Ex Parte Shindo et alDownload PDFPatent Trial and Appeal BoardNov 27, 201713592601 (P.T.A.B. Nov. 27, 2017) Copy Citation 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. 13/592,601 08/23/2012 Ayaka SHINDO 5867-0166PUS1 1012 127226 7590 11/29/2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 11/29/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AYAKA SHINDO, CHIEMI MIKURA, SHUN KURIHARA, and KAZUHISA FUSHIHARA Appeal 2016-004071 Application 13/592,601 Technology Center 3700 Before: STEVEN D.A. MCCARTHY, CHARLES N. GREENHUT, and GORDON D. KINDER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 4, 7, 8, 10, 12, 15, 16, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2016-004071 Application 13/592,601 CLAIMED SUBJECT MATTER The claims are directed to a golf ball. Claim 1, the sole independent claim, is reproduced below, with emphasis added: 1. A golf ball having a spherical core and at least one cover layer covering the spherical core, wherein the spherical core is formed from a rubber composition comprising: (a) a base rubber, (b) an a,[3-unsaturated carboxylic acid having 3 to 8 carbon atoms and/or a metal salt thereof as a co-crosslinking agent, (c) a crosslinking initiator, (d) a carboxylic acid having 1 to 30 carbon atoms and/or a salt thereof in a content ranging from 0.1 part by mass to 40.0 parts by mass with respect to 100 parts by mass of the base rubber, said carboxylic acid excluding an a,[3-unsaturated carboxylic acid having 3 to 8 carbon atoms or a metal salt thereof, and (f) an organic sulfur compound in a content ranging from 0.05 parts to 5 parts by mass with respect to 100 parts by mass of the base rubber, provided that the rubber composition further contains (e) a metal compound if only an a, [3-un saturated carboxylic acid having 3 to 8 carbon atoms is present as the co crosslinking agent, wherein the spherical core exhibits a difference in infrared absorbance measured at a surface thereof and measured at a center thereof of 0.024 or more, with respect to an absorption peak appearing at 1560 ±30 cm'1 when measuring the spherical core with a Fourier transform infrared spectrophotometer, the spherical core has a hardness difference ranging from 18 to 60 in JIS-C hardness between a surface hardness and a center hardness thereof, and if JIS-C hardness values are measured at nine points obtained by dividing a radius of the spherical core into equal parts having 12.5% intervals therebetween so as to include the center and the surface, and the hardness values are plotted on a graph against distance (%) including the core center and core surface, then R2 of a linear approximation curve obtained from the least square method is 0.95 or higher. 2 Appeal 2016-004071 Application 13/592,601 REJECTIONS Claims 1, 2, 4, 10, 12, and 22-25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nanba (US 2006/0128900 Al, issued June 15, 2006), Higuchi, (US 2007/0129174 Al, published June 7, 2007 (hereinafter “Higuchi ’174”)), and Watanabe, (US 2010/0298067 Al, published Nov. 25, 2010). Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nanba, Higuchi ’174, Watanabe, and Terence (US 4,844,471, issued July 4, 1989). Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nanba, Higuchi ’174, Watanabe, Terence, and Fujisawa (US 2004/0110906 Al, published June 10, 2004). Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Nanba, in view of Higuchi ’174 and Watanabe, and Higuchi (US 2011/0098132 Al, published Apr. 28, 2011 (hereinafter “Higuchi ’132”)). OPINION With respect to the contested (App. Br. 7-8, 11, 13) limitation emphasized above, the Examiner provides: The examiner finds that Nanba, as modified, teaches the structural features of applicant's golf ball according to the limitations of Claims 1, 2, 4, and 10, and it is inherent in the prior art bah or that the prior art bah would be capable of meeting functional limitations, particularly that the spherical core would exhibit an absorbance difference between absorbance measured at a surface thereof and absorbance measured at a center thereof of 0.024 or more, with respect to an absorption peak appearing at 1560 +/- 30 per centimeter when measuring the spherical core with a Fourier transform infrared spectrophotometer. While features of an apparatus may be recited either structurally or 3 Appeal 2016-004071 Application 13/592,601 functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Final Act. 4. It is true that, where there is apparent structural identity, the Examiner may shift the burden to an applicant to prove the prior art does not necessarily exhibit a particular latent property. See, e.g., MPEP §§2112, 2144.09. Nevertheless, before an applicant can be put to this burdensome task, the Examiner must provide sufficient evidence or scientific reasoning to establish there is a sound basis for the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Inherency may not be established by probabilities or possibilities. In relying upon the theory of inherency, the Examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17USPQ2d 1461, 1464 (BPAI 1990), accord Ex parte Skinner, 2 USPQ 2d 1788, 1789 (BPAI 1986). Here, the infrared-absorbance limitation relates to a difference in the value measured between a surface and center of the ball’s core. The Examiner does not provide any reasoning or explanation as to why merely having the particular constituents of the core would result in differences in the infrared absorbance properties of the core between its surface and center. This limitation, though expressed in terms of an underlying property or 4 Appeal 2016-004071 Application 13/592,601 behavior of the core may serve to imply a structural distinction between the claimed invention and the prior art, such as the core’s constituent distribution. The Examiner has not established structural identity sufficient to demonstrate that the subject matter resulting from the Examiner’s proposed combination of prior-art teachings would necessarily exhibit the same infrared absorbance characteristics as defined in claim 1. As this factual shortcoming underlies all the rejections before us, we do not sustain the rejections on the grounds set forth by the Examiner. DECISION The Examiner’s rejections are reversed. REVERSED 5 Copy with citationCopy as parenthetical citation