Ex Parte Simonutti

Patent Trials and Appeals Board

Mar 27, 2019

15229447 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/229,447 08/05/2016
90487 7590 03/27/2019
Amer Sports Americas
1 Prudential Plaza
130 East Randolph Street, Suite 600
Chicago, IL 60601
FIRST NAMED INVENTOR
Frank M. Simonutti
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.
WG-0148-US-NP 8768
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
03/27/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK M. SIMONUTTI
Appeal2018-006957
Application 15/229,447
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-18. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Wilson Sporting Goods Co. is the Applicant and is identified as the real
party in interest. Appeal Br. 1.
Appeal2018-006957
Application 15/229,447
THE CLAIMED SUBJECT MATTER
Appellant's invention relates to a low compression golf ball. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A golf ball comprising:
a core comprising polybutadiene and having a diameter
of less than 1.45 inches, the core having a deflection of at least
0.220 inches under an applied static load of 200 pounds;
a mantle comprising a copolymer of ethylene and
carboxylic acid, the mantle having a flexural modulus of less
than 12,000 psi, wherein the core and the mantle form a mantle-
core assembly having a diameter of between 1.52 inches and
1.6 inches with a deflection of greater than 0.210 inches under
an applied static load of 200 pounds; and
a cover layer comprising one or more ionomer materials,
the cover layer having a Shore D hardness of greater than 62.
REJECTION2
Claims 1-183 are rejected under 35 U.S.C. 103 as unpatentable over
Sullivan (US 2014/0364253 Al, pub. Dec. 11, 2014) and Farrell (US
2015/0367179 Al, pub. Dec. 24, 2015).
DISCUSSION
The Examiner finds that Sullivan discloses many of the limitations of
claim 1 including a core, a mantle, and a cover layer, but does not
specifically disclose that the core has a deflection of at least 0.220, or that
2 Appellant filed an Amendment After Final on March 15, 2018, canceling
claims 19-23 that was entered by the Examiner in the Advisory Action
mailed April 4, 2018. Entry of the Amendment obviates the 35 U.S.C.
§§ 112(a) and 112(b) rejections of claims 21-23. See Ans. 2.
3 Entry of the March 15, 2018 Amendment obviates the 35 U.S.C. § 103
rejection of claims 19-23.
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Appeal2018-006957
Application 15/229,447
the mantle-core assembly has a deflection of greater than 0.210. Final Act.
5. Nonetheless, the Examiner finds that Farrell discloses a core having a
deflection of greater than 0.185 inches under an applied static load of 200
pounds, and a core and mantle layer having zero compression, which
corresponds to a deflection of 0.185 on the Riehle scale. Id. The Examiner
also finds that "Farrell makes obvious the language 'greater than' because he
specifically states 'less than 0, "' which would lead to a deflection in the
claimed range. Id. The Examiner concludes that, because Sullivan suggests
that core compression/deflection is a result-effective variable, it would have
been obvious to one of ordinary skill in the art "that values of 0.220 and
0 .210 could be used for the inner core and intermediate ball deflection over
that of 0.207 and 0.185, respectively, because those values could be found
through routine experimentation in order to provide the desired spin and feel
of the overall golf ball." Id. at 6.
Appellant argues, inter alia, that a prima facie case of obviousness
does not exist, because "claim 1 recites a COMBINATION of three golf ball
components, that fall outside of ranges cited by the prior art." Appeal Br. 8.
According to Appellant, the Examiner's attempt "to address each claimed
range INDIVIDUALLY ... fails to establish a prima facie case of
obviousness as it does not address the COMBINATION of all of the ranges
that synergistically produce a low compression golf ball that [at] the same
time, achieves spin and distance performance." Id. at 9. Appellant contends
that the Examiner has not provided "any evidence that one skilled in the art
would have a reasonable expectation of success" in disregarding the
teachings of Sullivan and Farrell to arrive at the claimed invention. Id. at 9--
1 O; see also Reply Br. 2-3.
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Appeal2018-006957
Application 15/229,447
The Examiner responds that because "deflection of 0.220 as opposed
to 0.207 inches ... is a result effective variable ... the burden is on appellant
to rebut ... with a showing of criticality." Ans. 12 ( citing In re Aller, 220 F.
2d 454, 456 (CCPA 1955)). The Examiner states that "appellant has not
offered relevant evidence the core compression could not be found through
routine optimization." Id. at 15. According to the Examiner, because
Sullivan recognizes that very low stiffness cores have a zero compression
and because Farrell recognizes a core compression less than zero, "both
Sullivan and Farrell acknowledge the use of cores at or below O ... one of
ordinary skill in the art would have an expectation of success using a core at
or below O." Id. For the following reasons, we do not sustain this rejection.
Absent some additional reasoning, the Examiner's finding that a
skilled artisan could have arrived at the claimed invention through routine
optimization is insufficient to support a conclusion of obviousness. In re
Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017). Here, Sullivan's
preferred compression range is from 20 to 120 (Sullivan ,r 173), which
corresponds to a deflection of0.164 to 0.127, and Sullivan discloses a single
example having a compression of -20, which corresponds to a deflection of
about 0.207 (Sullivan ,r 171). Given that Sullivan's lowest disclosed
compression value is half what is needed to arrive at the claimed deflection
(see Spec. ,r 21 ("The deformation of the core under an applied static load of
200 lb. should be greater than 0.220", which correlates to a compression of -
40") ), the Examiner does not explain adequately why one of ordinary skill in
the art would have found it obvious to double Sullivan's lowest compression
value, i.e., -20, to arrive at a value of -40, in order to meet the claimed
invention.
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Appeal2018-006957
Application 15/229,447
The Examiner also relies on Farrell. Farrell discloses:
The overall compression of the core is preferably less than 45,
or less than 40, or less than 35, or 30 or less, or less than 30, or
less than 25, or less than 20, or 15 or less, or less than 15, or 10
or less, or less than 10, or O or less, or less than 0.
Farrell ,r 14.
Although Farrell discloses that compression could be less than zero,
the Examiner does not explain adequately why a general teaching of a range
"less than O" includes the specific value of -40 given that Farrell's preferred
compression values are between 20 and 60. See Farrell ,I 77. Farrell's
recognition that a dual core having compression less than zero does not
indicate whether a skilled artisan would have had a reasonable expectation
of success of a compression value of -40. "[T]o have a reasonable
expectation of success, one must be motivated to do more than merely to
vary all parameters or try each of numerous possible choices until one
possibly arrived at a successful result." Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1365 (Fed. Cir. 2007) (quoting Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006)). Farrell provides general guidance on
compression, but provides no direction as to which of many possible choices
is likely to be successful. For these reasons, the Examiner has not
established prima facie obviousness of the claimed ranges. Accordingly,
Appellant need not show criticality.
Moreover, claim 1 requires a deflection of at least 0.220 inches for the
core and a deflection of greater than 0.210 inches for the mantle-core
assembly. The Examiner does not explain adequately how Farrell's
recognition that a dual core having a compression less than zero would have
led one of ordinary skill in the art to optimize the core compression together
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Appeal2018-006957
Application 15/229,447
with the mantle-core compression. That is, the Examiner does not articulate
a reason supported by rational underpinnings as to why it would have been
obvious to one of ordinary skill in the art to optimize both the core and the
mantle-core assembly resulting in the combination recited in claim 1.
Therefore, we do not sustain he Examiner's rejection of claim 1, and
of claims 2-15 depending therefrom as unpatentable over Sullivan and
Farrell. The Examiner relies on the same findings and reasoning in support
of the rejection of independent claim 16, which includes limitations
substantially similar to those discussed above. See Final Act. 10-12. We,
therefore, do not sustain the rejection of claim 16, and of claims 17 and 18
depending therefrom for the same reasons stated above for claim 1.
DECISION
The Examiner's decision to reject claims 1-18 is reversed.
REVERSED
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