Ex Parte Isogawa et al

Patent Trial and Appeal Board

Feb 21, 2017

13093578 (P.T.A.B. Feb. 21, 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.
13/093,578 04/25/2011 Kazuhiko ISOGAWA 3673-0224PUS2 8962
127226 7590 02/23/2017
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
EXAMINER
GORDEN, RAEANN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUHIKO ISOGAWA and KEIJI OHAMA
Appeal 2015-004235
Application 13/093,578
Technology Center 3700
Before LINDA E. HORNER, LYNNE H. BROWNE, and
GORDON D. KINDER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kazuhiko Isogawa and Keiji Ohama (Appellants)1 seek our review
under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the
Non-Final Office Action, dated April 8, 2014 (“Non-Final Act.”), rejecting
claims 1-10 and 12-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Dunlop Sports Co. Ltd. as the real party in interest.
Appeal Br. 1.
Appeal 2015-004235
Application 13/093,578
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “multi piece golf balls
having a core, a mid layer and a cover.” Spec. 1. Claim 1 is the sole
independent claim and is reproduced below.
1. A golf ball which comprises a spherical core, a mid
layer positioned outside of the core, a reinforcing layer
positioned outside of the mid layer, and a cover positioned
outside of the reinforcing layer, wherein
said core has a diameter of 39.2 mm or greater and 41.0
mm or less,
said mid layer has (1) a hardness Hm as measured with a
Shore D type hardness scale of equal to or less than 54 and (2) a
thickness Tm of 0.5 mm or greater and 1.2 mm or less,
said cover has (1) a hardness He as measured with a Shore
D type hardness scale of equal to or greater than 56 and (2) a
thickness Tc of 0.8 mm or less,
the mid layer and the cover together have a thickness of
1.2 mm to 1.8 mm, and
said golf ball has a diameter equal to or greater than
42.67 mm and equal to or less than 42.80 mm.
REJECTIONS
The Non-Final Action includes the following grounds of rejection:
1. Claims 1-10 and 12-19 under 35 U.S.C. § 103(a) as unpatentable
over Sajima (US 6,843,735 B2, issued January 18, 2005) and
Masutani (US 6,106,415, issued August 22, 2000).
2. Claims 15-18 under 35 U.S.C. § 103(a) as unpatentable over
Sajima, Masutani, and Endo (US 2003/0083155 Al, published
May 1,2003).
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Application 13/093,578
ANALYSIS
In each ground of rejection, the Examiner relies on Sajima as
disclosing a golf ball wherein the mid layer and the cover together have a
thickness within a range that encompasses the claimed range of “1.2 mm to
1.8 mm” as called for in independent claim 1. Non-Final Act. 2.2
Appellants assert that “when the total thickness of the mid layer and the
cover is 1.8 millimeters or less, great flight distance is achieved coupled
with extremely favorable feel at impact.” Appeal Br. 4 (citing Spec., Tables
3, 4, 6, and 7).3
Appellants contend the Examiner has not set forth sufficient evidence
of obviousness of the subject matter of claim 1. Appellants argue that
although the broad ranges of mid layer and cover thicknesses disclosed in
Sajima “generally overlap with ranges of features of the present invention,
the Sajima patent fails to disclose or suggest any reason to specifically select
the combination of all the narrower ranges” as claimed. Id. at 5 (citing
Sajima, col. 7,11. 12-13 (coverthickness) and col. 10,11. 22-23 (mid layer
2 In the Non-Final Action, the Examiner finds that Sajima discloses a mid
layer having a thickness of 0.2 to 4 mm, a cover having a thickness of 0.2 to
2.5 mm, and a combined thickness of 0.4 to 6.5 mm. Non-Final Act. 2. In
the Answer, the Examiner finds that Sajima discloses a mid layer having a
thickness of 0.5 to 2 mm, a cover having a thickness of 0.2 to 1.5 mm, and a
combined thickness of 0.7 to 3.5 mm. Ans. 2.
3 Appellants argue claims 1-10 and 12-19 subject to the first ground of
rejection as a group. Appeal Br. 3-8. We select claim 1 as the
representative claim for this group, with claims 2-10 and 12-19 standing or
falling with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Appellants present these
same arguments in response to the second ground of rejection. Appeal Br. 3.
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Application 13/093,578
thickness)) (emphasis omitted); see also id. (Appellants arguing Sajima
“does not suggest setting ranges for two parts (e.g., mid layer and cover)
together”) (emphasis omitted). Appellants assert “the fact that a claimed
species or subgenus is encompassed by a prior art genus is not sufficient by
itself to establish a prima facie case of obviousness.” Id. (citing MPEP
§ 2144.08, Ex parte Kuhn, 132 USPQ 359 (POBA 1961); In re Baird, 16
F.3d 380 (Fed. Cir. 1994)).
The holding in In re Baird is inapposite to the issues presented in this
appeal. The court in Baird held “[t]he fact that a claimed compound may be
encompassed by a disclosed generic formula does not by itself render that
compound obvious.” 16 F.3d at 382; id. at 383 (noting, in a Section 103
obviousness inquiry, that “[a] disclosure of millions of compounds does not
render obvious a claim to three compounds, particularly when that disclosure
indicates a preference leading away from the claimed compounds”). By
contrast, the appeal before us presents a prior art golf ball comprised of the
same core and outer layers as in the prior art where the range of diameters
and thicknesses for the core and outer layers disclosed in the prior art is
broader than the range of diameters and thickness for the claimed core and
outer layers. In the present case, as set forth in the Table below, the prior art
ranges are not especially broad compared to the claimed ranges so as to
encompass a vast number of possible distinct combinations of diameters and
thicknesses. See In re Peterson, 315 F.3d 1325, 1330 n.l (Fed. Cir. 2003).
Most notably, as shown below, the preferred prior art range for the thickness
of the mid layer (i.e., 0.5 mm -1.5 mm) is not considerably different from
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Application 13/093,578
the claimed range (i.e., 0.5 mm -1.2 mm) and the preferred prior art range
for the thickness of the cover (i.e., 0.5 mm - 1.5 mm) is not considerably
different from the claimed range (i.e., 0.8 mm or less).
Appellants’
Claimed Range
Sajima’s disclosed
ranges
Core Diameter (mm) 39.2-41.0 25.0-41.0
27.0 -40.04
Mid Layer Thickness (mm) 0.5-1.2 0.2-4.0
0.5 -1.5 (preferred)5
Cover Layer Thickness (mm) 0.8 or less 0.2-2.5
0.5 - 1.5 (preferred)6
Mid Layer + Cover Layer (mm) 1.2- 1.8 0.4-6.5
1.0 - 3.0 (preferred)7
Golf Ball Diameter (mm) 42.67-42.8 42.67-42.8s
For each parameter, the ranges disclosed in Sajima overlap with the
claimed ranges. In the case of the mid layer thickness and the combined
thickness, the ranges disclosed in Sajima completely encompass the claimed,
narrower ranges. When claimed ranges overlap or lie inside ranges
disclosed by the prior art for every component in a claim, a prima facie case
of obviousness is established. See In re Peterson, 315 F.3d at 1329; In re
4 Sajima, col. 9,11. 29-31.
5 Id. at col. 10,11. 22-32.
6 Id. at col. 7,11. 12-23.
7 Sajima does not disclose explicitly any particular preferred range for the
combined thicknesses of the mid layer and cover. Combining the preferred
lower and upper limits for Sajima’s mid layer and cover results in a
combined thickness range of 1.0 mm to 3.0 mm. This range encompasses
the claimed combined thickness range of 1.2 mm to 1.8 mm.
%Id. at col. 3,11. 10-11.
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Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such overlap itself
provides sufficient motivation to optimize the ranges. See 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... ranges is the optimum combination....”). Further,
“where the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Alter, 220 F.2d 454, 456 (CCPA 1955). This rule is
limited to cases in which the optimized variable is a “result-effective
variable.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977); 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.”). In the
present case, because the prior art disclosed values overlapping the claimed
ranges, the “general conditions” of the claim are disclosed. See Alter, 220
F.2d at 456; see also Boesch, 617 F.2d at 276.
Further, the claimed dimensions were known in the art to be result-
effective variables. For instance, Sajima acknowledges that “a golf ball
having a thick cover has the defect of an inferior feel at impact, while a golf
ball having a thin cover has the defect of an inferior resilience performance.”
Sajima, col. 1,11. 33—40. Sajima also acknowledges that the thickness of the
mid layer affects feel at impact and resilience performance of the golf ball.
Sajima, col. 10,11. 23-29. Masutani acknowledges that “[b]y properly
selecting the material and thickness of the intermediate layer and the cover
or by modifying the intermediate layer and/or the cover to be a multi-layer
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structure, the spin and feeling which are considered to be drawbacks of solid
golf balls are improved while the excellent flight characteristic of solid golf
balls is maintained or further improved.” Masutani, col. 1,11. 21-27. Thus,
the thickness of the mid layer and the cover were known in the art to be
result-effective variables.
Further, as noted by Appellants (Reply Br. 1-2), because the overall
diameter of the golf ball is regulated by the United States Golf Association
(USGA), the diameter of the core is necessarily conversely related to the
combined thickness of the mid layer and cover. Under the principles of
basic mathematics, in order to maintain a golf ball having an overall
diameter within the narrow range of 42.67 — 42.80 mm in compliance with
USGA standards, a thicker mid layer and cover results in a smaller diameter
core, and conversely, a thinner mid layer and cover results in a larger
diameter core. As such, one having ordinary skill in the art, looking to
optimize the thickness of the mid layer and cover to achieve the known
advantages of improved feel at impact, resilience, and flight characteristics,
would necessarily need to change the core diameter in keeping with changes
made to the thickness of the core and mid layer to maintain the same overall
diameter of the golf ball. For these reasons, we find that the Examiner set
forth a prima facie case of obviousness of the claimed invention.
“In general, an applicant may overcome a 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 Geisler, 116 F.3d at
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1469-70 (quoting Woodruff, 919 F.2d at 1578)). “[T]he applicant’s showing
of unexpected results must be commensurate in scope with the claimed
range.” Id.
Appellants present evidence of unexpected results. Appeal Br. 6-7
(citing Spec., Tables 3, 4, 6, and 7). Appellants specifically cite to Example
13 and Comparative Example 69, as set forth in Table 6 of the Specification.
Id. Appellants assert:
Unexpectedly, Appellants have discovered that
controlling the combined thickness of the mid layer and the cover
layer in a golf ball enables them to provide enhanced flight
performance while maintain [sic] excellent feel at impact. This
unexpected balance of properties overcomes any prima facie case
of obviousness based upon the disclosures in the Sajima,
Masutani, and Endo references.
Id. at 7 (emphasis omitted).
The Examiner determines that “[t]he table [provided in the Appeal
Brief comparing Example 13 and Comparative Example 6] does not provide
adequate support for the criticality of the mid layer/cover thickness
combination” and “[t]he table supports a critical thickness for the mid layer
only but not the mid layer/cover combination thickness.” Ans. 5.
9 Appellants assert that Comparative Example 6 is the closest to the golf ball
of Sajima. Appeal Br. 4. We disagree. The thickness of the mid layer in
Comparative Example 6 of 1.9 mm falls outside the preferred range
disclosed in Sajima of 0.5 mm - 1.5 mm. In fact, Examples 12 and 15 in the
Specification appear closer than Comparative Example 6 to the preferred
ranges disclosed in Sajima because the core diameter and mid layer and
cover thicknesses are within the preferred ranges disclosed in Sajima. See
Spec. 38 (Table 6).
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Application 13/093,578
Appellants respond that “in the comparison between Example 13 and
Comparative Example 6, it is not only the thickness of the mid layer but also
the type and diameter of the core which are different from each other. The
diameter of the core affects the mid layer/cover combination thickness.”
Reply Br. 2. Appellants argue that “the diameter of the core, and not only
the thickness of each of the mid layer and the cover, greatly contributes to
flight distance.” Id. (citing comparison between Example 410 in Table 3 and
Example 8 in Table 4 and comparison between Example 3 in Table 3 and
Example 7 in Table 4).
We have reviewed all of the Examples presented in Tables 3, 4, 6, and
7. The Examples provided in the Tables fail to demonstrate adequate
evidence of unexpected results based on the claimed combined thickness of
the mid layer and cover and the claimed core diameter. For example, a
comparison of the golf balls of Examples 12 and 13 demonstrates very little
impact of the claimed combined thickness and core diameter. The golf ball
of Example 12 falls outside of the claimed ball in that the core is smaller
than the claimed core diameter, and the combined thickness of the mid layer
and cover is 2.0 mm, which is greater than the claimed combined thickness.
10 Examples 4 and 8 are not encompassed by claim 1, and thus cannot be
relied upon as evidence of unexpected results. In particular, the combined
mid layer thickness (Tm) and cover thickness (Tc) in Examples 4 and 8 is
2.0 mm, which lies outside of the claimed range of “1.2 mm to 1.8 mm,” and
the diameter of the core in Examples 4 and 8 is 38.8 mm, which lies outside
of the claimed range of “39.2 mm or greater and 41.0 mm or less.” Further,
the thickness Tc of the cover in Example 8 is 1.0 mm, which lies outside of
the claimed thickness of “0.8 mm or less.”
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Example 13 falls within the limits of the claimed ball, with the combined
thickness of the mid layer and cover being 1.5 mm and the core being 39.8
mm. Further, the type of core, mid layer, and cover in Examples 12 and 13
are the same. In testing, the golf balls of both Examples 12 and 13 exhibited
the same feel at impact, the golf ball of Example 12 had better durability
than the golf ball of Example 13, and the golf ball of Example 13 traveled
one meter farther than the golf ball of Example 12. A difference of one
meter in travel distance does not demonstrate unexpected results of the
claimed combined thickness and claimed core diameter. In fact, based on
differences in flight distances achieved by other golf balls falling within the
parameters of the claim, the distance of one meter seems to be an
insignificant difference. For instance, each of the golf balls of Examples 1,
2, 3, 5, and 6 fall within the limits of the claimed golf ball, but the travel
distance for each of these Examples varies by a difference of 7 m, with the
highest distance traveled being 259 m and the lowest distance traveled being
252 m.
Further, the Examples of the Tables demonstrate that other unclaimed
features may have a larger impact on durability and travel distance than the
claimed features. For instance, Example 9 and Comparative Example 4 have
the same type and size core, the same type, hardness, and thickness mid
layer, and the same type, hardness, thickness, weight, and ratio of weight to
hardness cover. The only difference between these examples is that
Example 9 contains an epoxy reinforcing layer between the mid layer and
cover, and Comparative Example 4 lacks any reinforcing layer. The results
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provided in the Table demonstrate that even with the claimed core, mid layer
and cover, the golf ball of Comparative Example 4 traveled 9 meters less
than the golf ball of Example 9 and exhibited a durability of 100 compared
to the durability of 142 for Example 9. From this comparison, the evidence
tends to demonstrate that the use of a reinforcing layer between the mid
layer and the cover had a significant impact on the performance of the golf
ball, with all other parameters being equal. The Examiner finds that it would
have been obvious to modify Sajima to add a reinforcing layer to achieve
such benefits, as taught in Masutani. Final Act. 3. Appellants do not contest
this proposed modification of Sajima or the Examiner’s stated reason to
combine the teachings of Sajima and Masutani.
Further, Appellants’ comparison chart provided in the Reply Brief
omits Example 2 from Table 3 of the Specification. Reply Br. 3. The golf
ball of Example 2 falls within the scope of claim 1; however, it exhibited a
travel distance of only 252 m and a durability of only 140. By contrast, the
golf ball of Example 4, which does not possess the claimed combined mid
layer/cover thickness, exhibited a travel distance of 4 meters further, 256 m,
and a higher durability, 144. This comparison tends to show that other
aspects, such as type and hardness of the mid layer,* 11 may contribute to the
performance of the golf ball.
11 Both Example 2 and Example 4 have mid layers made of materials with
hardnesses that fall within the scope of claim 1 of “equal to or less than 54.”
Appeal Br. 9 (Claims App.). The mid layer of Example 2 is of type a with a
hardness (Shore D) of 30, and the mid layer of Example 4 is of type b with a
hardness (Shore D) of 42. Spec. 32 (Table 3).
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The data provided in Tables 3, 4, 6, and 7 do not evidence unexpected
results for the entire claimed range of the core diameter of 39.2 - 41.0 mm
and for the entire claimed range of the combined thickness of the mid layer
and cover of 1.2 mm -1.8 mm. From the data points provided, any possible
improvement in travel distance that can be attributed to two points within
these ranges (i.e., Examples 1 and 3) is nominal when compared with a golf
ball outside the claimed ranges (Example 4), and there is no difference
between these Examples as it pertains to feel at impact. Similar results are
shown for another point within these ranges (i.e., Example 13) as compared
to a similar golf ball outside the claimed ranges (Example 12). For these
reasons, we do not discern from the arguments and evidence provided an
adequate showing of unexpected results.
Accordingly, we sustain the rejections under 35 U.S.C. § 103(a) of
claims 1-10 and 12-19 as unpatentable over Sajima and Masutani and of
claims 15-18 as unpatentable over Sajima, Masutani, and Endo.
DECISION
The decision of the Examiner to reject claims 1-10 and 12-19 is
AFFIRMED.
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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