Ex Parte OhamaDownload PDFPatent Trial and Appeal BoardSep 18, 201312219509 (P.T.A.B. Sep. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KEIJI OHAMA ____________________ Appeal 2011-011856 Application 12/219,509 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, NEIL T. POWELL, and BEVERLY M. BUNTING, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011856 Application 12/219,509 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 5 and 7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is the sole independent claim appealed, and is illustrative of the appealed subject matter. 1. A golf ball which comprises a core and a cover positioned outside the core, the core having a center and a mid layer positioned outside the center, wherein the resilience coefficient Ec of the center, the resilience coefficient Em of the core and the resilience coefficient Eb of the golf ball satisfy the following formula (5): Ec>Eb>Em (5). REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Boehm US 2006/0189413 A1 Aug. 24, 2006 REJECTION Appellant seeks our review of the following rejection. 1. Claims 1-5 and 7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Boehm. Appeal 2011-011856 Application 12/219,509 3 ANALYSIS Boehm discloses wide, overlapping ranges of values for the COR (coefficient of restitution) of various portions of a golf ball according to its disclosure. See, e.g., Boehm, paras. [0014], [0030]. The Examiner finds that one particular combination of the values within the disclosed ranges satisfies the claim 1 limitation that “the resilience coefficient Ec of the center, the resilience coefficient Em of the core and the resilience coefficient Eb of the golf ball satisfy the following formula (5): Ec > Eb > Em.”1 Ans. 3. Appellant contends the Examiner erred because Boehm does not suggest arbitrarily using any values within the disclosed ranges but discloses a particular relationship between the COR values of various portions of a ball according to its disclosure. App. Br. 10-11. Specifically, Appellant argues, Boehm “discloses that the COR of each assembly is greater than the next larger subassembly toward the cover.” Id. at 10 (citing Boehm, para. [0027]). Therefore, Appellant suggests, Boehm requires the relationship “CORC > CORC1 > CORC2 > … > CORBall,” i.e., a relationship where the ball has a lower COR value than the core of the ball or any of the subassemblies composing the core of the ball. App. Br. 10. Accordingly, in the terms of claim 1, Appellant argues that Boehm discloses at most Ec > Em > Eb, but does not suggest the claim limitation “Ec > Eb > Em.” Id. In response, the Examiner cites case law for the proposition that a prior art reference can provide support for a conclusion of obviousness of inventions not directly tied to the problem and invention discussed in the 1 The Examiner and Appellant appear to treat the term “coefficient of restitution” used in Boehm and the term “resilience coefficient” used in claim 1 as interchangeable. See Ans. 3-5; App. Br. 9-11. Appeal 2011-011856 Application 12/219,509 4 prior art reference. Ans. 5 (citing In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983)). In connection with this, the Examiner asserts that “Boehm clearly provides ranges that meet the limitation of Appellant’s claimed formula: Ecore > Eball > Emid.” Ans. 5. The Examiner then indicates that the rejection properly relies on Boehm because “Boehm reasonably suggests Appellant’s claimed formula with the ranges of the COR values disclosed in paragraphs [0014, 0030].” Ans. 5 (citing Merck & Co. v. Biocraft Labs., 874 F.2d 804 (Fed. Cir. 1989)). The Examiner does not identify any reason that a person of ordinary skill in the art would think Boehm suggests any exception to the disclosed relationship between the COR values of various portions of a ball according to its disclosure. Absent such an exception, Boehm appears to suggest using COR values from the disclosed ranges only in combinations that would adhere to the disclosed relationship of progressively decreasing COR values from the center of the ball outward. See, e.g., Boehm, paras. [0026], [0027]; see also App. Br. 10-11. Consistent with Appellant’s argument, this relationship would appear to always result in a COR value of the ball (i.e., Eb) lower than the COR value of the ball’s core (i.e., Em). See App. Br. 10- 11. As Appellant notes, this would not satisfy the claimed relationship Eb > Em. See id. Accordingly, we do not believe the Examiner has supported by a preponderance of the evidence the contention that “Boehm reasonably suggests Appellant’s claimed formula with the ranges of the COR values disclosed in paragraphs [0014, 0030].” Ans. 5. Additionally, the Examiner does not explain why the claimed invention would have been obvious in view of Boehm even though Boehm does not appear to suggest it. Without some further reasoning or evidence to Appeal 2011-011856 Application 12/219,509 5 provide rational underpinning, we do not believe the Examiner has supported a conclusion of obviousness by merely noting that the relevance of a prior art reference can extend beyond the problem and invention it discloses. See Ans. 5 (citing Heck, 699 F.2d at 1332-33); KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 418 (2007) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (Internal citation and quotations omitted). Accordingly, we do not sustain the rejection of independent claim 1 or of claims 5-7 depending therefrom. DECISION We reverse the Examiner’s decision rejecting claims 1-5 and 7. REVERSED hh Copy with citationCopy as parenthetical citation