Ex Parte Simonutti et al

Patent Trial and Appeal Board

Sep 27, 2012

10780005 (P.T.A.B. Sep. 27, 2012)

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.
10/780,005 02/17/2004 Frank M. Simonutti WG0057H 9568
7590 09/28/2012
Terence P. O'Brien
Wilson Sporting Goods Co.
8700 W. Bryn Mawr Avenue
Chicago, IL 60631
EXAMINER
HUNTER, ALVIN A
ART UNIT PAPER NUMBER
3711
MAIL DATE DELIVERY MODE
09/28/2012 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 and ROBERT T. THURMAN
____________

Appeal 2009-011186
Application 10/780,005
Technology Center 3700
____________

Before JOHN C. KERINS, EDWARD A. BROWN and
WILLIAM V. SAINDON, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Frank M. Simonutti and Robert T. Thurman (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1,
2, 5, 8, 10-13, 18, 19, 28-30, 32-34, 36, 37, 41, 42 and 57-68. Claims 3, 4,
6, 7, 9, 14-17, 20-27, 31, 35, 38-40 and 43-56 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

THE INVENTION
Appellants’ claimed invention is to a golf ball. Claim 1, reproduced
below, is illustrative:
1. A golf ball comprising:

a solid center having a deflection, under an applied
static load of 200 lb., of between about 0.090
inches and about 0.150 inches;

at least one intermediate layer comprised of
thermoplastic material, the at least one
intermediate layer comprises a co- or ter-polymer
of ethylene and acrylic acid, wherein 100% of the
acid groups are neutralized with metal ions, the co-
or ter-polymer including a level of Magnesium
Oleate; and

a cover layer comprising an ionomer or ionomer
blend and having a Shore D hardness, measured on
the curved surface of the golf ball, of greater than
about 70;

wherein, the golf ball, when struck by a driver club
at a clubhead velocity of about 160 feet-per-
second, has an initial velocity off the clubhead of
greater than 240 feet-per-second.

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THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 5, 8, 18, 19 and 57 under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan (US 5,779,561, iss. Jul. 14, 1998) in view of
Statz (US 6,815,480 B2, iss. Nov. 9, 2004);
(ii) claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68 under 35 U.S.C.
§ 103(a) as being unpatentable over Sullivan in view of Statz and Yamada
(US 5,585,440, iss. Dec. 17, 1996);
(iii) claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Sullivan in view of Statz and Yamagishi (US 5,779,563, iss. Jul. 14,
1998);
(iv) claims 33 and 34 under 35 U.S.C. § 103(a) as being unpatentable
over Sullivan in view of Statz, Yamada and Yamagishi;
(v) claims 10 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over Sullivan in view of Statz and Louis G. Caschera, The Legal Golf Ball,
in StrictlyGolf Balls, The Golf Handbook, Revised Edition 16-17 (1998)
(hereinafter “Caschera”);
(vi) claims 36 and 37 under 35 U.S.C. § 103(a) as being unpatentable
over Sullivan in view of Statz, Yamagishi and Caschera;
(vii) claims 60 and 61 under 35 U.S.C. § 103(a) as being unpatentable
over Sullivan in view of Statz and Caschera; and
(viii) claims 65 and 66 under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan in view of Statz, Yamada and Caschera.

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ANALYSIS
Claims 1, 2, 5, 8, 18, 19 and 57-- Sullivan/Statz
Appellants present arguments for claim 1, separate arguments for
claim 2, and do not present separate or additional arguments for the
remaining claims subject to this rejection. App. Br. 5-9. We will take claim
1 as representative of the group including the claims that were not separately
argued.
The Examiner found that Sullivan disclosed the claimed golf ball,
with the exception that, while an intermediate layer containing an ionomer
was disclosed, the type of ionomer was not specifically disclosed. Ans. 7.
Statz was relied on as disclosing the claimed ionomer, and the Examiner
concluded that it would have been obvious to modify the Sullivan golf ball
in accordance with the teachings of Statz in order to increase the resilience
of the golf ball. Id. The Examiner reasoned that, since the resulting golf
ball would have the same structure as the claimed golf ball, the ball would
possess the claimed properties directed to initial velocity off a clubhead
(claim 1) and coefficient of restitution (claim 2). Id.
Appellants argue that Sullivan does not disclose a golf ball meeting
the limitation that the cover layer has a Shore D hardness of “greater than
about 70,” and thus the ball would not meet the 240 feet-per-second initial
velocity requirement. App. Br. 6. In response to positions taken by the
Examiner relative to the Shore D hardness of the cover of the Sullivan ball,
Appellants maintain that Sullivan does not disclose the significance of
producing a ball with the claimed Shore D hardness level for the cover to
obtain the claimed initial velocity requirement. Reply Br. 3. After
acknowledging that Sullivan discloses a Comparative Example and an
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Example of the Sullivan invention in which the golf balls have a cover with
a Shore D hardness of 68, Appellants maintain that this does not teach or
suggest “a cover layer with a Shore D hardness value of ‘about 70’ or,
more particularly, greater than about 70.” App. Br. 6; Reply Br. 3.
In addition to the specific examples presented in Sullivan, Sullivan
further discloses that “[t]he outer cover layer preferably has a greater
hardness than the inner cover layer and a Shore D hardness of at least 60.”
Sullivan, col. 2, l. 66-col. 3, l. 1. Sullivan further describes that “[t]he inner
cover layer 14 preferably has a Shore D hardness . . . in the range of 1-80
. . . .” Sullivan, col. 10, ll. 40-43. As such, Sullivan clearly contemplates
that the inner cover layer can have a hardness in the range of 70-80, and
given Sullivan’s disclosure that the outer cover layer preferably has a greater
hardness than the inner cover layer, Sullivan teaches or suggests an outer
cover layer having a Shore D hardness in that same range to slightly higher
than that range. The combined teachings of Sullivan and Statz therefore
result in a golf ball meeting all structural limitations set forth in claim 1. As
posited by the Examiner, since the subject matter of claim 1 does not
structurally distinguish over the combination, the golf ball is regarded as
inherently meeting the initial velocity requirement set forth in claim 1.
Appellants have argued that golf balls with outer covers having a
hardness of 68 on the Shore D scale would not meet the claimed initial
velocity requirement. Appellants have not presented evidence or otherwise
established that the Sullivan ball having an outer cover of a hardness above
70 Shore D, as suggested in the portions of the Sullivan description noted
above, and as modified by Statz, would not meet the claimed initial velocity
requirement. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as
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here, the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product.”).
Appellants further argue that claim 1 includes structural limitations as
well as performance-based property limitations, and that, “[a] variety of
factors can affect the initial velocity property of a golf ball. For example,
the weight, specific fillers, and/or size of the ball can all affect the initial
velocity. The initial velocity limitation distinguishes Appellants’
claimed golf ball from other golf balls . . . .” Reply Br. 4. In the
preceding paragraph, Appellants recite the claimed structural limitations,
stating that “the resulting golf ball has exceptional initial velocity properties
when struck with a driver club.” Id. However, with the exception of the
outer cover hardness, which we have addressed above, Appellants have not
contended that the Sullivan golf ball, modified as proposed by the Examiner
in view of Statz, does not possess those characteristics.
The rejection of claim 1, and that of claims 5, 8, 18, 19 and 57
grouped therewith, is sustained.
Appellants separately argue, for claim 2, that the coefficients of
restitution (COR) disclosed in Sullivan and in Statz are not greater than
0.815 at a test velocity of 150 feet-per-second. App. Br. 9; Reply Br. 3-4.
The arguments fail to address the fact that the rejection is one made based on
modifying the Sullivan golf ball as proposed by the Examiner, and that the
coefficients of restitution reported in the Sullivan and Statz patents are not
reflective of what the coefficient of restitution would be for the modified
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Sullivan golf ball. Again, since the claimed structural features are met by
the modified Sullivan golf ball, it is reasonable for the Examiner to maintain
that the claimed coefficient of restitution limitation is met, and the burden is
on Appellants to demonstrate otherwise. This, Appellants have not done.
The rejection of claim 2 is sustained.
Claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68--Sullivan/Statz/Yamada
Appellants note that “[m]uch of the discussion above relating to claim
1 is directly applicable to these limitations of claim 28.” App. Br. 10. In
particular, Appellants argue, as they did for claims 1 and 2 in relation to
Sullivan and Statz, that Yamada “does not disclose, suggest or teach the
Shore D hardness and COR limitations of claim 28.” Id. As noted above,
Sullivan discloses the claimed Shore D hardness for the cover layer, and,
given that the structural limitations of the claim are met by the Examiner’s
proposed combination and modification, the COR limitation is seen as being
met as well, in the absence of evidence to the contrary.
The rejection of claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68 is
sustained.
Claims 11 and 12--Sullivan/Statz/Yamagishi
Claim 11 depends from claim 1 and further recites that the core, the at
least one intermediate layer and the cover layer are to have approximately
the same specific gravity. App. Br., Clms. App. Claim 12 depends from
claim 11, and recites that the specific gravities of those elements are to be
between about 1.118 and 1.132. Id.
Appellants maintain that Yamagishi provides no suggestion or
motivation to produce a core, an intermediate layer and a cover having
approximately the same specific gravity. App. Br. 11. Rather, argue
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Appellants, Yamagishi teaches increasing the moment of inertia of the ball
by moving as much weight as possible to the outer portion of the golf ball.
Id. Appellants further assert that Yamagishi specifically teaches away from
the components having approximately the same specific gravity, in that the
reference teaches that the outer cover should have a higher specific gravity
than the inner cover. Id.
Yamagishi does state that “[t]he cover outer layer 3 is formed to a
greater specific gravity than core 1 and the inner cover layer 2 . . . .”
Yamagishi, col. 3, ll. 59-60. Notwithstanding this disclosure, as the
Examiner twice points out, Yamagishi almost immediately thereafter
specifically discloses that “the difference of specific gravity between the
cover outer layer and the core is 0.01 to 0.15.” Yamagishi, col. 4, ll. 3-4;
Ans. 11, 16. While Appellants do not appear to have provided specific
guidance in the Specification as to what does and does not constitute
“approximately the same” with respect to the claim limitation at issue, a
difference of 0.01 where the preferred values for specific gravity are on the
order of 1.10 to 1.25 would appear to meet that limitation. Claim 12 is
further illustrative of a range contemplated by Appellants. The variance
between the lower claimed limit (1.118) and the upper claimed limit (1.132)
for the specific gravities of the recited ball elements is 0.014, which is higher
than at least part of the range (0.01-0.15) contemplated by Yamagishi.
We are not persuaded that the Examiner erred in concluding that the
subject matter of claims 11 and 12 would have been obvious, and the
rejection is sustained.

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Claims 33 and 34--Sullivan/Statz/Yamada/Yamagishi
These claims present the same limitations as discussed above with
respect to claims 11 and 12, with the instant claims depending from claim
28. For the same reasons discussed above, we are not persuaded that the
Examiner erred in concluding that the subject matter of these claims would
have been obvious. The rejection is sustained.
Claims 10 and 13--Sullivan/Statz/Caschera
Claims 10 and 13 contain limitations as to the size of the golf ball, and
the recited sizes are smaller than the minimum required by the United States
Golf Association (USGA) for use in USGA sanctioned events. Compare,
Caschera, p. 16, with claims 10, 13. The Examiner concluded that it would
have been obvious, in view of Caschera’s teaching that reducing the
diameter of the ball can increase distance, to produce the modified Sullivan
ball with a diameter meeting the limitations of claims 10 and 13 in order to
increase distance. Ans. 12.
Appellants counter that Sullivan discloses that the golf ball should be
at least 1.68 inches, that such disclosure is consistent with USGA
requirements. App. Br. 13. Appellants further urge that, notwithstanding
the Caschera disclosure, modifying the Sullivan ball to have a smaller
diameter within the claimed ranges “would be repugnant to the teachings” of
Sullivan, and would change the principle of operation of the Sullivan ball by
taking it outside the parameters of USGA approval. App. Br. 13.
We are not persuaded that moving outside the USGA requirements by
producing a smaller diameter golf ball would change the principle of
operation of the Sullivan golf ball. It would change the ball from being
USGA approved to being not approved. However, as noted by Appellants,
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the USGA specifications apply only to play in USGA-sanctioned events, and
that it is known in the art to produce golf balls that do not meet USGA
specifications. Spec., p. 3, paras. [0006]-[0008]. These golf balls were
presumably designed for use by golfers playing outside of USGA-sanctioned
events, and the disclosure reflects that it is well within the level of ordinary
skill in the art to include the size of the golf ball as a parameter that may be
changed in order to affect the performance of the ball. KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 421 (2007) (a person of ordinary skill is also a
person of ordinary creativity, not an automaton).
The statement that the proposed modification would be repugnant to
the teaching of Sullivan appears to also be based on the modification
disqualifying the ball from USGA approval. For the reasons noted above,
this argument is not persuasive of nonobviousness. The rejection of claims
10 and 13 is sustained.
Claims 36 and 37--Sullivan/Statz/Yamagishi/Caschera
These claims present the same limitations as discussed above with
respect to claims 10 and 13, with the instant claims depending from claim
28. For the same reasons discussed above, we are not persuaded that the
Examiner erred in concluding that the subject matter of these claims would
have been obvious. The rejection is sustained.
Claims 60 and 61--Sullivan/Statz/Caschera
These claims are directed to a range of weights for the golf ball,
specifically weights that do not fall within USGA specifications. As with
the size limitations discussed above, Appellants argue that to modify the
weight of the Sullivan ball to have it exceed the maximum allowable USGA
weight would be repugnant to the teachings of Sullivan. App. Br. 14. For
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essentially the same reasons discussed above with respect to claims 10 and
13, we find this argument unpersuasive. The rejection of claims 36 and 37 is
sustained.
Claims 65 and 66--Sullivan/Statz/Yamada/Caschera.
These claims present the same limitations as discussed above with
respect to claims 60 and 61, with the instant claims depending from claim
28. For the same reasons discussed above, we are not persuaded that the
Examiner erred in concluding that the subject matter of these claims would
have been obvious. The rejection is sustained.

CONCLUSION
Appellants have not persuaded us that the subject matter of claims 1,
2, 5, 8, 10-13, 18, 19, 28-30, 32-34, 36, 37, 41, 42 and 57-68 would not have
been obvious over the references cited against each claim.

DECISION
The decision of the Examiner to reject claims 1, 2, 5, 8, 10-13, 18, 19,
28-30, 32-34, 36, 37, 41, 42 and 57-68 under 35 U.S.C. § 103(a) is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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