Ex Parte Ohira

Board of Patent Appeals and Interferences

Dec 12, 2008

10662330 (B.P.A.I. Dec. 12, 2008)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI OHIRA
____________

Appeal 2008-4455
Application 10/662,330
Technology Center 1700
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Decided: December 12, 2008
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Before TERRY J. OWENS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal from the Examiner’s final rejection of
claims 1 and 3-6. Oral arguments were presented on November 06, 2008.
We have jurisdiction pursuant to 35 U.S.C. §§ 6 and 134.

Appeal 2008-4455
Application 10/662,330

STATEMENT OF THE CASE
Appellant’s invention is directed to a method of preparing a golf ball.
Claim 1 is illustrative and reproduced below:
1. A method for preparing a golf ball, comprising the steps of:

coating a layer of a primer composition comprising an aqueous resin
having UV-curable functional group in a molecule and a crosslinker on
the cover surface of a golf ball,

applying a UV-curable paint onto the layer, wherein the primer
composition layer is not irradiated with UV radiation prior to having the
UV-curable paint applied thereon, and

irradiating the layers with UV radiation, thereby permitting both of
the primer composition layer and the UV-curable paint to cure at the
same time.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Kaiya 4,145,501 Mar. 20, 1979
Setthachayanon 5,089,376 Feb. 18, 1992
Nealon 5,300,325 Apr. 5, 1994
Crast 6,165,564 Dec. 26, 2000
Hamada US 6,255,382 B1 Jul. 3, 2001
Lokai US 6,319,983 B1 Nov. 20, 2001
Jin US 2002/0016226 Feb. 7, 2002

Claims 1 and 3-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Crast in view of Jin, Lokai, and Nealon. Claim 4 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Crast in view
of Jin, Lokai, Nealon, and Setthachayanon.

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Application 10/662,330

ISSUE
Has Appellant identified reversible error in the Examiner’s
obviousness rejections by asserting that the Examiner has not substantiated
why one of ordinary skill in the art would have been led to the claimed
subject matter by Crast’s teachings taken in combination with the teachings
of the other applied references; that is, by modifying Crast’s method by: (1)
employing a UV curable aqueous resin as a primer composition in Crast’s
method; (2) causing such a primer composition to remain non-irradiated
with UV radiation before a UV curable paint is applied thereto; and (3)
applying UV radiation to both layers together so that the layers cure at the
same time as the appealed claims require?
SUMMARY DECISION
We answer this question in the affirmative. Thus, we reverse the
Examiner’s obviousness rejections.
PRINCIPALS OF LAW
Rejections based on § 103(a) must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention
from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). In this regard, “a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art.” KSR Int'l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1734 (2007). After all, “rejections 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.” In re Kahn,
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Application 10/662,330

441 F.3d 977, 988 (Fed. Cir. 2006). The analysis supporting obviousness
should be made explicit and should “identify a reason that would have
prompted a person of ordinary skill in the art to combine the elements” in
the manner claimed. See KSR, 127 S. Ct. at 1741.
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
FINDINGS OF FACT
We agree with the Examiner’s factual finding that:
Crast et al disclose a method for preparing a golf ball
having polyurethane top coating formed from UV-curable
coating (See column 8, lines 56-57) comprising applying the
UV-curable coating … to a primer/basecoat on an ionomeric
cover 16 of a golf ball 10 (See column 4, lines 11-17; column 7,
lines 18-19), and irradiating the substrate with ultraviolet
radiation in an inert gas environment for a sufficient amount of
time with optional aging to fully cure the golf ball (See
Abstract; See column 6, line 31 to column 7, line 15). The UV-
curable coating comprises polyether acrylates and urethane
acrylate oligomers (See column 4, lines 28-32).

Ans. 3
Moreover, we agree with the Examiner’s factual determination
that:
Crast et al fail to teach that: (i) a primer composition
comprises an aqueous resin having UV-curable functional
groups in a molecule and a crosslinker; [and] (ii) … the
aqueous primer layer and the UV-curable top coating are cured
at the same time (i.e. co-cured) with UV radiation.
Id.
Jin discloses a UV curable coating for a golf ball, including: (1) a UV-
reactive component, such as urethane acrylate oligomers; (2) polyfunctional
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Application 10/662,330

aziridine; and (3) a photo-initiator (¶¶ 0001, 0014, 0015, and 0024). The
coating includes greater than 90 percent solids so the coating can include
some solvent (Jin; ¶¶ 0036-0038). Jin teaches the coating is particularly
suitable for golf ball applications wherein the golf ball includes an ionomer
resin layer as a cover because the coating has good adherence to such a resin
cover (¶¶ 0039-0041). Jin discloses that a reactive diluent system can be
employed in combination with the UV-curable oligomer (¶¶ 0030-0032).
Lokai discloses the formation of non-dispersing (meth)acrylic esters
containing urethane groups and the use thereof in forming radiation-curable
coating compositions (Abstract, col. 1, ll. 8-12, col. 7, l. 57–col. 8, l.2).
Nealon discloses a golf ball including an ionomer cover and a
polyurethane top coat wherein a water-borne acrylic resin or polyurethane
resin dispersion, including polyfunctional azirdine cross-linking agent, is
employed as a primer to improve adhesion (Abstract, col. 1, l. 50- col. 2, l.
68). Nealon discloses that the primer and top coat can be thermally co-cured
(col. 4, ll. 45-54). Nealon teaches that the primer can be thermally cured
prior to the top coat application and subsequent co-curing step (id.).
Setthachayanon discloses a UV sensitive solder mask coating
composition containing a carboxyl moiety that renders a urethane
(meth)acrylate polymer coating composition soluble or swellable in aqueous
alkali solutions (col. 3, ll. 20-38).
ANALYSIS
As the Examiner acknowledges, Crast does not disclose a golf ball
coating method wherein an aqueous resin UV-curable primer, including a
cross-linker, is employed underneath a subsequently applied UV-curable
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paint coating, and wherein the paint coating and primer are irradiated with
UV radiation for curing at the same time, as Appellant’s claims require
(Ans. 3; see the factual finding above).
While Jin discloses a UV-curable coating for a golf ball, the
Examiner has not established that Jin teaches that the coating thereof is
useful as a primer, much less a primer in aqueous solution for a UV-curable
paint that is co-cured therewith with UV radiation (Compare Ans. 4 with
App. Br. 12). In this regard, the Examiner’s reliance on the coating of Lokai
to further reformulate the coating of Jin as a primer coating further
attenuates the proposed rejection rather than proffering a rational basis for
the proposed modifications predicated on the teachings of the applied
references. Also, the Examiner’s factual basis and reasoning for the
proposed modification of the method of Crast is not advanced in the
direction of the claimed subject matter based on the teachings of Nealon
with respect to thermal curing of a primer and topcoat (Ans. 10-11; Nealon;
col. 4, ll. 45-54; App. Br. 10 and 15; Reply Br. 5-7).
In making the assertions set forth in the Answer, the Examiner has
seemingly taken at least some of the applied references’ disclosures out of
context without providing persuasive reasoning to support the contention
that the combination thereof would have led one of ordinary skill in the art
to the here claimed subject matter without the benefit of Appellant’s
disclosure. In other words, the Examiner’s basis for the rejection falls short
of identifying a persuasive rationale that would have led an ordinarily skilled
artisan to combine selected features from each reference in a way that would
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have resulted in a method corresponding to the claimed method. See KSR,
127 S. Ct. at 1741.
The Examiner’s second stated obviousness rejection of claim 4 fares
no better in that the Examiner has not established how Setthachayanon, as
further relied upon by the Examiner in the separate rejection of dependent
claim 4, would have cured the aforementioned deficiencies with respect to
the Examiner’s reliance on the four reference combination in rejecting the
independent claim (claim 1) from which claim 4 depends (App Br. 18).
As we noted above, the Examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). In this case, this initial burden was not met for
either of the stated obviousness rejections.
CONCLUSION
Appellant has identified reversible error in the Examiner’s
obviousness rejections by asserting that the Examiner has not presented a
prima facie case of obviousness. This is because the Examiner has not
substantiated why one of ordinary skill in the art would have been led to the
claimed subject matter by Crast’s teachings taken in combination with the
teachings of the other applied references; that is, by modifying Crast’s
method by: (1) employing a UV curable aqueous resin as a primer
composition in Crast’s method; (2) causing such a primer composition to
remain non-irradiated with UV radiation before a UV curable paint is
applied thereto; and (3) applying UV radiation to both layers together so that
the layers cure at the same time as all of the appealed claims require.

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Appeal 2008-4455
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ORDER
The decision of the Examiner to reject claims 1 and 3-6 under 35
U.S.C. § 103(a) as being unpatentable over Crast in view of Jin, Lokai, and
Nealon; and to reject claim 4 under 35 U.S.C. § 103(a) as being unpatentable
over Crast in view of Jin, Lokai, Nealon, and Setthachayanon is reversed.

REVERSED

PL Initial:
sld

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