Ex Parte Kennedy

Board of Patent Appeals and Interferences

Dec 12, 2003

09730868 (B.P.A.I. Dec. 12, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS J. KENNEDY, III
____________

Appeal No. 2004-0086
Application No. 09/730,868
____________
ON BRIEF
____________

Before GARRIS, OWENS, and LIEBERMAN, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 1 through 6, which are all the claims pending in this application.
THE INVENTION
According to the appellant, the invention relates to a golf ball having two groups of
dimples on the surface. One group has a circular configuration. The second group has
both a first circular portion and a second circular portion. The two groups of dimples
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may be randomly arranged. Additional limitations are described in the following
illustrative claim.
THE CLAIM
Claim1 is illustrative of appellant’s invention and is reproduced below:
1. A golf ball having a spherical surface containing a plurality of dimples, a
first group of said dimples having a circular configuration and a second group of said
dimples having a compound configuration including a first circular dimple portion
and a second circular dimple portion arranged in a bottom surface of said first
circular dimple portion, said second circular dimple portion having a diameter less
than that of said first circular dimple portion, whereby the circular and compound
dimples increase the turbulence of the air flow at the golf ball surface to improve
the flight characteristics of the ball.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Oka et al. (Oka) 5,174,578 Dec. 29, 1992
Cadorniga 5,470,076 Nov. 28, 1995
THE REJECTIONS

Claims 1 through 6 stand rejected under 35 U.S.C. §103(a) as being unpatentable
over Oka in view of Cadorniga.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner and agree with the examiner for the reasons stated in the Answer and the
reasons herein that the rejection of the claims is well founded. Accordingly, we affirm the
rejection.
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As an initial matter, it is the appellant’s position that, “[a]ll claims stand or fall
together.” See Brief, page 3. Accordingly, we limit our consideration to independent
claim 1. See 37 CFR1.192(c)(7)(2003).
The Rejection under Section 103
The appellant has correctly stated that the sole issue before us for consideration is
whether the combination of Oka and Cadorniga provide the requisite motivation to
combine a circular dimple as taught by Oka with a compound dimple as taught by
Cadorniga. We answer that question in the affirmative and accordingly sustain the rejection
by the examiner.
Oka is directed to a golf ball having improved dimple configurations so that the golf
ball has favorable flight performance. See column 1, lines 7-10. By favorable
performance, Oka states that an object of the invention is to provide, “a golf ball capable
of flying a long distance.” See column 1, lines 48-49. We find that Oka’s contribution to
the art is obtained by, “arranging on the surface of the golf ball dimples consisting of
different configurations so as to increase the turbulence of air flow in the periphery of the
golf ball.” See column 1, lines 50-53. We further find in this respect that the dimples are
arranged on the surface of a golf ball for the purpose of increasing turbulence in the air
flow at the periphery of a golf ball. See column 2, lines 25-28. Indeed, the more a
dimple is adjacent to dimples of different surface configurations the greater the dimple
effect. See column 2, lines 28-30.
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Cadorniga is likewise directed to a golf ball having improved configurations of
dimples so as to provide for, “excellent range and accuracy.” See column 3, line 54 to
column 4, line 4. We find that Cadorniga discusses therein the same peripheral boundary
layer forces which affect the distance traversed by a golf ball. Id. In this respect we find
that Cadorniga is directed to a golf ball having a configuration wherein the dimples have a
major dimple configuration comprising a first recess and a minor dimple configuration
comprising a second recess in the bottom wall of the major dimple configuration which
contributes to the range and accuracy of the golf ball. See column 1, lines 42-57.
Inasmuch as the Cadorniga reference teaches yet another dimple for the same purpose as
the dimple combinations disclosed by Oka, it would have been obvious to the person
having ordinary skill in the art to have utilized a combination of dimples as disclosed by
Oka wherein one of the dimples in the combination is that disclosed by Cadorniga,
particularly as the dimples of Cadorniga are used for the identical purpose as that disclosed
by Oka.
Based upon the above considerations, we conclude that the examiner has established
a prima facie case of obviousness against the claimed subject matter. In our view the prior
art would have suggested to those of ordinary skill in the art to have chosen a dimple
designed for improved range and accuracy as one of the dimples to be utilized in the
combination of dimples disclosed by Oka. As each of the references is directed to
improvements in golf ball flight technology, there are both ample motivation and a
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reasonable chance of success in choosing the specific modifications disclosed by Oka and
Cadorniga respectively. We further conclude that the prior art has revealed that in so
making or carrying out, those of ordinary skill in the art would have had a reasonable
expectation of success. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991).
Based upon the above evidentiary findings, we conclude that it would have been
obvious to one of ordinary skill in the art to have utilized the compound dimple of
Cadorniga in the combination of dimples disclosed by Oka. Accordingly, we affirm the
rejections over Oka in view of Cadorniga.
DECISION
The rejection of claims 1 through 6 under 35 U.S.C. §103(a) as being
unpatentable over Oka in view of Cadorniga is affirmed.
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The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).

AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
PAUL LIEBERMAN )
Administrative Patent Judge )
PL/hh
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LAW OFFICE OF LAWRENCE E. LAUBSCHER, JR.
1160 SPA RD., SUITE 2B
ANNAPOLIS, MD 21403
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