Ex Parte Ichikawa et al

Patent Trial and Appeal Board

May 19, 2017

12860350 (P.T.A.B. May. 19, 2017)

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.
12/860,350 08/20/2010 Yasushi Ichikawa 007624.01408/10-0888 9840
11370 7590
Banner & Witcoff, Ltd.
10 South Wacker Drive
Suite 3000
Chicago, IL 60606
05/23/2017 EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
05/23/2017 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):
PTO-11370@bannerwitcoff.com
nike_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YASUSHI ICHIKAWA, DEREK A. FITCHETT, and
PETER NEWBURY
Appeal 2015-003993
Application 12/860,350
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1, 4—9, 15,
16, 19—24, and 30—32. Claims 2, 3, 17, and 18 are withdrawn from
consideration. Final Act. 1. Claims 10-14 and 25—29 are canceled.
Advisory Action mailed Aug. 25, 2014 (entering amendment cancelling
claims). We have jurisdiction under 35 U.S.C. § 6(b).
1 This appeal is related to Appeal No. 2015-006910.
2 The real party in interest is identified as Nike, Inc. App. Br. 1.
Appeal 2015-003993
Application 12/860,350
We affirm.
Claimed Subject Matter
Claim 1, reproduced below, illustrates the claimed subject matter.
1. A multi-piece golf ball, comprising:
a solid inner core including a thermoplastic resin material,
the solid inner core having a surface hardness within a range of
42 to 54 Shore D and a substantially constant hardness through
its cross section, wherein the solid inner core has a diameter
within a range of 18 to 36 mm, and wherein an adhesive film is
provided on an outer surface of the solid inner core;
an outer core layer surrounding the solid inner core and the
adhesive film, the outer core layer including a polybutadiene
rubber containing material, the outer core layer having a surface
hardness within a range of 50 to 64 Shore D, wherein the outer
core layer has a thickness within a range of 4 to 10 mm;
a mantle layer surrounding the outer core layer, the mantle
layer including a thermoplastic polyurethane containing
material, the mantle layer having a surface hardness within a
range of 60 to 72 Shore D, wherein the mantle layer has a
thickness within a range of 0.4 to 1.6 mm; and
a cover layer surrounding the mantle layer, the cover layer
including a thermoplastic polyurethane containing material, the
cover layer having a surface hardness within a range of 44 to 60
Shore D, the cover layer having a nominal thickness within a
range of 0.6 to 1.6 mm,
wherein the Shore D surface hardness of the mantle layer
is higher than the Shore D surface hardness of each of the solid
inner core, the outer core layer, and the cover layer.
Rejection
Claims 1, 4—9, 15, 16, 19—24, and 30-32 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Umezawa et al. (US 8,123,628 B2,
issued Feb. 8, 2012) (hereinafter “Umezawa”). Final Act. 2—8.
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ANALYSIS
Claims 1, 4, 5, 8, 15, 16, 19, 20, 23, and 30—32
Appellants argue claim 1 as representative of the group of claims 1, 4,
5, 8, 15, 16, 19, 20, 23, and 30—32. App. Br. 11—25. Appellants argue
“Example 2 from Table 3 of Umezawa is the only specific ball construction
cited” in the rejection of claim 1. Id. at 12. Example 2, Appellants contend,
“must be changed in at least four major ways in order to arrive at
Appellant’s claimed invention.” Id. at 17. These four changes include:
(a) the inner cover layer material must be changed from Himilan
(an ionomer) to the claimed thermoplastic polyurethane material,
(b) this inner cover layer must be made at least 4 Shore D
hardness points harder, (c) this inner cover layer must be made
at least 0.5 mm thinner, and (d) one or more other layers on the
ball would have to be made thicker to make up for the
substantially reduced thickness of the inner cover layer (i.e., in
order to produce a ball having the minimum diameter of 42.67
mm required by the Rules of Golf).
Id. Appellants further contend:
[Ojne skilled in the art would have no rational reason to make all
of these changes to the Umezawa ball construction, because one
skilled in the art: (a) would note the significant structural
differences between Umezawa’s ionomer and the claimed
thermoplastic polyurethane (“structural” differences in these
materials), (b) would note different functions or responses by
these materials under stress/strain conditions (like those
experienced when hit by a golf club), and (c) would have no basis
to predict whether these several major ball construction changes
would result in an acceptable and successful golf ball product.
Id. at 17—18.
Appellants’ arguments give insufficient weight to the express
teachings of Umezawa. Regarding the claimed “mantle layer including a
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Application 12/860,350
thermoplastic polyurethane containing material,” the Examiner relies on
Umezawa’s teachings at column 12, lines 53—57. Final Act. 3. Here,
Umezawa states that the cover, which may have one or more layers (col. 12,
1. 50), “may be formed using a known cover material” (col. 12,11. 53—54),
and lists specific examples including “thermoplastic resins, ionomeric resins,
. . . and thermoplastic and thermoset polyurethanes” (col. 12,11. 54—57).
Appellants argue that “Umezawa never ‘specifically states’ that both
materials of a two part cover may be a thermoplastic polyurethane” (App.
Br. 22), but there is no indication in Umezawa that references to the “cover
material” would apply only to the outer layer of a two part cover. As such,
one of ordinary skill in the art would understand Umezawa’s specific
examples of cover material to include known materials for an inner layer,
which corresponds to the “mantle layer” recited in claim 1. In addition, the
list of a few examples, including ionomeric resins and thermoplastic resins,
suggests these are substitutes in the sense that each may be used by one of
skill in the art to form a golf ball cover of one or more layers. Thus,
Appellants’ argument that “Umezawa never ‘specifically states’ . . . that a
‘thermoplastic mantle’ may be used ‘as a substitute for ionomer resins’”
(App. Br. 22) may be technically true, but ignores what Umezawa’s
description would have conveyed to one of ordinary skill in the art. We find
that a preponderance of the evidence supports the Examiner’s finding that
Umezawa teaches “a mantle layer including a thermoplastic polyurethane
material,” as recited in claim 1.
Appellants do not dispute that Umezawa teaches ranges for surface
hardness and thickness of the mantle layer that overlap those recited in claim
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1. As the Examiner finds (Final Act. 3), Umezawa teaches thicknesses
within the claimed range:
When the cover is composed of two or more layers, the inner
cover layer has a thickness of preferably at least 0.5 mm, more
preferably at least 0.7 mm, even more preferably at least 0.9 mm,
and most preferably at least 1.1 mm, but preferably not more than
3 mm, more preferably not more than 2.7 mm, even more
preferably not more than 2.5 mm, and most preferably not more
than 2.3 mm.
Umezawa col. 13,11. 12—18. Umezawa thus describes multiple specific
ranges of the inner cover, including 0.5 to 2.3 mm, which substantially
overlaps the claimed range of 0.4 to 1.6 mm. Similarly, Umezawa teaches
multiple specific ranges for Shore D hardness of the inner cover layer:
The hardness of the inner cover layer, expressed as the Shore D
hardness, is preferably at least 51, more preferably at least 53,
and even more preferably at least 55, but preferably not more
than 70, more preferably not more than 65, even more preferably
not more than 62, and most preferably not more than 59.
Id. at col. 13,11. 18—23. These ranges include 55 to 70 shore D, which again
substantially overlaps the claimed range of 60 to 72 Shore D.
Appellants characterize the passages relied on by the Examiner as
“general,” “generic,” and “isolated disclosures” in Umezawa, and argue
these teachings do not make obvious the more specific “sub-genus” recited
in claim 1. App. Br. 15. Appellants contend the Examiner must determine
the differences between the closest disclosed prior art species or subgenus
and the claimed species or subgenus, and then determine whether one of
ordinary skill in the art would have been motivated to select the claimed
species or subgenus in view of the teachings of the prior art, citing Section
2144.08 of the Manual of Patent Examining Procedure (M.P.E.P.). App.
Br. 16-17.
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As noted by the Examiner (Ans. 9), however, the rejection identifies a
specific embodiment of Umezawa falling within the ranges specified for the
layers of the ball recited in claim 1, with the exception of the mantle. See
Final Act. 2 (citing Table 3, Example 2). The Examiner finds the “changes
in material, thickness and hardness” of the mantle “are obvious because they
are specifically envisioned by Umezawa to be within the scope of the prior
art invention.” Ans. 10. Appellants contend the Examiner’s reasoning is
insufficient, and “one skilled in this art would have had no rational reason to
sift through the specific and general disclosures of Umezawa and select the
specifically claimed combination of materials, hardnesses, and thicknesses
recited in Appellant’s claims.” App. Br. 24.
“In cases involving overlapping ranges, [the Federal Circuit and its]
predecessor court have consistently held that even a slight overlap in range
establishes aprima facie case of obviousness.” In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003).3 “In general, an applicant may overcome a
3 The Peterson court cites:
E.g., In re Woodruff 919 F.2d [1575, 1578 (Fed. Cir. 1990)]
(concluding that a claimed invention was rendered obvious by a
prior art reference whose disclosed range (“about 1—5%” carbon
monoxide) abutted the claimed range (“more than 5% to about
25%” carbon monoxide)); In re Malagari, 499 F.2d [1297, 1303
(CCPA 1974)] (concluding that a claimed invention was
rendered prima facie obvious by a prior art reference whose
disclosed range (0.020-0.035% carbon) overlapped the claimed
range (0.030-0.070% carbon)); see also In re Geisler, 116 F.3d
[1465, 1469 (Fed. Cir. 1997)] (acknowledging that a claimed
invention was rendered prima facie obvious by a prior art
reference whose disclosed range (50—100 Angstroms)
overlapped the claimed range (100—600 Angstroms)).
Id.
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prima facie case of obviousness by establishing ‘that the [claimed] range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.’” Peterson, 315 F.3d at 1330 (quoting
In re Geisler, 116 F.3d at 1469—70 (alteration in original)). The Federal
Circuit has left open the possibility that prior art with disclosed ranges of
alloy composition percentages that are “so broad as to encompass a very
large number of possible distinct compositions . . . might present a situation
analogous to our cases involving the failure of a very broad disclosed genus
of substances to render prima facie obvious specific substances within its
scope.” Peterson, 315 F.3d at 1330, n.l (citing In re Baird, 16 F.3d 380
(Fed. Cir. 1994); In re Jones, 958 F.2d 347 (Fed. Cir. 1992)). In Baird, for
example, the Federal Circuit estimated that the generic diphenol formula in
the prior art “encompasses more than 100 million different diphenols,” and,
therefore, did not fairly suggest the only diphenol claimed. 16 F.3d at 382.
The ranges taught in Umezawa are not so broad as to present a
situation analogous to disclosure of a generic formula encompassing a very
large number of distinct compositions. Changes in thickness and surface
hardness of golf ball layers do not result in a different composition
comparable to the change effected by manipulating variables in a generic
chemical formula, or even alterations in alloy composition. In addition, the
broadest range for hardness of Umezawa’s inner cover is 51 to 70 Shore D,
as compared to 60 to 72 Shore D disclosed and claimed by Appellants.
Compare Umezawa col. 13,11. 18—23 with Spec. para. 49. Thus, more than
half of Umezawa’s range falls within Appellants’ range, unlike situations in
which one of more than 100 million possible compounds encompassed by a
generic formula is disclosed or claimed. Similarly for the claimed mantle
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thickness, the broadest range of Umezawa’s inner cover is 0.5 to 3 mm, and
just under half of this range falls within Appellants’ disclosed and claimed
range of 0.4 to 1.6 mm. Compare Umezawa col. 13,11. 12—18 with Spec,
para. 49. Umezawa’s teaching of these ranges supports the Examiner’s
finding that one of ordinary skill in the art would have been motivated to
alter the hardness and thickness of the inner cover layer in Umezawa’s
Example 2, Table 3, to values within the claimed ranges. See In re Peterson,
315 F.3d at 1330 (“The normal desire of scientists or artisans to improve
upon what is already generally known provides the motivation to determine
where in a disclosed set of percentage ranges is the optimum combination of
percentages.”); In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir.
2012) (citing Peterson, 315 F.3d at 1330).
Appellants argue the Examiner incorrectly evaluates Appellants’
evidence of unpredictability. App. Br. 18—20, 23—25; Reply Br. 3—6.
Appellants argue the different structures of ionomers and thermoplastic
resins result in “very different morphologies of the polymer matrix,
especially under dynamic conditions.” App. Br. 18. Appellants submit
evidence describing the stress-strain behavior of polyurethanes and
ionomers, asserting the evidence shows ionomers exhibit a linear
stress/strain response at low strain values, in contrast to thermoplastic
polyurethanes. Id. at 18—19. Appellants conclude that “one skilled in the art
would not expect an ionomer material to be simply ‘interchangeable’ with a
[thermoplastic polyurethane] as an inner cover layer material of a golf ball”
because “the practical effect of such a significant change is unpredictable.”
Id. at 19.
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Appellants’ evidence and arguments do not support the conclusion
that “one of ordinary skill in the art would have no rational reason for
changing the ionomer (Himilan) material described in Umezawa with a
claimed thermoplastic polyurethane material” (App. Br. 20) or would have
been unable to predict “that such a major change in materials would result in
an acceptable and successful final golf ball product” {id.). Even accepting
that one of ordinary skill in the art would not be able to predict the precise
effect of changing an ionomer inner cover material to thermoplastic
polyurethane, a preponderance of the evidence supports the Examiner’s
implicit finding that one of ordinary skill in the art would have a reasonable
expectation of success in using thermoplastic polyurethanes because
Umezawa teaches the use of thermoplastic polyurethanes for that purpose, as
discussed supra. See Umezawa col. 12,11.49—57.
As noted above, Appellants also argue that, “in addition to the
material changes, several other significant changes to the Umezawa ball
construction” provided in Example 2 of Table 3 are needed to arrive at
Appellants’ claimed invention, including:
(a) this inner cover layer would have to be made significantly
harder (from 56 Shore D to at least 60 Shore D); (b) this inner
cover layer would have to be made significantly thinner (from
2.1 mm to 1.6 mm or less); and (c) another layer on the ball
would have to be made thicker (in order for the ball to comply
with the Rules of Golf).
App. Br. 24. Appellants state that one skilled in the art would expect these
changes to affect performance properties of the ball, and that “the evidence
demonstrates . . . that the effects of these changes on ball performance and
properties, individually and in combination, are difficult to predict.” Id. at
24—25.
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As an initial matter, we note that Appellants’ arguments as to the
predictability of the effect of changes in hardness and thickness are not
supported by evidence. Argument of counsel cannot take the place of
evidence lacking in the record. Estee Lauder Inc. v. L ’Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA
1977); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As such, these
arguments are entitled to little probative value. In addition, based on
Umezawa’s teachings as to appropriate ranges of hardness and thickness of
the inner cover layer, we find one of ordinary skill in the art would have had
a reasonable expectation that all values within the range will produce a
useable golf ball. To the extent one value or range of values may produce
more desirable results, Appellants’ arguments acknowledge that the hardness
and thickness would have been recognized as result-effective variables, and
we find the optimization of these variables would have been within the level
of ordinary skill in the art. See In re Boesch, 617 F.2d 272, 276 (CCPA
1980) (“[Discovery of an optimum value of a result effective variable ... is
ordinarily within the skill of the art.”); Applied Materials, 692 F.3d at 1295
(citing Boesch, 617 F.2d at 276).4
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) as unpatentable over Umezawa. Thus, we sustain the
rejection of representative claim 1, and, for the same reasons, the rejection of
4 We note Appellants do not argue or provide evidence that results achieved
with the claimed ranges of hardness and thickness of the mantle layer would
have been unexpectedly superior to results achieved with the values taught
in Umezawa’s Example 2, Table 3.
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Application 12/860,350
claims 4, 5, 8, 15, 16, 19, 20, 23, and 30-32, which are not argued
separately.
Claims 6 and 21
Claim 6 depends from claim 1, and further recites that “the surface
hardness of the mantle layer is at least 8 Shore D points higher than the
surface hardness of the outer core layer.” Appellants argue claims 6 and 21
together. App. Br. 25—26. We select claim 6 as representative.
In addition to the arguments presented in support of claim 1,
Appellants argue the limitation of claim 6 is not taught by Umezawa:
Using the Office’s asserted value of the Umezawa outer core
layer surface hardness of 54.3 Shore D, one can see from
Example 2 of Umezawa that the surface hardness difference
between the intermediate layer and the outer core layer of that
ball construction is 1. 7 Shore D points, well below the lower
limit recited in claims 6 and 21 (at least 8 Shore D points).
App. Br. 26. Appellants acknowledge Umezawa teaches hardness ranges for
an inner cover layer, but contend the Examiner “has provided absolutely no
‘articulated reasoning’ with a ‘rational underpinning’ to demonstrate why
one of ordinary skill in the art would have selected a ball construction
having the claimed combination of outer core and mantle layer hardness
differential features.” Id. at 26. “Moreover, there is no basis for predicting
that these major changes to the Umezawa ball construction would result in
an acceptable and successful golf ball product.” Id.
For the same reasons discussed above for claim 1, we agree with the
Examiner (see Final Act. 5) that changing Umezawa’s Table 3, Example 2
mantle hardness to a value of 70 Shore D would have been within the level
of ordinary skill in the art. Umezawa specifically recites 70 Shore D as a
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potential value for hardness of the inner cover (col. 13,1. 21), and
optimization of the inner cover hardness within the disclosed range would
have been within the level of ordinary skill in the art. See In re Boesch, 617
F.2d 272, 276 (CCPA 1980) (“[DJiscovery of an optimum value of a result
effective variable ... is ordinarily within the skill of the art.”); Applied
Materials, 692 F.3d at 1295 (citing Boesch, 617 F.2d at 276). Appellants do
not persuasively dispute that using an inner cover hardness of 70 Shore D in
Umezawa’s Example 2 of Table 3 would result in a “surface hardness of the
mantle layer [that] is at least 8 Shore D points higher than the surface
hardness of the outer core layer,” as recited in claim 6.
Accordingly, for the reasons discussed above and by the Examiner,
we are not informed of error in the Examiner’s rejection of claim 6 under
35 U.S.C. § 103(a) as unpatentable over Umezawa. Thus, we sustain the
rejection of representative claim 6, and, for the same reasons, the rejection of
claim 21, which is not argued separately.
Claims 7 and 22
Dependent claim 7 recites “[a] multi-piece golf ball according to
claim 1, wherein the surface hardness of the mantle layer is at least 16 Shore
D points higher than the surface hardness of the solid inner core.”
Appellants argue the rejection of claims 7 and 22 is in error for similar
reasons argued in support of claim 6. App. Br. 26—28. For the same reasons
as claim 6, we sustain the rejection of claims 7 and 22.
Claims 9 and 24
Dependent claim 9 recites:
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9. A multi-piece golf ball according to claim 1, wherein the
surface hardness of the mantle layer is at least 8 Shore D points
higher than the surface hardness of the outer core layer, at least
16 Shore D points higher than the surface hardness of the solid
inner core, and at least 10 Shore D points higher than the surface
hardness of the cover layer.
Appellants argue the rejection of claims 9 and 24 is in error for similar
reasons argued in support of claims 6 and 7. App. Br. 26—28. For the same
reasons as claims 6 and 7, we sustain the rejection of claims 9 and 24.
DECISION
We affirm the Examiner’s decision to reject claims 1, 4—9, 15, 16, 19—
24, and 30-32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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