Ex Parte Sullivan

Board of Patent Appeals and Interferences

Jan 30, 2004

09873594 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL J. SULLIVAN
____________
Appeal No. 2004-0242
Application No. 09/873,594
____________
ON BRIEF
____________
Before GARRIS, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4 to
7, 10 to 13 and 16 to 18, which are all of the claims pending in this application.
We AFFIRM.
Appeal No. 2004-0242
Application No. 09/873,594
Page 2
BACKGROUND
The appellant's invention relates to golf balls and, more particularly, to improved
standard and oversized golf balls comprising multi-layer covers which have a
comparatively hard inner layer and a relatively soft outer layer such as that produced by
the use of a polyurethane based outer layer. The improved multi-layer golf balls
provide for enhanced distance and durability properties over single layer cover golf balls
while at the same time offering enhanced "feel" and spin characteristics generally
associated with soft balata and balata-like covers of the prior art (specification, p. 1). A
copy of the claims under appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Nesbitt 4,431,193 Feb. 14, 1984
Wu 5,334,673 Aug. 2, 1994
Claims 1, 4 to 7, 10 to 13 and 16 to 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nesbitt in view of Wu.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
Appeal No. 2004-0242
Application No. 09/873,594
Page 3
(Paper No. 15, mailed June 16, 2003) for the examiner's complete reasoning in support
of the rejections, and to the brief (Paper No. 14, filed March 21, 2003) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Claimed Subject Matter
The independent claims on appeal read as follows:
1. A golf ball comprising:
a core;
an inner cover layer disposed on said core and having a Shore D
hardness of 60, [sic] or greater [,] a thickness of from about 0.10 to about 0.01
inches, and comprising a low acid ionomer resin containing no more than 16%
by weight of an alpha, beta unsaturated carboxylic acid; and
an outer cover layer comprising a polyurethane material.
7. A golf ball comprising:
a core;
an inner cover layer disposed about said core arid having a thickness of
from about 0.10 to about 0.01 inches, and comprising an ionomeric resin
including no more than 16 % by weight of an alpha, beta-unsaturated carboxylic
acid and having a modulus of from about 15,000 to about 70,000 psi; and
an outer cover layer disposed about said inner cover layer comprising a
polyurethane material.
Appeal No. 2004-0242
Application No. 09/873,594
Page 4
13. A golf ball comprising;
a core;
an inner cover layer disposed on said core comprising an ionomer resin;
and
an outer cover layer disposed about said inner cover layer comprising a
polyurethane material.
Teachings of Nesbitt
Nesbitt's invention relates to a golf ball and more particularly to a cover
construction for a golf ball. In the BACKGROUND ART section of the patent (column 1,
lines 9-33), Nesbitt teaches:
Golf balls having a cover material marketed under the trademark "Surlyn"
by E. I. du Pont de Nemours and Company of Wilmington, Del., are known in the
art and such cover compositions generally comprise a copolymer of an olefin and
at least one unsaturated monocarboxylic acid. Conventional two-piece golf balls
are comprised of a solid resilient center or core with molded Surlyn covers. The
cover used is normally a hard, high flexural modulus Surlyn resin in order to
produce a gain in the coefficient of restitution over that of the center or core.
In a conventional two-piece golf ball, a hard, high flexural modulus Surlyn
resin is molded over a resilient center or core. The hard, highly flexural modulus
Surlyn resin for the cover of a two-piece golf ball is desirable as it develops the
greatest hoop stress and consequently the greatest coefficient of restitution.
A two-piece golf ball having a hard, Surlyn resin cover however does not
have the "feel" or playing characteristics associated with softer balata covered
golf balls. Heretofore balata covered golf balls have been preferred by most golf
professionals. If a golf ball has a cover of soft, low flexural modulus Surlyn resin
molded directly over a center or core, it is found that little or no gain in coefficient
of restitution is obtained.
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Application No. 09/873,594
Page 5
Nesbitt then teaches in the DISCLOSURE OF THE INVENTION section of the
patent (column 1, line 36, to column 2, line 9) that:
In accordance with the present invention there is provided a golf ball
having a multilayer or two-ply cover construction for a solid resilient center or
core wherein the multilayer cover construction involves two stage molded cover
compositions over a solid center or core of resilient polymeric material wherein
an increased coefficient of restitution is attained and wherein the "feel" or playing
characteristics are attained similar to those derived from a balata covered golf
ball.
The invention embraces a golf ball and method of making same wherein
the ball has a solid center or core of resilient polymeric or similar material
covered by a first layer or ply of molded hard, highly flexural modulus resinous
material or of cellular or foam composition which has a high coefficient of
restitution.
The first layer or ply is provided with a second or cover layer of a
comparatively soft, low flexural modulus resinous material or of cellular or foam
composition molded over the first layer and core or center assembly. Such golf
ball has the "feel" and playing characteristics simulating those of a softer balata
covered golf ball.
Through the use of the first ply or layer of hard, high flexural modulus
resinous material on the core or center, a maximum coefficient of restitution may
be attained. The resinous material for the first ply or layer may be one type of
Surlyn marketed by E. I. du Pont de Nemours and Company of Wilmington, Del.,
and the other ply or cover layer may be of a different type of Surlyn resin also
marketed by the same company.
The three-piece golf ball of the invention provides a golf ball in which the
coefficient of restitution of the golf ball closely approaches or attains that which
provides the maximum initial velocity permitted by the United States Golf
Association Rules of two hundred fifty feet per second with a maximum tolerance
of two percent, which velocity may be readily attained and the playing
characteristics or "feel" associated with a balata covered ball secured while
maintaining a total weight of the golf ball not exceeding 1.620 ounces without
sacrificing any advantages of a golf ball having a standard Surlyn cover of the
prior art or a golf ball having a softer balata cover.
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Application No. 09/873,594
Page 6
1 As set forth on page 3 of the appellant's specification Type 1605 Surlyn® (now designated
Surlyn® 8940) is a sodium ion based low acid (less than or equal to 15 weight percent methacrylic acid)
ionomer resin having a flexural modulus of about 51,000 psi.
2 As set forth on page 4 of the appellant's specification Type 1855 Surlyn® (now designated
Surlyn® 9020) is a zinc ion based low acid (10 weight percent methacrylic acid) ionomer resin having a
flexural modulus of about 14,000 psi.
In the BEST MODE FOR CARRYING OUT THE INVENTION section of the
patent (column 2, line 31, to column 3, line 50), Nesbitt teaches:
Referring to the drawings in detail there is illustrated a golf ball 10 which
comprises a solid center or core 12 formed as a solid body of resilient polymeric
material or rubber-like material in the shape of a sphere. Disposed on the
spherical center or core 12 is a first layer, lamination, ply or inner cover 14 of
molded hard, highly flexural modulus resinous material such as type 1605 Surlyn
marketed by E. I. du Pont de Nemours and Company, Wilmington, Del.[1]
This material of the inner layer 14 being a hard, high flexural modulus
resin produces a substantial gain of coefficient of restitution over the coefficient
of restitution of the core or center. An outer layer, ply, lamination or cover 16 of
comparatively soft, low flexural modulus resinous material such as type 1855
Surlyn marketed by E. I. du Pont de Nemours and Company [2] is then re-molded
onto the inner ply or layer 14, the outer surface of the outer layer or cover 16
being of dimpled configuration providing a finished three-piece golf ball.
According to the United States Golf Association Rules, the minimum
diameter prescribed for a golf ball is 1.680 inches and the maximum weight
prescribed for a golf ball is 1.620 ounces. It is therefore desirable to produce a
golf ball having an improved coefficient of restitution to attain an initial velocity for
the golf ball approaching the maximum velocity limit of 255 feet per second, the
maximum limit provided by the United States Golf Association Rules.
The hard, high flexural modulus resin is employed to increase the
coefficient of restitution in order to attain or approach the maximum initial velocity
for the golf ball. The use of a soft low flexural modulus resin provides little or no
gain in the coefficient of restitution and may tend to reduce the coefficient of
restitution thereby adversely affecting the initial velocity factor.
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Application No. 09/873,594
Page 7
In producing the golf ball of the invention, the density of the center or core
may be varied and the relative thicknesses of the layers, plies or laminations 14
and 16 may be varied within limits so that the golf ball weight does not exceed
1.620 ounces, the minimum diameter not less than 1.680 inches, and the ball be
capable of an initial velocity approaching 255 feet per second. However, the
finished golf ball may be of larger diameter providing the total weight of the ball
does not exceed 1.620 ounces.
Thus, by varying the density of the center or core 12 and varying the
thicknesses of the plies or layers 14 and 16 of the cover construction, a golf ball
may be produced having a total weight not exceeding 1.620 ounces and a
minimum diameter of 1.680 inches and having a comparatively high coefficient of
restitution, the ball closely approaching or attaining in play the maximum
permitted initial velocity of 255 feet per second.
In the golf ball of the invention the thickness of the inner layer or ply 14
and the thickness of the outer layer or ply 16 may be varied to secure the
advantages herein mentioned. It is found that the inner layer 14 of hard, high
flexural modulus resinous material, such as Surlyn resin type 1605, is preferably
of a thickness in a range of 0.020 inches and 0.070 inches. The thickness of the
outer layer or cover 16 of soft, low flexural modulus resin, such as Surlyn type
1855, may be in a range of 0.020 inches and 0.100 inches.
For example, a center or core 12 having a 0.770 coefficient of restitution is
molded with a layer of hard, high modulus Surlyn resin, such as Surlyn type
1605, to form a spherical body of a diameter of about 1.565 inches. This
spherical body comprising the core or center 12 and layer 14 of the hard, high
modulus Surlyn resin has a coefficient of restitution of 0.800 or more.
This center or core 12 and inner layer 14 of hard resinous material in the
form of a sphere is then re-molded into a dimpled golf ball of a diameter of 1.680
inches minimum with an outer or cover layer 16 of a soft, low flexural modulus
resin such as Surlyn type 1855. The outer layer of the soft resin is of a thickness
of 0.0575 inches. The soft Surlyn resin cover would have about the same
thickness and shore hardness of a balata covered golf ball and would have the
advantageous "feel" and playing characteristics of a balata covered golf ball.
It is to be understood that the golf ball of the invention may be made of a
diameter greater than 1.680 inches without exceeding the total weight of 1.620
Appeal No. 2004-0242
Application No. 09/873,594
Page 8
ounces by varying the thickness of the inner layer or ply 14 and the outer cover
layer or ply 16 and secure desired "feel" and playing characteristics.
Teachings of Wu
Wu's invention relates to golf balls and more particularly to polyurethane covered
golf balls made from a polyurethane composition of a polyurethane prepolymer cured
with a slow-reacting curing agent selected from the group of slow-reacting polyamine
curing agents and difunctional glycols. Wu states (column 1, lines 11-14) that such a
golf ball has improved resiliency and shear resistance over golf balls made from
conventional polyurethane formulations. Wu teaches (column 1, line 15, to column 2,
line 44) that:
Conventionally, golf balls are made by molding a cover about a core that
is either a solid one-piece core or a wound core made by winding thin elastic
thread about a center. The center is either a solid mass or a liquid-filled envelope
which has been frozen prior to winding the thread therearound. Golf balls made
from a solid core are referred to conventionally as two-piece balls while those
with wound cores are referred to as three-piece balls. Attempts have been made
to make a one-piece golf ball, i.e. a solid homogeneous golf ball; however, to
date no commercially acceptable one-piece golf ball has been made.
Balata had been used as the primary material for covers of golf balls until
the 1960's when SURLYN®, an ionomeric resin made by E.I. dupont de
Nemours & Co., was introduced to the golf industry. SURLYN® costs less than
balata and has a better cut resistance than balata. At the present time,
SURLYN® is used as the primary source of cover stock for two-piece golf balls.
The problem with SURLYN®-covered golf balls, however, is that they lack the
"click" and "feel" which golfers had become accustomed to with balata. "Click" is
the sound made when the ball is hit by a golf club while "feel" is the overall
sensation imparted to the golfer when the ball is hit.
Appeal No. 2004-0242
Application No. 09/873,594
Page 9
3 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
It has been proposed to employ polyurethane as a cover stock for golf
balls because, like SURLYN®, it has a relatively low price compared to balata
and provides superior cut resistance over balata. However, unlike
SURLYN®-covered golf balls, polyurethane-covered golf balls can be made to
have the "click" and "feel" of balata.
. . .
It has now been discovered that a polyurethane prepolymer cured with a
slow-reacting curing agent selected from the group of slow-reacting polyamine
curing agents or difunctional glycols produces a golf ball cover that has good
durability and performance. Golf balls made in accordance with the present
invention have been found to have improved shear resistance and cut resistance
compared to golf balls having covers made from either balata or SURLYN®.
Broadly, the present invention is a golf ball product made from a
polyurethane prepolymer cured with a slow-reacting curing agent selected from
the group of slow-reacting polyamine curing agents or difunctional glycols. The
term "golf ball product" as used in the specification and claims means a cover, a
core, a center or a one-piece golf ball. The cover of a golf ball made in
accordance with the present invention has been found to have good shear
resistance, cut resistance, durability and resiliency. Preferably, the polyurethane
composition of the present invention is used to make the cover of a golf ball.
The examiner's rejection
In the rejection of claims 1, 4 to 7, 10 to 13 and 16 to 18 under 35 U.S.C. § 103
(answer, p. 3), the examiner ascertained3 that Nesbitt discloses all of the claimed
subject matter except for the outer cover of the golf ball comprising a polyurethane
material. The examiner, in essence, concluded that in view of the teachings of Wu it
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Application No. 09/873,594
Page 10
4 The use of hindsight knowledge derived from the appellant's own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
5 Most if not all inventions arise from a combination of old elements. See In re Rouffet, 149 F.3d
1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every element of a claimed invention may
often be found in the prior art. See id. However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed invention. See id. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination that was made by
the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
would have been obvious to one skilled in the art to have modified Nesbitt's golf ball by
using polyurethane as the outer cover material to increase the durability of the golf ball.
The appellant's argument
The appellant argues (brief, pp. 4-7) that the rejection under 35 U.S.C. § 103 is
erroneous since the applied prior art, absent the use of impermissible hindsight4, does
not suggest the subject matter of independent claims 1, 7 and 13. In the appellant's
view there is no motivation5 in the applied prior art that would have made it obvious to
one of ordinary skill in the art to have modified the golf ball of Nesbitt to arrive at the
subject matter of independent claims 1, 7 and 13.
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Application No. 09/873,594
Page 11
6 The test for obviousness is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Our Determination
In applying the test for obviousness6 we conclude that the teachings of Wu
clearly would have made it obvious at the time the invention was made to a person of
ordinary skill in the art to have modified Nesbitt's golf ball by using polyurethane as the
outer cover material to achieve the expected benefits therefrom taught by Wu (i.e., to
have the "click" and "feel" of balata; improved shear resistance and cut resistance;
durability; and resiliency). Thus, it would have been obvious to one skilled in the art to
have modified Nesbitt's three-piece golf ball having a spherical core, an inner layer of
type 1605 Surlyn® and an outer layer of type 1855 Surlyn® by replacing the type 1855
Surlyn® in the outer layer with polyurethane as suggested and taught by Wu.
Therefore, the teachings of the applied prior art alone (i.e., without the use of
impermissible hindsight) are suggestive of the subject matter of independent claims 1, 7
and 13.
In view of our determination above we disagree with the appellant's argument
that the rejection under 35 U.S.C. § 103 is erroneous. While the appellant has correctly
pointed out the deficiencies of both Nesbitt and Wu on an individual basis,
nonobviousness cannot be established by attacking the references individually when
Appeal No. 2004-0242
Application No. 09/873,594
Page 12
the rejection is predicated upon a combination of prior art disclosures. See In re Merck
& Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). In our view, the
combined teachings of Nesbitt and Wu are clearly suggestive of the claimed subject
matter as set forth above. Lastly, we incorporate the examiner's response to the
appellant's argument (answer, pp. 4-7) as our own.
For the reasons set forth above, the decision of the examiner to reject
independent claims 1, 7 and 13, and claims 4 to 6, 10 to 12 and 16 to 18 dependent
thereon, under 35 U.S.C. § 103 is affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 4 to 7, 10 to 13
and 16 to 18 under 35 U.S.C. § 103 is affirmed.
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Page 13
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 2004-0242
Application No. 09/873,594
Page 14
MICHELLE BUGBEE
SPALDING SPORTS WORLDWIDE, INC.
425 MEADOW STREET
PO BOX 901
CHICOPEE, MA 01021-0901
JVN/jg