Ex Parte Hebert et al

Board of Patent Appeals and Interferences

Aug 25, 2011

10452722 (B.P.A.I. Aug. 25, 2011)

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.
10/452,722 06/03/2003 Edmund A. Hebert 5222-042-US01CON1 1993
79175 7590 08/26/2011
MURPHY & KING PROFESSIONAL CORPORATION
1055 Thomas Jefferson Street, NW
Suite 400
WASHINGTON, DC 20007
EXAMINER
HUNTER, ALVIN A
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
08/26/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDMUND HEBERT, MITCHELL E. LUTZ, and
THOMAS MYDLACK
____________

Appeal 2009-013130
Application 10/452,722
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013130
Application 10/452,722

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STATEMENT OF THE CASE
Edmund Hebert et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 29, 31-
37, 39-45, 47-50, 52, and 53 as unpatentable over Hebert (US 5,885,172,
issued Mar. 23, 1999), Kitaoh (US 4,871,589, issued Oct. 3, 1989), Boehm
(US 6,103,166, issued Aug. 15, 2000), and Ichikawa (US 6,334,819 B2,
issued Jan. 1, 2002) and claim 46 as unpatentable over Hebert, Kitaoh,
Boehm, Ichikawa, and Wu (US 5,484,870, issued Jan. 16, 1996). Claims 1-
28, 30, 38, and 51 have been canceled. Appellants’ representative presented
oral argument on June 12, 2011. We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a golf ball including a core 22, an
inner layer 24, and an outer cover layer 26 and a method of treating the inner
layer 24 to facilitate bonding between the inner layer 24 and the outer cover
layer 26. Spec. 1, ll. 5-7 and fig. 2.
Claim 35 is representative of the claimed invention and reads as
follows:
35. A golf ball comprising:
a core;
an inner cover layer comprising a thermoplastic material
having a treated outer surface, wherein the treated outer surface is the
product of a surface treatment consisting essentially of mechanical
abrasion and corona discharge, and wherein the treated outer surface
is substantially free of adhesive; and
an outer cover layer comprising a castable reactive liquid
thermoset material bonded to the inner cover layer, wherein the outer
cover layer has a thickness of about 0.007 inches to about 0.045
inches.
Appeal 2009-013130
Application 10/452,722

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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Each of claims 29 and 35 requires a golf ball including an inner layer
having a treated outer surface that is the result of a “surface treatment
consisting essentially of mechanical abrasion and corona discharge.”
Similarly, claim 42, is directed to a method “consisting essentially of” steps
of forming a core, forming an inner cover layer, “mechanically abrading the
inner cover layer,” “subjecting the inner cover layer to corona discharge,”
and casting an outer cover comprising a reactive liquid thermoset material
about the inner cover layer. App. Br., Claims Appendix.
The Examiner found that although Hebert discloses some of the
features of claims 29, 35, and 42, Hebert fails to disclose a golf ball
including an “inner cover having a surface mechanically abraded” or
“corona treating the outer surface of the inner cover layer.” Ans. 3-4. The
Examiner further found that: (1) Kitaoh discloses corona treating the outer
surface of an ionomer inner layer of a golf ball to promote adhesion to a
urethane coating; (2) Ichikawa discloses an inner cover layer having a
roughened or abraded surface for promoting adhesion; and (3) Boehm
discloses “that it is well-known within the art to abrade the surface of a
layer” to promote adhesion. Id. The Examiner concluded that it would have
been obvious for a person of ordinary skill in the art to “corona discharge
treat a layer made of ionomer prior to applying a layer thereover comprising
urethane [as taught by Kitaoh] … in order to improve adhesion between the
two materials” and “to roughen the outer surface of the inner cover” as
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Application 10/452,722

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taught by Ichikawa and Boehm in order to further promote adhesion. Ans.
4.
Although Kitaoh discloses that corona discharge promotes adhesion
between an ionomer layer and a urethane paint covering, and each of
Ichikawa and Boehm discloses that mechanical roughening (mechanical
abrasion) also promotes adhesion, nonetheless, we find the Examiner’s
rejection insufficient to explain what in the prior art would have prompted a
person having ordinary skill in the art to apply a surface treatment
“consisting essentially of”1 mechanical abrasion and corona discharge to
Hebert’s golf ball so as to adhere the outer cover layer 8, free of adhesive, to
the inner cover layer 6. As noted by Appellants, Kitaoh specifically
discloses that because neither corona discharge, plasma treatment, nor shot
blasting (mechanical roughening) provide adequate adhesion, an additional
chemical treatment with a cross-linking agent must be provided to adhere a
golf ball to a urethane paint covering. Reply Br. 10. See also, Kitaoh, col.
1, ll. 25-28 and col. 2, ll. 18-23 and 33-36. Similarly, in Ichikawa,
mechanical roughening is used merely as a pre-treatment step prior to
applying adhesive layer 5 to bond inner cover layer 3 to outer cover layer 4.
See Ichikawa, col. 6, ll. 57-61 and fig. 1. Hence, we find that Kitaoh and
Ichikawa disclose that corona discharge and mechanical roughening,
respectively, may be used to adequately promote adhesion only when used
in conjunction with a separate chemical treatment or a separate adhesive
layer. Lastly, Boehm merely mentions in passing that surface roughening of

1 The transitional phrase “consisting essentially of” limits the scope of a
claim to the specified materials or steps “and those that do not materially
affect the basic and novel characteristic(s)” of the claimed invention. In re
Herz, 537 F.2d 549, 551-52 (CCPA 1976). See MPEP § 2111.03.
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the interior layer is known to promote adhesion. See Boehm, col 4, l. 53
through col. 5, l. 1.
As such, neither Kitaoh, Ishikawa nor Boehm discloses surface
treating a golf ball using a surface treatment “consisting essentially of”
mechanical abrasion and corona discharge. While we appreciate that both
corona discharge and mechanical abrasion are known surface treatments that
promote adhesion of the surface, the Examiner has not provided any findings
that would have led a person of ordinary skill in the art to provide a surface
treatment “consisting essentially of” mechanical abrasion and corona
discharge to Hebert’s golf ball so as to adhere the outer cover layer 8,
substantially free of adhesive, to the inner cover layer 6. Absent hindsight,
we fail to see why one having ordinary skill in the art would have been led
by the teachings of Kitaoh, Ichikawa, and Boehm to modify the golf ball and
the process of making the golf ball of Hebert in the manner claimed. As
such, we cannot sustain the rejection of independent claims 29, 35, and 42
and their respective dependent claims 31-34, 36, 37, 39-41, 43-45, 47-50,
52, and 53 under 35 U.S.C. § 103(a) as unpatentable over Hebert, Kitaoh,
Ichikawa, and Boehm. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988)
(If an independent claim is nonobvious under 35 U.S.C. § 103, then any
claim dependent therefrom is nonobvious).
With respect to the rejection of claim 46, the addition of Wu does not
remedy the deficiencies of Hebert, Kitaoh, Ichikawa, and Boehm as
described above. Therefore, the rejection of claim 46 under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Hebert, Kitaoh,
Ichikawa, Boehm, and Wu likewise cannot be sustained.

Appeal 2009-013130
Application 10/452,722

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SUMMARY
The decision of the Examiner to reject claims 29, 31-37, 39-50, 52,
and 53 is reversed.

REVERSED

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