Ex Parte Ishii et al

Patent Trial and Appeal Board

Jul 24, 2018

13935874 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/935,874
62124 7590
QUINN IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
07/05/2013
07/26/2018
FIRST NAMED INVENTOR
Hideyuki Ishii
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. CONFIRMATION NO.
FENG1097PUS 2162
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
adomagala@quinniplaw.com
USDocketing@quinniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEYUKI ISHII, AARON BENDER,
NICHOLAS A. LEECH, NICHOLAS YONTZ, JUN ICHINOSE,
CHEN-HSIN CHOU, CHEN-TAI LIU, and SHIH-KAI LIN
Appeal2017-011692 1
Application 13/935,8742
Technology Center 3700
Before BART A. GERSTENBLITH, PHILIP J. HOFFMANN, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 3-6, 8-10, 12-22, 24, 26, 29-31, 33, and 34. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed May 30,
2017), the Reply Brief ("Reply Br.," filed Sept. 21, 2017), the Examiner's
Answer ("Ans.," mailed July 27, 2017), and the Final Office Action ("Final
Act.," mailed Feb. 17, 2017).
2 According to Appellants, the real party in interest is Feng Tay Enterprises
Co. Appeal Br. 2.
Appeal2017-011692
Application 13/935,874
BACKGROUND
According to Appellants, "[t]he present invention relates generally to
a core for a multi-layer golfball." Spec ,r 1.
CLAIMS
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A golf ball core for use in a multi-piece golf ball, the core
compnsmg:
a solid sphere substantially formed from an ionomeric
material, the solid sphere having a diameter (D) of between 24
mm and 32 mm;
between 100 and 300 spaced polygonal protrusions each
being substantially formed from the ionomeric material and
respectively extending from the solid sphere in a radially
outward direction by a maximum distance of between 0.15 mm
and 1.0 mm, wherein the solid sphere and the polygonal
protrusions cooperate to define a geometric center of the core,
the spaced polygonal protrusions including: a first set of
polygonal protrusions with a first number of straight edges, a
second set of polygonal protrusions with a second number of
straight edges, and a third set of polygonal protrusions with a
third number of straight edges, the first, second and third
numbers of straight edges being distinct from one another; and
a plurality of grooves separating the respective polygonal
protrusions, wherein the plurality of grooves includes: a first set
of annular grooves disposed about a first axis, a second set of
annular grooves disposed about a second axis, and a third set of
annular grooves disposed about a third axis, wherein the first
axis, the second axis, and the third axis are mutually orthogonal;
wherein the polygonal protrusions having the first number
of straight edges are arranged in annular rows each coterminous
with at least one of the sets of annular grooves;
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Application 13/935,874
wherein the polygonal protrusions having the second
number of straight edges are arranged in octants each delineated
by the first, second and third sets of annular grooves;
wherein each of the grooves is defined by an outer surface
of the solid sphere that faces away from the geometric center of
the core; and
wherein the outer surface includes respective surfaces
defining the polygonal protrusions and respective surfaces
defining the grooves.
Appeal Br., App. Al.
REJECTIONS
1. The Examiner rejects claims 1, 3---6, 12-19, 24, 26, 29-31, 33, and 34
under 35 U.S.C. § I03(a) as unpatentable over Wai3 in view of
Masutani, 4 Maruko, 5 and Hazeltine. 6
2. The Examiner rejects claims 8-10 and 20-22 under 35 U.S.C. § I03(a) as
unpatentable over Wai in view of Masutani, Maruko, Hazeltine, 7 and
Boehm. 8
DISCUSSION
As discussed below, we are persuaded of reversible error in the
rejection of claims 1 and 16. Specifically, we are persuaded of error based
3 Wai et al., US 5,984,807, iss. Nov. 16, 1999.
4 Masutani, US 6,416,423 Bl, iss. July 9, 2002.
5 Maruko et al., US 2002/0032079 Al, pub. Mar. 14, 2002.
6 Hazeltine, US 1,855,448, iss. Apr. 26, 1932.
7 We consider the Examiner's omission of Hazeltine from this rejection in
the Final Office Action to be harmless error at least because Appellants
acknowledge that the rejection relies upon Hazeltine. See Appeal Br. 7
(identifying the second rejection as including Hazeltine).
8 Boehm et al., US 6,103,166, iss. Aug. 15, 2000.
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Application 13/935,874
on Appellants' arguments with respect to the Examiner's reliance on
Hazeltine.
In rejecting claim 1, for example, the Examiner acknowledges that
Wai, Masutani, and Maruko do not disclose a golf ball core with the claim
requirements that the first set of polygonal protrusions arranged in annular
rows coterminous with the sets of annular grooves and the second set of
polygonal protrusions arranged in octants, as claimed. Final Act. 5---6. The
Examiner finds that "Hazeltine teaches that a mesh pattern may be applied
on a ball core[,] and that the cover may be molded over the mesh pattern, so
as to produce a plurality of protrusions, separated by a pattern of grooves, on
the inside of the cover, page 1, ln. 88-100." Id. at 6. The Examiner finds
that Hazeltine depicts protrusions and grooves with the characteristics
claimed, i.e., with protrusions arranged in annular rows coincident with
annular grooves for a first set of polygonal protrusions, and annular grooves
defined as octants for a second set of polygonal protrusions. Id. The
Examiner concludes that it would have been obvious to modify the
combination of Wai, Masutani, and Maruko with a pattern of projections and
grooves as taught by Hazeltine, "to yield the predictable result of a core
configured for interlocking engagement with an adjacent layer and being
symmetrical about the core center." Id.
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner can satisfy this
burden by showing "some articulated reasoning with some rational
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Application 13/935,874
underpinning to support the legal conclusion of obviousness." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007). Here, we find that the
Examiner's reasoning for the proposed combination lacks the requisite
rational underpinnings to support the conclusion that it would have been
obvious to one of ordinary skill in the art to combine Hazeltine with Wai,
Masutani, and Maruko to arrive at the claimed invention.
Hazeltine disclose a "conventional" golf ball core, mesh work
structure, and a cover over the mesh work that "has upon its outer surface
pits or recesses." Hazeltine 1, 11. 88-100. Hazeltine discloses that "[t]he
internal mesh work affords weakening recesses or grooves interiorly of or
within the cover and thereby secures increased flexibility of the cover
without requiring such a degree of depth of external marking or recessing
which would detract from the flight characteristics of the ball." Id. at 2,
11. 15-21. Thus, Hazeltine discloses only that the recesses in the cover are
designed to overlay the mesh work in order to create weakening recesses and
flexibility of the cover, so that recesses of a certain depth in the cover may
be avoided.
We see no indication, and the Examiner does not provide evidence
showing, that Hazeltine contemplates modifying a golf ball core with such a
pattern of grooves. And the Examiner does not otherwise provide a reason
why one of ordinary skill in the art would have found it obvious to use the
pattern of grooves in Hazeltine's golf ball cover on a golf ball core. There is
no suggestion that using this pattern on the core would achieve the benefits
proposed by Hazeltine. Further, the Examiner has only indicated what the
results of this modification may be, i.e., a core configured for interlocking
engagement with an adjacent layer and being symmetrical about the core
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center, without explaining why one of ordinary skill in the art would have
had a reason to achieve those results. For example, the Examiner does not
explain why one of ordinary skill in the art would have seen a benefit from
those results or would have recognized such a benefit based on Hazeltine's
disclosure. Therefore, the Examiner has failed to provide an articulated
reasoning with rational underpinnings to support the conclusion that the
modification based on Hazeltine would have been obvious.
Based on the foregoing, we do not sustain the rejection of claim 1.
For the same reasons, we do not sustain the rejections of the remaining
claims because the Examiner relies on the same findings and conclusions
discussed above and for which the Examiner does not rely on the art of
record in a manner that cures the deficiency noted above.
CONCLUSION
We REVERSE the rejections of claims 1, 3---6, 8-10, 12-22, 24, 26,
29-31, 33, and 34.
REVERSED
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