Ex Parte MaxwellDownload PDFPatent Trial and Appeal BoardNov 30, 201713485484 (P.T.A.B. Nov. 30, 2017) Copy Citation 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. 13/485,484 05/31/2012 Kerby LaVar Maxwell FENGl 197PUS 4313 62124 7590 QUINN IP Law 21500 Haggerty Road Suite 300 Northville, MI 48167 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 12/04/2017 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): adomagala@quinniplaw.com U S Docketing @ quinniplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERBY LAVAR MAXWELL Appeal 2016-003899 Application 13/485,484 Technology Center 3700 Before STEVEN D.A. McCARTHY, LISA M. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 1, 21—31, 33—35, and 37—39. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies the real party in interest as Nike, Inc. Br. 2. 2 Appeal is taken from the Final Office Action dated January 28, 2015 (“Final Act.”), as supplemented by the Advisory Action dated April 2, 2015. Appeal 2016-003899 Application 13/485,484 CLAIMED SUBJECT MATTER Claims 1, 25, and 30 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A solid golf ball comprising: a first layer made from a first material, the first layer having a first surface texture on a first, outer surface; and a second layer made from a second material, the second layer surrounding the first layer and having a second surface texture on a second surface, wherein the second surface is adjacent to and in contact with the entire first surface; and wherein the first material includes at least one of a thermoplastic polyurethane and an ionomer, and wherein the second material includes a rubber; wherein the first surface texture is configured to interlock with the second surface texture; wherein the first surface texture includes a plurality of protrusions; and wherein the first layer is a core and the second layer is an intermediate layer. REJECTIONS I. Claims 1,21, 23—26, 28—30, 34, 35, and 37—39 stand rejected under 35 U.S.C. § 103(a) as unpatentable by Cheng (US 2009/0215554 Al; published August 27, 2009) and Maruko (US 6,379,270 B2; issued April 30, 2002). Final Act. 2-4. II. Claims 22, 27, and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng, Maruko, and Masutani (US 6,267,695 Bl; issued July 31, 2001). Final Act. 4—5. 2 Appeal 2016-003899 Application 13/485,484 III. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Cheng, Maruko, Hamada (US 5,833,552; issued November 10, 1998), and Risen (US 6,949,604 B2; issued September 27, 2005). Final Act. 5—6. ANALYSIS Rejection I Independent claims 1, 25, and 30; and dependent claims 21, 24, 29, 30, 35, 38, and 39 Appellant argues independent claims 1, 25 and 30 as a group. Br. 6— 11. We select claim 1 as a representative claim, and claims 25 and 30 stand or fall with claim 1. The Appellant does not separately argue dependent claims 24, 29, 30, 35, 38, and 39. These claims also stand or fall with claim 1. 37C.F.R. §41.37(c)(l)(iv). Regarding independent claim 1, the Examiner finds, inter alia, that Cheng’s inner core 11 with depressions 14 corresponds to the claimed first layer (i.e., core) with first surface texture, Cheng’s outer core 12 with protrusions corresponds to the claimed second layer (i.e., intermediate layer) with a second surface texture, and also that Cheng’s first texture is configured to interlock with Cheng’s second texture, as claimed. Final Act. 2 (citing Cheng 120, Fig. 2). The Examiner finds that Maruko also discloses a solid, multi-layer golf ball with a core 1 and intermediate layer 2; and that Maruko’s core 1 includes protrusions configured to interlock with a second surface texture of Maruko’s intermediate layer 2. Id. at 2—3 (citing 2:43—54, Fig. 1). The Examiner reasons that it would have been obvious to 3 Appeal 2016-003899 Application 13/485,484 provide Cheng’s core with protrusions, as taught by Maruko, “as a known substitute” for an interlocking configuration (Final Act. 3) and that doing so would have produced “layers which interlock in the same manner” (Ans. 3). The Examiner further finds that although Cheng discloses that the first layer (i.e., inner core 11) is made from a first material including at least one of a thermoplastic polyurethane and an ionomer, Cheng fails to disclose that the second layer (i.e., outer core 12) is made from a second material including a rubber, as claimed. The Examiner relies on Maruko for teaching an intermediate layer made from a second material including a rubber. Final Act. 2—3 (citing Cheng 133; Maruko 5:4—6). However, contrary to the Examiner’s finding that Cheng fails to disclose an outer core made of rubber, Cheng specifically discloses that inner or outer cores 11,12 may be made from either an ionomer resin or a rubber. Cheng 129 (“If the core of the golf ball is formed of at least two layers, the material of at least one core layer is selected from a thermoplastic material or thermosetting material”); id. 128 (“[sjuitable thermosetting materials are thermoelastomers such as . . . ionomer resin”)); id. 130 (“a thermosetting material, for example, rubber compound”)). Because only one of the core layers is required to be either a thermoplastic (e.g., ionomer resin) or thermosetting material (e.g., a rubber), Cheng also discloses that the inner and outer core materials do not have to be the same, but rather, may be dissimilar at the interlocking interface between inner core 11 and outer core 12. Further, Cheng provides specific examples wherein the inner core includes an ionomeric resin blend D (i.e., core) and the outer core (i.e., 4 Appeal 2016-003899 Application 13/485,484 intermediate layer) includes a rubber compound C, which meets the claim limitations of claim 1. See id., Tables I, II, IV, and specifically, Table IV, Examples 1, 2. Notably, Cheng’s outer core may correspond to the claimed “intermediate layer,” because the Specification expressly discloses that “any layer between an inner core and an outer cover layer may be called an intermediate layer.” Spec. 134. Accordingly, the Examiner’s proposed modification of Cheng to include the material selections of Maruko is unnecessary to establish a prima facie case of obviousness. Notwithstanding, a preponderance of the evidence also supports the Examiner’s finding that Maruko teaches a second layer (i.e., intermediate layer 2) made from rubber, as stated supra, and further, that the outermost layer of a two-layer solid core (i.e., corresponding to the claimed core, which is provided with protrusions) may be formed of “rubber-base [d] materials, but preferably of resin-base [d] materials, for example ionomer resins” (Maruko 4:33—42), and that the material of the intermediate layer, “formed on the core having protrusions” {id. at 4:66—67), “is not critical and may be selected from both resin materials and rubber materials” including “polyester elastomers,. . . styrene elastomers, hydrogenated butadiene resins, [or] mixtures thereof’ {id. at 5:4—10). Thus, Maruko factually supports the Examiner’s reasoning that it would have been obvious “to provide Cheng with a known substitute intermediate layer material.” Final Act. 3. In other words, although Cheng teaches the claimed material selections, as set forth supra, the Examiner also establishes a prima facie case of obviousness by providing reasoning (i.e., a simple substitution of 5 Appeal 2016-003899 Application 13/485,484 known elements to obtain a predictable result) for modifying Cheng’s outer layer to include rubber, as taught by the materials selections disclosed in Maruko. Id. Appellant argues that the Examiner’s rejection is improper because “the rejection fails to clearly articulate a motivation to modify the teachings of Cheng.” Br. 6. We disagree. The Examiner’s rejection establishes a prima facie case of obviousness, because the Examiner provides reasoning for modifying Cheng in view of the teachings of Maruko, namely, that the modification is a simple substitution of one known element (i.e., protrusions on a layer of a golf ball for interlocking with an adjacent core of a golf ball) for another (protrusions on a core of a golf ball for interlocking with an adjacent layer of a golf ball) to obtain predictable results (i.e., an interlocking interface between the core and adjacent layer). See KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (when a structure already known in the prior art “is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); cf. In re Gazda, 219 F,2d 449 (CCPA 1955) (prior art disclosed a. clock fixed to the stationary steering wheel col umn of an automobile while the gear for winding the clock moves with steering wheel; mere reversal of such movement, so the clock moves with wheel, was held to be an obvious modification). Appellant also argues that the Examiner’s proposed modification of the depressions of Cheng’s golf ball core, which Appellant submits “are the sole defining feature of [Cheng],” to be protrusions, as taught by Maruko, is 6 Appeal 2016-003899 Application 13/485,484 “completely redesigning the structure of Cheng;” and that the Examiner fails to provide the required reasoning for doing so. Br. 7—8. Appellant submits that “[djespite the criticality of [Cheng’s depressions], the rejection articulates no analysis of whether protrusions (instead of depressions) would be desirable, whether there would be a reasonable expectation of success, or whether the ball would still even be fit for its intended purpose.” Id. at 8. Appellant concludes that the Examiner engaged in improper “result-oriented reasoning,” such that the Examiner “fails to establish aprima facie rejection.” Id. at 8—9. We are not persuaded by Appellant’s argument. As discussed supra, the Examiner provides a rationale for modifying Cheng, in view of Maruko. Further, Appellant does not provide persuasive evidence that the Examiner’s proposed modification is “completely redesigning” Cheng’s golf ball. Rather, Cheng itself evidences that it is equally known to have projections (or protrusions) formed on the inner surface of the outer core corresponding to depressions formed in the outer surface of the inner core (see Cheng 15) as it is to have protrusions on the core penetrating into an intermediate layer (see id. 16 (citing Maruko)). Although a prior art reference may indicate that a particular combination is undesirable for its own purposes (as here, Cheng prefers depressions on the inner core), the reference can nevertheless teach that combination if it remains suitable for the claimed invention. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“[T]he teaching of [a reference] is not limited to the specific invention disclosed.”). Although use of projections on Cheng’s intermediate layer (i.e., outer core 12) may 7 Appeal 2016-003899 Application 13/485,484 eliminate certain advantages, such as loss of the spinning energy of the hall (see Cheng If 11), “[a] known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant also argues that “Cheng discloses that the core of the golf ball can be made out of various resins or rubbers, however, [Cheng] is silent as to the material of any surrounding layers.” Br. 9. We disagree. The Examiner determines that a surrounding layer of inner core 11 is outer core 12, and as noted supra, the Specification allows for this interpretation of the claim term “intermediate layer.” See Spec. 34 (“any layer between an inner core and an outer cover layer may be called an intermediate layer”). A preponderance of the evidence supports a finding that Cheng discloses the claimed material selections for the layers comprising inner and outer cores 11, 12, as set forth supra. Appellant also argues that the Examiner’s rejection is improper because “Maruko would not motivate one of skill in the art to surround the core of Cheng with a dissimilar material.” Br. 6. In particular, Appellant contends that the Examiner’s reasoning for modifying Cheng’s golf ball to have an intermediate layer (i.e., outer core layer) made of rubber, as set forth supra, is “conclusory,” lacks “factual reasoning,” and “does not articulate any desirability or expectation of success for the modification” or “reference any qualities or properties of the prior art.” Id. at 9. Appellant submits that “□Just because you can make the modification does not necessarily mean 8 Appeal 2016-003899 Application 13/485,484 that one of skill in the art would be motivated to do so.” Id. Further, Appellant argues that “Maruko discloses a preferred construction” where “a smooth, incompatible material interface exists between the core and first intermediate layer” and “an interlocking, compatible material interface exists between the first intermediate layer and the second intermediate layer.” Id. at 10. We are not persuaded by Appellant’s arguments, because a preponderance of evidence supports a determination that Cheng alone discloses dissimilar materials at the interlocking interface between inner core 11 and outer core 12, as set forth supra. Additionally, as set forth supra, Maruko provides factual support for the Examiner’s finding that the claimed material selections represent a simple substitution of one known element for another to obtain a predictable result. Additionally, the Specification itself supports the Examiner’s reasoning that such materials are well-known substitutes for solid golf ball layers. See Spec. 135 (“[a]ny of the layers . . . may be made from any known golf ball material, such as various well-known thermoset and thermoplastic materials” including “rubber,. . . [and] resins, such as an ionomer resin.”); see also Maruko 4:33—44 (disclosing that the two-layer core may be formed of a rubber composition, while “[t]he outer layer(s) may also be formed of rubber-base materials, but preferably of resin-base [d] materials, for example, ionomer resins.”). Thus, Appellant’s argument does not apprise us of error in the Examiner’s findings with respect to Cheng and/or Maruko, nor in the Examiner’s reasoning that the claimed materials 9 Appeal 2016-003899 Application 13/485,484 represent a simple substitution of one known element for another to obtain predictable results (i.e., a golf ball with acceptable performance characteristics). Regarding Appellant’s argument that “it cannot be said that a person would be motivated to modify Cheng using Maruko in the claimed manner,” because “Cheng fails to disclose the material interface altogether, and Maruko says it’s preferred to have a smooth boundary between incompatible materials,” we disagree. Br. 10. As discussed supra, both Cheng and Maruko separately disclose the claimed materials at an interlocking interface between layers of a golf ball, which factually supports the Examiner’s reasoning that the claimed material selections for the core and intermediate layers involve a simple substitution of one known element for another to obtain predictable results. Appellant also argues that the Examiner erred because “the references fail to appreciate the problem, and likewise, there is no explicit or implicit disclosure suggesting a solution to the problem.” Br. 10; see also id. at 7 (citing In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) (claims for a double-layer eccentric pill coating were non-obvious, despite all elements being known in the prior art, because the prior art did not recognize or appreciate the problematic interaction between two existing layers)). The Examiner responds that “although the prior art does not [expressly] recognize the problem of incompatible materials in adjacent layers, Cheng and Maruko teach known substitute configurations of interlocking materials and known materials for forming adjacent layers, to 10 Appeal 2016-003899 Application 13/485,484 address a different problem but the resulting structure meets the claimed limitations.” Ans. 4. Although a combination of known elements may be nonobvious in view of the discovery of a previously unknown problem, we find Appellant’s argument unpersuasive because, unlike the patentee in In re Omeprazole Patent Litigation, Appellant has not recognized a flaw in prior solid golf balls that prompted the combination of known elements that, without recognition of the flaw, one of ordinary skill in the art otherwise would not have had a reason to combine (i.e., by making a simple substitution of known elements to obtain predictable results). Finally, Appellant concludes that “because the rationale to combine Cheng and Maruko is not tied to any explicit advantages or features of the prior art designs, it must be presumed that the rejection improperly relie[d] on hindsight.” Br. 6; see also id. at 11 (because the Examiner’s reasoning “is not based on any teaching of the prior art, nor any facts or evidence in the record,” the Examiner engaged in “improper hindsight-reconstruction.”). However, Appellant’s argument does not address the Examiner’s reasoning that the invention resulted from a simple substitution of one known elements for others to obtain predictable results, nor does Appellant dispute the factual underpinnings of the Examiner’s reasoning, which refer to the prior art for teaching that the claimed elements are known, or that the claimed combination of the known elements yield predictable results. 11 Appeal 2016-003899 Application 13/485,484 Accordingly, we sustain the Examiner’s rejection of claim 1, under 35 U.S.C. § 103(a) as unpatentable over Cheng and Maruko, and claims 21, 24, 29, 30, 35, 38, and 39 fall therewith. Dependent claims 21, 26, and 37 Claim 37, which depends from independent claim 30, recites, in relevant part, “wherein there is no adhesive disposed between the core and the intermediate layer.” Br. 19 (Claims App.). Claim 21, which depends from independent claim 1, and claim 26, which depends from independent claim 25, include similar limitations. Br. 17—18 (Claims App.). The Examiner finds that “Cheng teaches no adhesive disposed between the first and second layer.” Final Act. 3 (citing Cheng % 36). Appellant argues that “the order of molding [disclosed in Cheng] makes no reference to specific techniques/processes that could be read to infer a boundary devoid of adhesive, nor is it explicit about a lack of adhesive.” Br. 12. Appellant concludes that the Examiner’s rejection is conclusory, lacking the requisite factual support from Cheng. Id. The Examiner responds that Cheng’s “disclosure of the steps of fabrication without including the introduction of adhesive is a sufficient suggestion that the interlocking layers do not require adhesive.” Ans. 4. We determine that a preponderance of evidence supports the Examiner’s finding that the lack of disclosure in Cheng of adding any adhesive into the hot-press or injection molds during molding of the core and/or multiple cover layers of Cheng discloses the negative claim limitation requiring no adhesive disposed between the core and the intermediate layer. 12 Appeal 2016-003899 Application 13/485,484 Accordingly, we sustain the Examiner’s rejection of claims 21, 26, and 37, under 35 U.S.C. § 103(a), as unpatentable over Cheng and Maruko. Dependent claims 23, 28, and 34 Claim 23, which depends from independent claim 1, further requires that “each protrusion of the plurality of protrusions has a radial height of from about 0.05 mm to about 1.0 mm.” Br. 17 (Claims App.). Claim 28, which depends from independent claim 25, and claim 34, which depends from independent claim 30, recite similar limitations. See Br. 18—19 (Claims App.). The Examiner finds that “Maruko discloses that the height of the protrusions may be from about 0.05 to about 1.0 mm.” Final Act. 3 (citing Maruko 3:27—30). 4. The Examiner reasons that it would have been obvious “to provide Cheng, as modified, with protrusions having a height within the claimed range, as taught by Maruko, to provide Cheng with a known substitute protrusion height.” Id. Maruko discloses that “[t]he ball performance is further improved when the protrusions have a length L of 1 to 6 mm, , . . and a maximum size of 0.5 to 5 mm ... in a cross section.” See Maruko 3:27—30. Appellant correctly argues that Maruko’s description of the range of 0.5 to 5 mm refers to cross-sectional size of the protrusions, not their radial height. Br. 15. Appellant also argues that both Cheng and Maruko disparage (or teach away from) sizing the protrusions as claimed. Br. 15 (citing Cheng *([ 20 (“if the depth of the depressions 14 is smaller than 1 mm, the structural effect of will be drastically reduced and the spin rate of the golf will not be effectively reduced when the golf ball is hit with a driver 13 Appeal 2016-003899 Application 13/485,484 club”); Maruko 3:31—34 (“If the protrusion length L is less than 1 mm, the effect of the protrusions would become insufficient.”). The Examiner responds that “protrusions greater than the 1mm, of the prior art, or protrusions less than I mm, as claimed, would be effective in binding the layers together, so that the claimed protrusion dimension does not embody criticality.” Ans. 4 (citing In re Alter, 220 F.2d 454, 456 ((/CPA 1955) (“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.”). chose not to file a Reply Brief, and therefore, provides no rebuttal to the Examiner’s determination that the (radial) of a protrusion is recognized in the prior art as a result-effective variable, such that discovering the claimed range requires no more than routine experimentation. Accordingly, we sustain the Examiner’s rejection of claims 23, 28, and 34, under 35 U.S.C. § 103(a), as unpatentable over Cheng and Maruko, Rejection II Claim 22, which depends from independent claim 1, further requires that “each protrusion of the plurality of protrusions has a radial height of from about 0.1 mm to about 0.25 mm” (Br. 17 (Claims App.)). Claim 27, which depends from independent claim 25, and claim 33, which depends from independent claim 30, recite similar limitations. See Br. 18—19 (Claims App.). The Examiner relies on Masutani for teaching a radial 1 of 0.1 mm to 0.25 mm, which Appellant does not dispute. Final Act. 4 14 Appeal 2016-003899 Application 13/485,484 (based from calculations derived from Masutani 5:37-47, 6:16—18). The Examiner reasons that it would have been obvious to provide Cheng, as modified by Maruko,3 “with a radial height of the protrusions within the claimed range, as taught by Masutani, to provide Cheng with a known substitute protrusion dimension.” Id. at 5. Appellant does not dispute that Masutani discloses the claimed range. Br. 13—15. Rather, Appellant repeats the arguments that Cheng and Maruko teach away from using the claimed range for the depressions (as modified by Maruko to be protrusions) of Cheng, Br. 13—14 (citing Cheng flf 11,20, 24— 26; Maruko 3:27-34). Specifically, Appellant concludes that “regardless of the teachings of Masutani, one of skill in the art would not be motivated to modify Cheng or Maruko with a shorter protrusion height on account of the express teaching away provided in both references.” Id. at 14. “Although a reference that teaches away is a significant factor to be considered in determining unobviousness, the nature of the teaching is highly relevant, and must be weighed in substance.” In re Gurley, 27 F.3d at 553. Also, “a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” Id. Further, the “mere disclosure of alternative designs does not teach away” and “just because better alternatives exist in 3 Although Appellant argues that “Cheng does not teach protrusions extending from the core” (Br. 13), the Examiner’s rejection addresses “Cheng, as modified by Maruko ... as discussed above” (Final Act. 4 (emphasis added)), wherein Cheng’s depressions are modified to be protrusions, in view of Maruko. 15 Appeal 2016-003899 Application 13/485,484 the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted), Masutani teaches that the protrusions serve the purpose of “achieving a soft feel, a low spin rate when hit with a small loft angle club, good flight performance, and good control when hit with an iron or sand wedge.” Masutani 1:45—51. Thus, notwithstanding Cheng’s criticism about golf balls having protrusion (or depressions) with heights (or depths) of less than 1.0 mm, the teachings of Masutani would have provided one of ordinary skill i n the art a reasonable expectation that golf balls having protrusions with heights in the claimed range would have an improved soft feel and low spin rate when hit with a small loft angle club, and an improved flight performance and control when hit with an iron or sand wedge. Accordingly, we sustain the Examiner’s rejection of claims 22, 27, and 33, under 35 U.S.C. § 103(a) as unpatentable, over Cheng, Maruko, and Masutani, Rejection III Appellant chose not to present separate arguments for the patentability of claim 31, which depends from independent claim 30. Therefore, for the reasons stated supra, we also sustain the Examiner’s rejection of claim 31, under 35 U.S.C, § 103(a), as unpatentable over Cheng, Maruko, Hamada, and Risen. 16 Appeal 2016-003899 Application 13/485,484 DECISION The Examiner’s decision to reject claims 1, 21—31, 33—35, and 37—39 under 35 U.S.C. § 103(a) 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)(l)(iv). AFFIRMED 17 Copy with citationCopy as parenthetical citation