Ex Parte Molinari et al

Patent Trial and Appeal Board

Aug 18, 2017

13720350 (P.T.A.B. Aug. 18, 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.
13/720,350 12/19/2012 Arthur Molinari 11-1282US83/201882-362307 6163
126323 7590 08/22/2017
Honigman Miller Schwartz and Cohn LLP/Nike
350 West Michigan Avenue, Suite 330
Kalamazoo, MI 49007
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
Patents@honigman.com
nike_docketing @ cardinal-ip. com
araymond @honigman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARTHUR MOLINARI and
THOMAS J. KENNEDY III
Appeal 2016-005251
Application 13/720,3501
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 21, 23, and 25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, the invention relates “to golf balls having
indicia printed under a topcoat.” Spec. 12. We reproduce claim 21, below,
as illustrative of the claims on appeal.
1 According to Appellants, the “real party in interest is NIKE, Inc.” Appeal
Br. 1.
Appeal 2016-005251
Application 13/720,350
21. A method of making a golf ball, comprising:
forming a golf ball having one or more structural layers;
applying indicia on the golf ball; and
applying a top coating over the entire ball, including on
the indicia,
wherein the indicia and the top coating are formulated to prevent
alteration of the indicia by printing the indicia with a sublimation
dye ink that is insoluble in water and applying a waterborne top
coating.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 21, 23, and 25 under 35 U.S.C. § 103(a)
as unpatentable over Proudfit (US 5,542,680, iss. Aug. 6, 1996), Kennedy
(US 7,048,651 B2, iss. May 23, 2006), and Spurgeon
(US 2002/0039928 Al, pub. Apr. 4, 2002).
The Examiner provisionally rejects claims 21, 23, and 25 on the
ground of nonstatutory double patenting over claim 1—27 of copending
application no. 13/335,5702.
ANALYSIS
Obviousness Rejection
Based on our review of the record, including the Examiner’s Final
Office Action and Answer, and Appellants’ Appeal Brief and Reply Brief, for
the reasons discussed below, Appellants do not persuade us that the
Examiner’s obviousness rejection is in error. Thus, we sustain the rejection
of claims 21, 23, and 25.
2 Now US 9,403,064 B2, iss. Aug. 2, 2016.
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Application 13/720,350
Initially, we note that claims 21, 23, and 25 are argued together as a
group. Appeal Br. 3-4. We select independent claim 21 as representative,
and dependent claims 23 and 25 stand or fall with the independent claim.
See 37 C.F.R. § 41.37(c)(l)(iv).
With respect to claim 21, the Examiner finds (1) that Proudfit teaches
a layered golf ball, printing of indicia on the surface of the golf ball with ink,
and the application of a water-soluble top coat over the indicia, (2) that
Kennedy discloses the use of a non-water-soluble ink for the indicia, and (3)
that Spurgeon discloses the use of sublimation ink printing for indicia on a
ball. Answer 2—A. The Examiner determines that it would have been
obvious to combine the references to print the indicia with a sublimation dye
ink that is insoluble in water, and to apply a waterborne top coating, thereby
providing the indicia and the top coating in such a way as to prevent
alteration of the indicia, as recited in claim 21. Id. More specifically, the
Examiner determines that
it would have been obvious ... to modify Proudfit to make the
indicia and the top coating formulated to prevent alteration of the
indicia by the application of the top coating by using an ink that
is insoluble in water[,] as taught and suggested by Kennedy[,]
because doing so would be obvious to try choosing from a finite
number of identified, predictable solutions (using either a
waterborne or solvent based indicia[,] and using either a
waterborne or solvent based top coat) with a reasonable
expectation of success (using either waterborne or solvent based
indicia in combination with either a waterborne or solvent based
top coat in order to protect the indicia—see Kennedy: col. 5,
lines 56[—]57),
(id. at 3), and determines that
it would have been obvious ... to modify the combined Proudfit
and Kennedy to make the indicia formed from sublimation dye
ink[,] as taught by Spurgeon[,] because doing so would be use of
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Application 13/720,350
known technique (using a sublimation dye on a transfer sheet to
place a logo on sporting goods equipment) to improve a similar
product (a golf ball made using a transfer medium) in the same
way (using a sublimation dye on a transfer sheet to print a logo
on a golf ball to obtain a high quality and durable logo—see
Spurgeon: par. [0016])
(id. at 4).
Appellants argue that it would not have been obvious to combine the
references as proposed by the Examiner, because none of the cited
references “understand^] how to solve the problem of alteration of the
printed logo[,] but instead relied on inspection [in Proudfit] to find and
remove defective golf balls.” Reply Br. 2—3; see also Appeal Br. 3. More
specifically, Appellants argue that the “prior art did not appreciate that the
problem with indicia alteration arose from solubility of the ink in the top
coat.” Reply Br. 2. We are not persuaded by Appellants’ argument,
however.
It is not necessary for the prior art to serve the same purpose as that
disclosed in Appellants’ Specification in order to support the conclusion that
the claimed subject matter would have been obvious. See In re Linter, 458
F.2d 1013, 1016 (CCPA 1972); see also KSRInt’l Co., 550 U.S. 398, 419
(2007) (“[N]either the particular motivation nor the avowed purpose of the
[Appellants] controls” in an obviousness analysis.) Therefore, the prior art
need not recognize or solve the same problem as the claimed invention.
In addition, we do not agree with Appellants that the use of inspection
in Proudfit indicates that the problem of interaction between the indicia ink
and top coat remains unsolved in Proudfit. See Appeal Br. 3. One may
conduct inspections for various reasons, and conducting inspections does not
imply the existence of any particular problem, solved or unsolved.
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Application 13/720,350
Appellants also argue
the Examiner used the Appellants] ’ disclosure of the solution to
artificially limit the “identified, predictable potential solutions”
in hindsight to four (see bottom of page 8), but these four do not
include what the claimed invention [is]. Even if the person of
ordinary skill in the art recognized the Examiner’s combinations
as predictable solutions, and tried them all, none is the claimed
invention. Neither Kennedy nor Spurgeon teaches using a
sublimation dye ink that is insoluble in water.
Reply Br. 3; see also Appeal Br. 4 (“each of the combinations is not a
solution to the problem.”) We are not persuaded by this argument, however.
Although no single reference discloses water-insoluble sublimation
ink, the rejection is based on a combination of references. See, e.g., Final
Action 3. It is well established that non-obviousness cannot be established
by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Specifically, as discussed above, the Examiner found that Proudfit
discloses the use of a water-soluble top coat, as claimed (Answer 2), that
Kennedy discloses the use of water-insoluble indicia ink (id. at 3), and
Spurgeon discloses uses the indicia ink for sublimation printing on sporting
goods (id. at 3—4). The Examiner further determined that it would have been
obvious to combine the references to provide a water-soluble top coat over a
non-water-soluble sublimation ink, as claimed. Id.
Additionally, we agree with the Examiner that the use of either water-
soluble or non-water-soluble ink and coatings for the indicia and top coat
leaves open four general possibilities: both top coat and indicia ink are
either water-soluble or non-water-soluble, or either one of the top coat or
indicia ink is water-soluble, and the other one is non-water-soluble.
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Application 13/720,350
Answer 8. We also agree with the Examiner that having just four
combinations of water-soluble and non-water-soluble leaves a limited
number of options, and the Examiner establishes adequately that would be
obvious to try the various combinations. Id. at 7—9. See KSR Int 7 Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007) (“When . . . there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was obvious under
§ 103.”).
Thus, based on the foregoing, Appellants do not persuade us that the
Examiner’s rejection of independent claim 21 is in error. Therefore, we
sustain the obviousness rejection of claim 21. Further, we also sustain the
obviousness rejection of dependent claims 23 and 25.
Double Patenting Rejection
Appellants do not argue against the double patenting rejection of
claims 21, 23, and 25. Thus, we summarily affirm the double patenting
rejection.
DECISION
We AFFIRM the Examiner’s obviousness rejection of claims 21, 23,
and 25.
We summarily AFFIRM the Examiner’s nonstatutory obviousness-
type double patenting rejection of claims 21, 23, and 25.
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Appeal 2016-005251
Application 13/720,350
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
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