Ex Parte Madson

Patent Trial and Appeal Board

Apr 20, 2017

12945144 (P.T.A.B. Apr. 20, 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.
12/945,144 11/12/2010 Michael R. Madson B09-72 7137
40990 7590 04/24/2017
ArTTSTTNFT rOMPANY
EXAMINER
333 BRIDGE STREET SIMMS JR, JOHN ELLIOTT
P. O. BOX 965
FAIRHAVEN, MA 02719 ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
michelle_lima @ acu shnetgolf. com
j oann_demers @ acu shnetgolf. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. MADSON
Appeal 2015-005110
Application 12/945,1441
Technology Center 3700
Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael R. Madson (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 10—17.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, Acushnet Company is the real party in interest.
Br. 3 (filed Dec. 3,2014).
2 Claims 1—9 are canceled. Id. at 8.
Appeal 2015-005110
Application 12/945,144
INVENTION
Appellant’s invention relates to a golf ball having a dimple surface
contour “based on a modified witch of Agnesi curve.” Spec. 1,11. 5—6.
Claim 10, the sole independent claim, is representative of the claimed
invention and reads as follows:
10. A golf ball having a surface with a plurality of recessed
dimples thereon, wherein the cross-section of at least one
dimple is a curve defined by the equation:
..Ca
V(JC) =--------- ■------
' ' + C.a
Ca
v
V 2 j
~T Cm
where the chord plane represents y = 0,
the center axis of the dimple represents x = 0,
a is a constant equal to the radius of a circle tangent to
the curve at the center of the dimple,
Ci and C 2 are constants, and
d is the dimple diameter; and
wherein the ratio between the chord volume, Vc, of the
dimple profile and the square of the dimple diameter, d2, is:
0.. V< -4- < 0.
d2
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 10-17 under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. The Examiner rejected claims 10-15 under 35 U.S.C. § 103(a)
as being unpatentable over Aoyama (US 2007/0149322 Al,
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Application 12/945,144
pub. June 28, 2007) and Ohama (US 2009/0221387 Al, pub.
Sept. 3, 2009).
III. The Examiner rejected claims 16 and 17 under 35 U.S.C.
§ 103(a) as being unpatentable over Aoyama, Ohama, and
Alaki (US 4,681,323, iss. July 21, 1987).
ANALYSIS
Rejection I
The Examiner finds that the limitation “the chord volume, Vc, of the
dimple profile” is not clear because ‘the dimple profile is interpreted to be a
two dimensional construct,” and, thus, “would not have an associated
volume.” Final Act. 2 (transmitted Nov. 19, 2013).
Appellant has not addressed the indefmiteness rejection of claims
10-17. See Br. 6—7. Accordingly, Appellant has waived any argument of
error, and we summarily sustain the indefmiteness rejection of these claims.
See Hyatt v. Dndas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
Rejection II
The Examiner finds that Aoyama discloses golf ball 20 including a
plurality of dimples, wherein the cross-section of each dimple is based on a
curve represented by a Cartesian equation having “x” and “y” as variables,
“r” as the dimple radius, and “a” as a constant. Final Act. 3 (citing Aoyama,
paras. 61, 73—77, Fig. 5). The Examiner further finds that Aoyama discloses
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Application 12/945,144
the use of shape constants and the claimed ratio between dimple volume and
diameter. Id. (citing Aoyama, paras. 74—78, Table 4). However, the
Examiner notes that Aoyama fails to disclose “generating the curve from a
relation to a circle.” Id. Nonetheless, the Examiner finds that Ohama
discloses golf ball 2 having dimples 10, wherein “[t]he dimple cross-section
is based on a curve having a first concave inflection as the boundary
progresses away from the apex, followed by a convex inflection approaching
the dimple edge, the curve being generated by circle shapes.” Id (citing
Ohama, para. 84, Fig. 5). Thus, the Examiner concludes that
It would have been obvious to one of ordinary skill in the art, at
the time of the invention, to provide Aoyama with a two
inflection curve, generated by circle shapes, defining the dimple
cross-section, as taught by Ohama, to provide Aoyama with a
dimple with gently sloping contours approaching the ball
surface at a relatively small angle, to yield the predictable result
of imparting lift to the golf ball for improving flight distance.
Id.
Appellant argues that the curves of Aoyama and Ohama result in
cross-sectional shapes that cannot be defined by the claimed mathematical
equation. Br. 6. According to Appellant, Aoyama’s curve is a catenary
curve and Ohama’s is the joining of two arcs end to end. Id. at 7.
In response, the Examiner first notes that the claimed geometric
profile “includes a rounded bottom, with a concave curvature continuing
upward to an inflection into a convex curvature portion, which reduces the
sharpness of the edge of the dimple adjacent to the golf ball land.” Ans. 2
(transmitted Feb. 6, 2015). Similarly, the Examiner states that “Figure 7 [of
Aoyama] depicts a dimple having a rounded bottom, with a concave
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Application 12/945,144
curvature continuing upward to an inflection near the dimple edge,”
whereas, “Ohama teaches applying connecting arcs to generate the inflection
in the side of the dimple profile.” Id. Thus, according to the Examiner,
“[t]he prior art references teach the inventive dimple profile.” Id.
Although we appreciate the Examiner’s position that combining the
curves of Aoyama and Ohama results in a curve having a rounded bottom
with concave and convex curvatures, this does not mean that the curve of
Aoyama, as modified by Ohama, is defined by the equation of claim 10. In
other words, the Examiner has not shown that when combining Aoyama’s
curve represented by a catenary equation with Ohama’s two arcs represented
by circle equations, the resulting curve is a representation of the equation of
claim 10. The Examiner has not established that, merely because the curve
of Aoyama, as modified by Ohama, has a rounded bottom with concave and
convex curvatures, means that the location of each point on such a curve
satisfies the equation of claim 10.
The equation of claim 10 is a mathematical representation of a
specific curve, namely, a modified witch of Agnesi curve. See Spec. 3,11.
3—21. In contrast, the equations representing Aoyama’s curve and Ohama’s
two arcs are based on a catenary curve and a circle, respectively. See
Aoyama, para.72—78, Fig. 5; Ohama, para. 84, Fig. 5. Although the curve of
Aoyama, as modified by Ohama, has a rounded bottom with concave and
convex curvatures, it has not been established that this means that each point
on such a curve satisfies the y=f(x) relationship of claim 10.
Hence, the Examiner’s determination that combining the curves of
Aoyama and Ohama results in a curve based on a modified witch of Agnesi
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curve requires speculation on the Examiner’s part. The Examiner does not
articulate sufficient facts or technical reasoning to show that when
combining Aoyama’s curve represented by a catenary equation with
Ohama’s two arcs represented by circle equations, the resulting curve is a
modified witch of Agnesi curve, as called for by the equation of claim 10.
We further do not agree with the Examiner’s position that “the process for
arriving at the shape of the curve amounts to a product by process
limitation” because claim 10 positively recites a specific equation that
represents a specific curve, namely, a modified witch of Agnesi curve. See
Ans. 3; see also Final Act. 4.
As speculation cannot form the basis for concluding obviousness, we
do not sustain the rejection of independent claim 10, and dependent claims
11—15, under 35 U.S.C. § 103(a) as unpatentable over Aoyama and Ohama.
See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
Rejection III
With respect to the rejection of claims 16 and 17, the Examiner’s use
of the Alaki disclosure does not remedy the deficiencies of Aoyama and
Ohama, as discussed supra. See Final Act. 4—5. Therefore, for the reasons
discussed above, we also do not sustain the rejection of claims 16 and 17
over the combined teachings of Aoyama, Ohama, and Alaki.
SUMMARY
The Examiner’s decision to reject claims 10—17 under 35 U.S.C. § 112,
second paragraph, as being indefinite, is affirmed.
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The Examiner’s decision to reject claims 10—15 under 35 U.S.C.
§ 103(a) as unpatentable over Aoyama and Ohama is reversed.
The Examiner’s decision to reject claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Aoyama, Ohama, and Alaki is reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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