Ex Parte Bulpett et al

Patent Trial and Appeal Board

Oct 30, 2014

12558726 (P.T.A.B. Oct. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID A. BULPETT, BRIAN COMEAU, DEREK A. LADD,
and MICHAEL J. SULLIVAN
____________________

Appeal 2012-009702
Application 12/558,726
Technology Center 3700
____________________

Before ANNETTE R. REIMERS, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David A. Bulpett et al. (“Appellants”) seek our review under 35
U.S.C. § 134 of rejected claims 1–10. Appeal Br. 3. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-009702
Application 12/558,726

2
CLAIMED SUBJECT MATTER
The Appellants’ invention is directed to golf balls. See Spec. 1.
Claims 1 and 2 are illustrative and are reproduced below with emphasis on
the relevant claim limitations.
1. A golf ball comprising:
an inner core having a first outer surface and a geometric
center and being formed from a first substantially homogenous
composition such that the inner core has a hardness of about 60
Shore C to about 90 Shore C;
an outer core layer disposed about the inner core having a
second outer surface and being formed from a second
substantially homogenous composition such that the outer core
layer has a hardness of about 60 Shore C to about 95 Shore C;
and
a cover layer disposed about the outer core layer;
wherein the geometric center and first and second outer
surfaces each have a hardness, the hardness of the second outer
surface being lower than the hardness of the geometric center
to define a negative hardness gradient.

2. The golf ball of claim 1, wherein the outer core
layer has a positive gradient of about 10 Shore C to about 20
Shore C.

THE REJECTIONS
The Examiner has rejected (Answer 4–5):
(i) claims 2 and 3 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement; and
(ii) claims 1–10 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.

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Appeal 2012-009702
Application 12/558,726

4
As the Appellants correctly note, claim 1 does not recite “the outer
core comprising a negative gradient.” See id.; see also Appeal Br., Claims
App. As shown in Figure 3 of the Specification, for example, the inner core
may have a negative gradient, the outer core may have a positive gradient,
and the outer surface may have a hardness that is lower than the geometric
center’s hardness, thereby defining an overall negative gradient. Therefore,
claims 2 and 3 may further recite a core layer with a positive gradient and
doing so does not conflict with the negative gradient recited in claim 1.
For these reasons, we reverse the rejection of claims 2 and 3 as failing
to comply with the enablement requirement.
Claims 1–10 Rejected as Being Indefinite
In rejecting claims 1–10, the Examiner concludes that “since the outer
core hardness is lower than the inner core hardness[,] the outer core surface
hardness should not be larger, see hardness ranges.” Answer 5. The
Examiner further explains that “[s]ince Appellant[s] claim[] the outer
surface of the outer core must be lower than the geometric center[,] the
range for the outer core must be lower than the range for the inner core
layer.” Id. at 7 (emphasis added).
In response, the Appellants contend that “the hardness ranges recited
in claim 1 are not directed specifically at the locations that define the
hardness gradient . . . [and that] the skillied [sic] artisan would recognize
that the final construction would require that the hardness at the outer
surface of the outer core layer would have to be kept be [sic] lower than the
hardness at the geometric center of the inner core.” Reply Br. 6 (referring to
Spec., Fig. 3).
Appeal 2012-009702
Application 12/558,726

5
As the Appellants correctly note, one of ordinary skill in the art would
understand that the claimed golf ball can have a second outer surface (i.e.,
outer surface of the outer core) hardness that is lower than the hardness of
the geometric center, even if the hardness range of the inner core is higher
than the hardness range of the outer core, so long as the two ranges overlap,
as they do in claim 1. See Appeal Br., Claims App. In particular, simply
because the upper end of the hardness range of the outer core layer (95
Shore C) is higher than the upper end of the hardness range of the inner core
layer (90 Shore C), it is still possible for “the hardness of the second outer
surface [to be] lower than the hardness of the geometric center,” as recited in
claim 1. Id.
For the foregoing reasons, we do not sustain the rejection of claims 1–
10 as being indefinite.
SUMMARY
The Examiner’s decision to reject claims 2 and 3 under 35 U.S.C.
§ 112, first paragraph, is reversed.
The Examiner’s decision to reject claims 1–10 under 35 U.S.C. § 112,
second paragraph, is reversed.

REVERSED

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