yokota, Maruko, Kim, or Ishii in any manner that remedies the deficiencies of Tutmark. While each of these references may discuss the use of crosslinking agents during the curing of golf ball cores, the Examiner articulates no reason as to why one of ordinary skill in the art would include a crosslinking agent only in a core's "inner thickness that incorporates the center and is substantially uncrosslinked rubber" together with an "outer thickness that is crosslinked rubber," as required by the claim. Further, it is unclear from the Examiner's rejection that the prior art discloses or suggests a cure indicator. A cure indicator within the context of the claim indicates some degree or extent to which rubber is cured, e.g., by changing color during heating. See Spec. i-f l 0. The Examiner has not explained how Tutmark's additional golfball 204 would indicate anything 6 Appeal2014-006019 Application 13/436,070 about a first golf ball, let alone an extent to which rubber within that first golf ball has cured. Thus, the Examiner has not established that this limitation is found in the prior art. Accordingly, the rejection of claims 7, 11-13, 17, and 18 as being unpatentable over Tutmark in view of Yokota, Maruko, Kim, or Ishii is not sustained. Claims 8-10 and 14-16----0bviousness-- Tutmark/Yokota or Maruko or Kim or Ishii/Sullivan The Examiner does not rely on Sullivan in any manner that remedies the deficiencies in the combinations employed in rejecting claim 7. The rejection of claims 8-10 and 14--16, which depend either directly or indirectly from claim 7, is therefore not sustained. Claims 7-18-Nonstatutory Obviousness-Type Double Patenting The rejections of claims 7-18 in view of Application Nos. 13/341,374 and 13/779 ,515 state that the claims in these applications are not identical to claims 7-18 on appeal, but are not patentably distinct "because the co- pending application[s] disclose[] the same golf ball device. Final Act. 32, 33. This is an insufficient analysis to support an obviousness-type double patenting rejection. An appropriate analysis requires a rigorous comparison of the claims and findings and conclusions as to any alleged obviousness of limitations not found in the claims of the copending application. In re Langi, 759 F.2d 887, 893 (Fed. Cir. 1985) (inquiry is whether claimed invention in one application would have been obvious in view of claims 7 Appeal2014-006019 Application 13/436,070 from second application or patent). The rejections are therefore not sustained. We further note that amendments to the claims have been made in Application No. 13/341,374, and that the claims in Application No. 13/779,515 are currently subject to a non-final rejection. In the event that consideration is given to reinstituting a rejection based on obviousness-type double patenting, the claims as they currently stand in those applications should be taken into account. DECISION The rejection of claims 7-18 under 35 U.S.C. § 112, second paragraph, is reversed. The rejections of claims 7-18 under 35 U.S.C. § 103(a) are reversed. The rejections of claims 7-18 on the grounds of obviousness-type double patenting are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation