Ex Parte Hayashi et al

Board of Patent Appeals and Interferences

Mar 15, 2006

10318260 (B.P.A.I. Mar. 15, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___

Ex parte JUNJI HAYASHI, HISASHI YAMAGISHI, YASUMASA SHIMIZU and
YASUSHI ICHIKAWA
____________

Appeal No. 2006-0480
Application No. 10/318,260
____________

ON BRIEF
____________

Before OWENS, LEVY and NAPPI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1, 3, 4 and 6-12.
Claim 5, which is the only other pending claim, stands objected to
as dependent upon a rejected base claim but allowable if rewritten
in independent form.
Appeal No. 2006-0480
Application No. 10/318,260

2
THE INVENTION
The appellants claim a golf ball having a cover made from a
blend that includes a silicone powder having an average particle
size of 0.7 to 700 μm. Claim 1 is illustrative:
1. A multi-piece golf ball comprising:
a core having a diameter of 30 to 40 mm, said core being made
from a rubber composition mainly containing polybutadiene;

at least one intermediate layer including the outermost layer
having a thickness of 0.5 to 2.0 mm, said outermost layer being
made from a resin material containing an ionomer resin in an amount
of 30% by weight or more; and

a cover having a thickness of 0.5 to 2.0 mm, said cover being
made from a material obtained by dispersedly blending at least one
kind of silicone powder selected from a silicone rubber powder, a
silicone resin powder, and a composite powder thereof, in a main
resin component containing an ionomer resin in an amount of 50% by
weight or more; wherein

the hardness of said outermost layer of said at least one
intermediate layer is harder than the hardness of a center portion
of said core, the hardness of said cover is harder than the
hardness of said outermost layer of said at least one intermediate
layer, and a difference in hardness between said cover and the
center portion of said core satisfies a relation of 10 ≤ Durometer
D hardness of cover - Durometer D hardness of center portion of
core) ≤ 40, and

an average particle size of said silicone powder is a range of
0.5 to 700 µm.

Appeal No. 2006-0480
Application No. 10/318,260

3

THE REFERENCES
Endo et al. (Endo) 6,520,872 Feb. 18, 2003
(filed Oct. 25, 2001)
Takemura et al. (Takemura) 6,688,992 Feb. 10, 2004
(filed Aug. 24, 2001)
THE REJECTION
Claims 1, 3, 4 and 6-12 stand rejected under 35 U.S.C. § 103
as being unpatentable over Endo in view of Takemura.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 1, which is the sole independent claim. Claim 1
requires that a blend from which a golf ball cover is made includes
a silicone rubber powder, a silicone resin powder or a mixture
thereof, wherein the average particle size of the silicone powder
is 0.5 to 700 μm. For that claim requirement the examiner relies
upon Takemura (answer, page 5).
Takemura discloses a golf ball having a cover made from a
blend comprising organic short fibers having a length of 5-1000 μm
(col. 1, lines 55-59; col. 5, lines 26-27). The organic short
fibers “may include nylon fiber, acrylic fiber, polyester fiber,
aramid fiber and others” (col. 5, lines 1-3). “[I]t is possible to
premix a prescribed amount of the organic short fiber in polymer of
Appeal No. 2006-0480
Application No. 10/318,260

4
rubber or the like to obtain organic short fiber-reinforced
polymer, which can be kneaded into the cover base material” (col.
5, lines 53-55). The disclosed polymers include silicone rubber
(col. 5, lines 58-63).
The examiner argues that “Takemura et al. notes that the
silicone rubber is premixed with an organic short fiber, therefore,
it is submitted that the silicone rubber has a particle size of 5
to 1000μm (See Column 5, lines 25 through 67 and Column 6, lines 1
through 4)” (answer, page 5). The relied-upon portion of Takemura
discloses that the organic short fibers have a length of 5-1000 μm,
but does not disclose that the silicone rubber is in powder form.
The examiner argues (answer, page 7):
Takemura et al. discloses the organic fibers being
premixed with a silicone rubber. The organic fibers are
of the same size as that of the particles claimed by the
applicant, thus making the fibers inherently powder. In
summary, Takemura et al. teaches a premixed silicone
powder having a particle size of 5 to 1000μm. The word
“powder” is a term in which is further defined by the
size of the particle. Takemura et al. does not have to
explicitly state “powder” in order to meet the claim
limitation. Furthermore, it should be noted that the
claim does not require the silicone powder to be purely
silicone rubber powder.

The examiner apparently assumes that Takemura’s disclosure that 5-
1000μm organic short fibers are blended with silicon rubber
indicates that the silicon rubber is in the form of particles
Appeal No. 2006-0480
Application No. 10/318,260

5
having the same size as the organic fibers. That assumption is not
supported by Takemura’s disclosure. Takemura merely discloses
premixing organic short fibers with a polymer, which can be
silicone rubber, to obtain organic fiber-reinforced polymer which
can be kneaded into the cover base material (col. 5, lines 52-55).
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellants’ claimed invention.
DECISION
The rejection of claims 1, 3, 4 and 6-12 under 35 U.S.C. § 103
over Endo in view of Takemura is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
Appeal No. 2006-0480
Application No. 10/318,260

6

Sughrue, Mion, Zinn, Macpeak
& Seas, PLLC
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037-3213
Comment [jvn1]: Type address