Ex Parte Ohira

Board of Patent Appeals and Interferences

Jan 24, 2011

11318536 (B.P.A.I. Jan. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKASHI OHIRA
____________

Appeal 2010-003472
Application 11/318,536
Technology Center 1700
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Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-003472
Application 11/318,536
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 5-8, and 10-18. Claim 9 has been
withdrawn from consideration. We have jurisdiction pursuant to 35 U.S.C. §
6. Oral arguments were presented on January 11, 2011.
Appellant’s claimed invention is directed to a method of preparing a
golf ball with surface indicia having metallic luster. An adhesive indicia
comprising a thermoplastic material is formed on a golf ball surface via
thermal transfer printing, a metal thin-film on a bearing film is bonded over
the indicia using pressure or heat and pressure; then, the bearing film is
peeled off the metal thin-film leaving a metal thin-film having the shape of
the indicia adhered to and laminated with the indicia located on the golf ball
surface (Spec. para. 0006, 0010, 0012, and 0014).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
1. A method for preparing a golf ball with surface indicia
having metallic luster, comprising:
forming an adhesive indicia made of a thermoplastic resin on a golf
ball surface by thermal transfer printing,
bonding a metal thin-film on a metal thin film-bearing film over the
indicia under pressure or heat and pressure, and
then peeling off the film so as to leave a portion of the metal thin-film
having the same shape as the indicia adhering to and laminated with the
indicia.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Keller 6,855,073 B1 Feb. 15, 2005
Shimizu 2003/0102204 A1 Jun. 5, 2003
Budd 2003/0193718 A1 Oct. 16, 2006
Isogawa 6,540,624 B1 Apr. 1, 2003
Kametani 2001/0003716 A1 Jun. 14, 2001
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Appeal 2010-003472
Application 11/318,536

Calhoun 5,344,681 Sep. 6, 1994
Yamaguchi 5,878,670 Mar. 9, 1999

The Examiner maintains the following grounds of rejection:
Claims 1, 2, 5, 6, 10, 11, 12, 13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Keller in view of Shimizu2 and Budd.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Keller in view of Shimizu, Budd and Isogawa. Claim 14
stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Keller
in view of Shimizu, Budd, and Kametani. Claim 16 stands rejected under 35
U.S.C. § 103(a) as being unpatentable over Keller in view of Shimizu, Budd,
and Calhoun. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keller in view of Shimizu, Budd, and Yamaguchi.
We reverse the stated rejections. In this regard, Appellant’s argument
indicates that the Examiner has not discharged the burden of presenting a
sustainable prima facie case of obviousness.
Concerning the first stated obviousness rejection, the Examiner relies
on the combined teachings of Keller, Shimizu and Budd in asserting the
obviousness of providing a golf ball surface with indicia having metallic
luster as claimed. Of the three applied references, only Keller is directed to
providing indicia on a golf ball surface. However, the Examiner
acknowledges that Keller does not disclose a method wherein a metal film is
bonded over pre-applied adhesive indicia located on a golf ball surface as
required by rejected independent claim 1 and, consequently, by all of the
appealed claims.

2 The Examiner misspells Shimizu as Shimuzu in the Examiner’s Answer.
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Application 11/318,536
As the Examiner notes, the foil transfer process of Keller does not
transfer foil “onto adhesive indicia already disposed on the surface of a golf
ball” as required by the appealed claims (Ans. 4; Keller, col. 7, ll. 48-54).
The Examiner turns to Shimizu and Budd to allegedly provide teachings that
would have led one of ordinary skill in the art to significantly modify the
golf ball surface marking method of Keller in a manner that would have
allegedly resulted in a method that corresponds to at least Appellant’s
independent claim 1 method (Ans. 4).
Shimizu is directed to a key top and a method of manufacturing a key
top for a push button switch of communications devices, such as a remote
controller or mobile telephone (para. 0002). Shimizu teaches that a display
portion of a resin key top can have decorative metal-like luster added to it by
(1) forming a hot melt adhesive layer on the key top in a shape
corresponding to a display portion; and (2) transferring a metallic thin-film
layer onto the hot melt adhesive layer (para. 0012). Shimizu reports that the
disclosed method has production advantages and avoids damage to the
metallic thin-film layer that may occur in prior key top decoration methods
where a hot melt adhesive is coated on a thin-film prior to application of the
thin-film together with the adhesive to the key top (para. 0013). Shimizu
teaches that the hot melt adhesive can be, among other things, a polyolefin
based resin and can be applied on the resin key top using a screen printing,
pad coating or spray coating method (para. 0054).
Budd is directed to retrochromic articles that have first and second
retroreflective regions that are viewable wherein at least one of those regions
includes plural retrochromatic beads (abstract, para. 0006). Budd discloses
there are a variety of ways to form a retrochromatic pattern and teaches that
a hot melt adhesive can be applied to partially exposed retroreflective beads
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Appeal 2010-003472
Application 11/318,536
carried by a film via thermal transfer printing, screen printing or ink jet
printing (para 0054).
The Examiner contends that it would have been obvious to one of
ordinary skill in the art to modify the golf ball indicia forming method of
Keller by using the disparate communication device key top decoration
method of Shimizu while choosing a thermoplastic material as the hot melt
adhesive. In using this disclosed key top application method as the method
of forming indicia on the golf ball of Keller, the Examiner asserts there
would be an expectation of obtaining the advantages that Keller teaches for
using such a method decorating key tops of electronic devices for forming
indicia on a golf ball surface (Ans. 4).
The Examiner recognizes that, even if found obvious, the above-
discussed proposed modification would not result in a method corresponding
to Appellant’s method because sole independent claim 1 further requires
thermal transfer printing as part of the method of applying the adhesive
indicia to a golf ball surface. This is because Shimizu has not been shown to
teach a thermal transfer printing method for applying adhesive to a resin key
top. Thus, the Examiner further turns to Budd.
The Examiner asserts that Budd shows thermal transfer printing as an
alternative to screen printing for transferring hot melt adhesive to a dimpled
surface and that it would have been obvious to use such a technique in
Shimizu for a key top and consequently as an alternative indicia application
method in Keller for a golf ball surface (Ans. 4; Budd, para. 0054). In this
regard, the Examiner notes Shimizu discloses screen printing for applying
hot melt adhesive decorative shapes to a key top.
However, the Examiner’s proposed modifications of Keller’s golf ball
surface indicia forming method based on the remote disclosures of Shimizu
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Application 11/318,536
and Budd taken together therewith has not been supported by a sustainable
rationale including a reasonable expectation of success given the large
differences in the subject matter and focus of the applied references’
teachings. In this regard, the Examiner has not established that Shimizu and
Budd are drawn to a method of placing indicia on an object surface similar
to a golf ball surface and/or to an object that would be expected to receive
impact forces that are similar to forces that a golf ball is subjected to during
use (Ans. 4; App. Br. 7-9). Nor has the Examiner established that Budd’s
adhesive layer application to partially embedded retrochromatic beads would
have been regarded by one of ordinary skill in the relevant art to be
generally directed to adhesive indicia application, much more instructive as
to how adhesive indicia should be applied to a golf ball surface (Ans. 4;
Budd, para. 0054).
Moreover, the Examiner has not proved that the partially embedded
beads of Budd are remotely similar to the dimples on a golf ball surface by
referring to sections of Budd describing retrochromatic micropatterns and
surface features of a substrate including the beads (Ans. 9; Reply Br. 3-5).
Hence, the Examiner has not established that an ordinarily skilled artisan
would have been readily led by the combined teachings of the applied
references to employ the Examiner’s proposed modification of Keller’s golf
ball surface indicia formation method with a reasonable expectation of
success in so doing.
Thus, the Examiner has not carried the burden of establishing that the
proposed modification of the foil transfer method of Keller in light of the
combined teaching of Keller, Shimizu and Budd would have resulted in
arrival at the claimed subject matter by one of ordinary skill in the art with a
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Application 11/318,536
reasonable expectation of success in so doing for reasons indicated by
Appellant (App. Br. 6-9; Reply Br. 3-5).
Consequently and on this record, the Examiner’s first stated rejection
is not sustainable.
The Examiner does not explain how the additional references relied
upon in the other stated obviousness rejections pertaining to several of the
dependent claims remedy the aforementioned deficiencies of the case for
obviousness presented in the first stated rejection. Therefore, we reverse all
of the Examiner’s maintained obviousness rejections.

ORDER
The Examiner’s decision to reject claims 1, 2, 5, 6, 10, 11, 12, 13, and
15 under 35 U.S.C. § 103(a) as being unpatentable over Keller in view of
Shimizu and Budd; to reject claims 7 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Keller in view of Shimizu, Budd and Isogawa; to
reject claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Keller
in view of Shimizu, Budd, and Kametani; to reject claim 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Keller in view of Shimizu, Budd, and
Calhoun; and to reject claims 17 and 18 under 35 U.S.C. § 103(a) as being
unpatentable over Keller in view of Shimizu, Budd, and Yamaguchi is
reversed.

REVERSED
tc

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