Ex Parte SAJIMA et al

Patent Trial and Appeal Board

Sep 21, 2018

13871096 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/871,096 04/26/2013
127226 7590 09/25/2018
BIRCH, STEW ART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
Takahiro SAJIMA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3673-0469PUS 1 3664
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKAHIRO SAJIMA and HIDETAKA INOUE
Appeal2017-009058
Application 13/871,096 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-3 and 21-28. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is DUNLOP
SPORTS CO. LTD. Br. 1.
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Application 13/871,096
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 25 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A golf ball comprising a core, an inner cover positioned
outside the core, and an outer cover positioned outside the inner
cover, wherein
the core comprises a center and an envelope layer
positioned outside the center,
the center is formed by a rubber composition being
crosslinked,
the envelope layer is formed by a rubber composition
being crosslinked,
the rubber composition of the envelope layer includes:
(a) a base rubber;
(b) a co-crosslinking agent;
( c) a crosslinking initiator; and
( d) an acid and/ or a salt,
the co-crosslinking agent (b) is:
(b 1) an a,B-unsaturated carboxylic acid having 3 to
8 carbon atoms; or
(b2) a metal salt of an a,B-unsaturated carboxylic
acid having 3 to 8 carbon atoms,
a JIS-C hardness Hi of the inner cover is greater than a JIS-
C hardness Hs at an outer surface of the envelope layer of the
core, and
a JIS-C hardness Ho of the outer cover is less than the
hardness Hi;
the acid and/or the salt (d) is an aromatic carboxylic acid
and/or a salt thereof;
the acid and/or the salt (d) is not an a,B-unsaturated
carboxylic acid having 3 to 8 carbon atoms and/or a metal salt
thereof;
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Application 13/871,096
wherein an amount of the aromatic carboxylic acid and/or
the salt thereof is equal to or greater than 1.0 parts by weight but
equal to or less than 5.0 parts by weight per 100 parts by weight
of the base rubber (a);
a difference (Hs-H(O)) between the JIS-C hardness Hs at
the surface of the core and a JIS-C hardness H(O) at the central
point of the core is equal to or greater than 15 but equal to or less
than 50; and
when JIS-C hardnesses are measured at 13 measuring
points from the central point of the core to the surface of the core,
wherein the distances from the central point of the core to the
measuring points are O. 0 mm, 2. 5 mm, 5. 0 mm, 7. 0 mm, 7. 5 mm,
8. 0 mm, 9. 5 mm, 10. 0 mm, 10. 5 mm, 12. 5 mm, 15. 0 mm, 1 7. 5
mm, and the surface, and the JIS-C hardnesses measured at 6
measuring points included in the envelope layer and distances
(mm) from the central point of the core to the 6 measuring points
are plotted on a graph, R2 of a linear approximation curve
obtained by a least-square method is equal to or greater than 0.95.
Rejections
I. Claims 1-3 and 21-24 stand rejected under (pre-AIA)
35 U.S.C. § I03(a) as unpatentable over Kasashima2, Reiter3, Comeau4, and
Watanabe5.
II. Claims 25-28 stand rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Kasashima, Reiter, and Watanabe.
2 Kasashima et al. (US 2007 /0259739 Al, published Nov. 8, 2007)
("Kasashima").
3 Reiter (US 4,688,801, issued Aug. 25, 1987).
4 Comeau et al. (US 2011/0053709 Al, published Mar. 3, 2011)
("Comeau").
5 Watanabe (US 2010/0298067 Al, published Nov. 25, 2010).
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ANALYSIS
Rejection I
The Appellants identify three features of claim 1 and assert that these
features are not disclosed by the cited prior art references and "one of
ordinary skill in the art would have no proper reason, rationale, or
motivation to modify the cited references in order to arrive at the claimed
invention." Br. 9. The Appellants identify these features as:
Id.
(i) the rubber composition including the acid and/or the
salt (d) forms a linear hardness distribution (R2 > 0. 95) in the
envelope layer;
(ii) the acid and/or the salt ( d) increases a difference (Hs-
H(O)) between a JIS-C hardness H(O) at the central point of the
core and a JIS-C hardness Hs at the surface of the core; and
(iii) by having an envelope layer containing the rubber
composition including the acid and/or the salt (d), the spin of the
golf ball is suppressed, and the flight distance is increased upon
a shot with a driver.
As for feature (i), the Appellants acknowledge that the Examiner's
rejection relies on Watanabe to cure the deficiencies of Kasashima as
modified by the teachings of Reiter and Comeau. See id. The Appellants
assert that the hardness gradient of Watanabe's golf ball is specific to
Watanabe's golf ball and cannot be simply applied to Kasashima's golf ball
as modified. See id. at 9-10. The Appellants also assert that Watanabe
teaches "the desired linear hardness gradient may not be achieved when
sulfur is included in the composition" and Kasashima "recites that
organosulfur compounds can be included in the rubber composition." Id. at
10 ( citing Watanabe ,r 44, Kasashima ,r 3 6).
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In response, the Examiner explains that Watanabe teaches "that
excessive amounts of sulfur should be avoided," but "does not rule out the
inclusion of sulfur." Ans. 3. We agree.
Watanabe discloses an example material for the core of its golf ball.
Watanabe ,r 44. The example material includes an organosulfur compound.
Id. ("For example, the core may be formed of a rubber composition
containing, in addition to the rubber component, a co-crosslinking agent, an
organic peroxide, an inert filler, an organosulfur compound and the like.").
Later in paragraph 44, Watanabe discloses:
Also, in the core composition, although the outcome will vary
also with the type of composition and the vulcanization
conditions, when sulfur, for example, is included, there is a
possibility that, during rubber vulcanization, the region near the
center of the core will end up being soft, as a result of which the
desired linear hardness gradient may not be achieved.
Watanabe clearly teaches that sulfur may be a material in the golf ball's core
and that a skilled artisan should keep in mind that the inclusion of sulfur has
an impact on linear hardness. This teaching is not a suggestion that the golf
ball core should never include sulfur. As such, we determine that the
Appellants' position is unpersuasive.
As for feature (ii), the Appellants do not explain how combined
teachings of the cited references fail to teach feature (ii). As such, we
determine that the Appellants' position is unpersuasive.
As for feature (iii), the Appellants assert that this feature has "an
unexpectedly superior result of the claimed invention that would not be
predicted by the cited references." Br. 10. Here, the Appellants
"respectfully submit[] that the evidence of unexpected results ... (i.e., the
spin of the golf ball is suppressed and the flight distance is increased) would
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rebut any alleged prim a facie case of obviousness." Id. at 11. The
Appellants support this position by citing to Tables I-10 - I-13 from the
Specification at pages 127-130. Id. at 9-11. Tables I-10-I-13 concern the
results of hitting golf balls-specifically, examples I-1 to I-16 and
Comparative Examples I-1 to I-6 - with a driver at a head speed of 40
m/sec ("W# 1 "). See Spec. 117-130.
In response, the Examiner determines "[i]t is to be expected that
varying the selection of component ( d) among the examples disclosed by the
prior art, will cause some difference in the performance of the ball but, in
this case, the differences are not so large as to be considered unpredictable."
Ans. 3--4. The Examiner also determines "that the [test] data does not
support a finding that unexpected superior results are attributable to the
claimed features." Id. at 3.
We note that the burden of showing unexpected results rests on the
person who asserts them by establishing that the difference between the
claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In this case, the
burden rests with the Appellants. Although the Appellants cite to
Tables I-10 - I-13 to support the position that the results were unexpected,
they fail to point out any example( s) in Tables I-10 - I-13 that would be
considered the closest prior art and offer a comparison with an example that
embodies the claimed invention. See In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art."). Additionally, the Appellants do not explain the
basis for determining that a person having ordinary skill in the art would
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have considered the results as set forth in the Tables in the Specification to
be unexpected. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). As
such, we determine that the Appellants' position is unpersuasive.
The Appellants comment that a rejection under obviousness grounds
needs to be supported by a rationale. See Br. 10-11 ( citing Manual of Patent
Examining Procedure (MPEP) § 2143; KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398 (2007)). The Appellants argue each of the rationales listed in the
MPEP would fail to be adequately supported because "at least one finding of
each rationale cannot be made, none of these rationales can be used to
support a conclusion that the claim would have been obvious to one of
ordinary skill in the art. Any other suggested rationale would fail for similar
reasons given above." The Appellants' position fails to persuasively explain
error in the Examiner's rejection, i.e., which finding(s) are not adequately
supported.
Thus, we sustain the Examiner's rejection of claims 1-3 and 21-24 as
unpatentable over Kasashima, Reiter, Comeau, and Watanabe.
Rejection II
The Appellants' arguments for the rejection of independent claim 25
are nearly identical to those discussed above with regard to the rejection of
independent claim 1 (i.e., Rejection I). See Br. 12-16. For reasons similar
to those discussed above, we determine that the Appellants' arguments are
not persuasive.
Thus, we sustain the Examiner's rejection of claims 25-28 as
unpatentable over Kasashima, Reiter, and Watanabe.
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3 and 21-
28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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