Ex Parte Sullivan

Board of Patent Appeals and Interferences

Apr 11, 2005

10179812 (B.P.A.I. Apr. 11, 2005)

1 According to the appellant, this application is a continuation of Application No. 09/121,628, filed
July 23, 1998, which is a continuation of Application No. 08/815,556, filed March 12, 1997.
2 Claims 6 and 9 were amended subsequent to the final rejection. This amendment overcame the
rejection of claims 6 to 9 under 35 U.S.C. § 101.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL J. SULLIVAN
____________
Appeal No. 2005-0806
Application No. 10/179,8121
____________
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 (mailed March 2,
2004) of claims 1 to 13, which are all of the claims pending in this application.2
We AFFIRM.
Appeal No. 2005-0806
Application No. 10/179,812
Page 2
3 Issued September 23, 2003.
4 U.S. Patent No. 4,431,193 which issued February 14, 1984 to Nesbitt.
5 U.S. Patent No. 5,222,739 which issued June 29, 1993 to Horiuchi et al. (Horiuchi).
BACKGROUND
The appellant's invention relates to improved golf balls comprising multi-layer
covers which have a hard inner layer and a relatively soft outer layer (specification, p.
1). A copy of the claims under appeal is set forth in the appendix to the appellant's
brief.
Claims 1 to 13 stand provisionally rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 8, 12 and 13 of copending
Application No. 08/815,556.
Claims 1 to 13 stand rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 14 of U.S. Patent No. 6,623,3813.
Claims 1 to 5 and 9 to 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nesbitt4 in view of Horiuchi5.
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Application No. 10/179,812
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6 U.S. Patent No. 4,884,814 which issued December 5, 1989 to Sullivan.
Claims 1 to 13 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Nesbitt in view of Horiuchi and Sullivan6.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed August 10, 2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed July 16, 2004) 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 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.
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Application No. 10/179,812
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The provisional obviousness-type double patenting rejection
We will not sustain the rejection of claims 1 to 13 under the judicially created
doctrine of obviousness-type double patenting over claims 1 to 8, 12 and 13 of
copending Application No. 08/815,556. Application No. 08/815,556 became abandoned
on August 25, 2004. Since no patent can issue on an abandoned application, there is
no basis for a provisional obviousness-type double patenting rejection.
The obviousness-type double patenting rejection
Claims 1 to 13 stand rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 14 of U.S. Patent No. 6,623,381.
In the final rejection (p. 4) and the answer (p. 5), the examiner set forth his
determination that claims 1 to 13 are not patentably distinct from claims 1 to 14 of U.S.
Patent No. 6,623,381.
The appellant has not specifically contested this rejection in the brief. Since the
appellant has not asserted any error that would cause this rejection of claims 1 to 13 to
be in error, we summarily sustain the rejection of claims 1 to 13 under the judicially
created doctrine of obviousness-type double patenting over claims 1 to 14 of U.S.
Patent No. 6,623,381.
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Application No. 10/179,812
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7 There is no antecedent basis for "said spherical intermediate ball."
The 35 U.S.C. § 103 rejection of claims 1 to 5 and 9 to 13
We sustain the rejection of claims 1 to 5 and 9 to 13 under 35 U.S.C. § 103 as
being unpatentable over Nesbitt in view of Horiuchi.
Claims 1, 9 and 10 read as follows:
1. A golf ball comprising:
a core;
an inner cover layer molded on said core, said inner cover layer
comprising a high acid ionomer including at least 16% by weight of alpha, beta-
unsaturated carboxylic acid; and
an outer cover layer molded on said inner cover layer, said outer cover
layer comprising a relatively soft polymeric low flexural modulus ionomer resin.
9. A multi-layer golf ball comprising:
a spherical core;
an inner cover layer molded over said spherical core, said inner cover
layer comprising an ionomeric resin including at least 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 molded over said spherical intermediate ball[7] to form
a multi-layer golf ball, said outer cover layer having a modulus in a range of
about 1,000 to about 30,000 psi.
10. A multi-layer golf ball comprising:
a spherical core;
an inner cover layer molded over said spherical core to form a spherical
intermediate ball, said inner cover layer comprising an ionomeric resin including
about 17% to about 25% by weight of an alpha, beta-unsaturated carboxylic acid
and having a modulus of from about 15,000 to about 70,000 psi; [and]
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an outer cover layer molded over said spherical intermediate ball to form a
multi-layer golf ball, the outer layer comprising an ionomeric material, said outer
cover layer having a modulus in a range of about 1,000 to about 30,000 psi.
Nesbitt's invention relates to 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 golf ball has a solid center or core 12 of resilient polymeric or
similar material covered by a first layer or ply 14 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 16 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. Nesbitt teaches
(column 1, lines 57-60) that "[t]hrough 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 14 is a
resinous material such as type 1605 Surlyn® which is a hard, high flexural modulus resin
which produces a substantial gain of coefficient of restitution over the coefficient of
restitution of the core or center. The outer layer, ply, lamination or cover 16 is a
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resinous material such as type 1855 Surlyn® which is a comparatively soft, low flexural
modulus resinous material.
Horiuchi's invention relates to a golf ball having excellent impact resilience and
flying performance, of which the cover is formed from an ionomer resin which contains
an alpha, beta-ethylenic unsaturated carboxylic acid in a larger amount than
conventional ionomer resins. In the background of the invention, Horiuchi provides that
it is known to compose a golf ball of a core and a cover covering the core wherein the
ionomer resin which is used as the cover of the golf balls contain alpha, beta-ethylenic
unsaturated carboxylic acid in an amount of less than 15% by weight. In the summary
of the invention, Horiuchi states that
It has been surprisingly found that a carboxyl-rich ionomer resin which
contains 16 to 30% by weight of an alpha, beta-ethylenic unsaturated carboxylic
acid significantly improves the properties of the golf balls, such as impact
resilience and flying performance. Thus, the present invention provides a golf ball
which comprises a core and a cover covering the core, wherein the cover
contains at least 20% by weight of a carboxyl-rich ionomer resin prepared by
neutralizing 15 to 80 mol % of carboxylic acid groups of an olefinic copolymer
containing 16 to 30% by weight of an alpha, beta-ethylenic unsaturated
carboxylic acid with monovalent or divalent metal ions.
Horiuchi then provides (column 1, lines 50-59) that
an amount of the alpha, beta-ethylenic unsaturated carboxylic acid is limited to
16 to 30% by weight, preferably 20 to 30% by weight, based on the total
monomer weight. Thus, the balance of the monomer is the alpha-olefin. If the
amount of the alpha, beta-ethylenic unsaturated carboxylic acid is less than 16%
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Application No. 10/179,812
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by weight, a stiffness modulus is low and an impact resilience is low, thus
resulting in poor flying performance.
Horiuchi also teaches (column 2, lines 16-18) that it is preferred that the carboxyl-rich
ionomer resin of the present invention has a stiffness modulus of 3,000 to 6,000 Kgf/cm2
which converts to about 42,670 to 85,340 psi.
In addition to the teachings of Nesbitt and Horiuchi, the examiner cited additional
references in the parent application (Application No. 09/121,628) to interpret the
teachings of Nesbitt particularly to those skilled in the art at the relevant time. See
Studiengesellschaft Kohle v. Dart Indus., Inc., 726 F.2d 724, 726-727, 220 USPQ 841,
842-843 (Fed. Cir. 1984). In particular, the examiner cited (answer in parent Application
No. 09/121,628, p. 4) (1) U.S. Patent No. 5,061,757 to Warner for the teaching that type
1855 Surlyn® is a zinc ionomer of an ethylene/acrylic acid copolymer having 10% acid;
(2) U.S. Patent No. 4,187,358 to Kyo et al. for the teaching that type 1855 Surlyn® has
a flex modulus of 640 Kg/cm2 which converts to about 9,000 psi; and (3) U.S. Patent
No. 5,387,470 to Parnell et al. for the teaching that type 1605 Surlyn® is a sodium
ionomer of ethylene/methacrylic acid copolymer having 15% acid.
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8 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).
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).
Based on our analysis and review of Nesbitt and claims 1, 9 and 10, it is our
opinion that the differences are: (1) the inner cover layer comprising a high acid ionomer
including at least 16% by weight of alpha, beta-unsaturated carboxylic acid as recited in
claim 1; (2) the inner cover layer comprising an ionomeric resin including at least 16%
by weight of an alpha, beta-unsaturated carboxylic acid and having a modulus of from
about 15,000 to about 70,000 psi as recited in claim 9; and (3) the inner cover layer
comprising an ionomeric resin including about 17% to about 25% by weight of an alpha,
beta-unsaturated carboxylic acid and having a modulus of from about 15,000 to about
70,000 psi as recited in claim 10.
In applying the test for obviousness,8 we reach the conclusion that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified the resinous material used for the inner cover of Nesbitt's golf ball to
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Application No. 10/179,812
Page 10
be an ionomer resin containing about 20% alpha, beta-ethylenic unsaturated carboxylic
acid as suggested by the teachings of Horiuchi to improve the impact resilience of the
inner cover and thus increase the coefficient of restitution of the inner cover and the golf
ball.
The appellant argues that there is no motivation, absent the use of impermissible
hindsight, for a person of ordinary skill in the art to have modified the inner cover 14 of
Nesbitt's golf ball from the teachings of Horiuchi and that the teachings of Horiuchi
would have made it obvious to have modified the outer cover 16 of Nesbitt's golf ball.
We do not agree. Nesbitt clearly teaches (column 2, lines 40-65) that the inner cover 14
of Nesbitt's golf ball is a hard, high flexural modulus resin which "is employed to
increase the coefficient of restitution in order to attain or approach the maximum initial
velocity for the golf ball" and that the outer cover 16 of Nesbitt's golf ball is a soft low
flexural modulus resin which "provides little or no gain in the coefficient of restitution." In
our view, Horiuchi's teaching to use a carboxyl-rich ionomer resin which contains
preferably 20 to 30% by weight of an alpha, beta-ethylenic unsaturated carboxylic acid
to significantly improve the properties of a golf ball, such as impact resilience and flying
performance, would have made it obvious at the time the invention was made to a
person of ordinary skill in the art to have modified the cover layer of Nesbitt's golf ball
Appeal No. 2005-0806
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that Nesbitt teaches should have the maximum coefficient of restitution (i.e., inner cover
14).
With regard to claims 9 and 10, the recited inner cover layer having a modulus of
from about 15,000 to about 70,000 psi and the outer cover layer having a modulus in a
range of about 1,000 to about 30,000 psi is met by Nesbitt's inner cover 14 and outer
cover 16. Moreover, the limitation that the inner cover layer comprising an ionomeric
resin including about 17% to about 25% by weight of an alpha, beta-unsaturated
carboxylic acid is met by the combined teachings of the applied prior art for the reasons
set forth above. Lastly, the recited inner cover layer having a modulus of from about
15,000 to about 70,000 psi is met by Horiuchi's cover material when such material is
substituted for the inner cover layer of Nesbitt's golf ball.
In the brief (p. 9), the appellant has referenced the Board decision (mailed
September 17, 2001) in an earlier appeal in parent Application No. 08/815,556. The
appellant also makes reference to the Board decision (mailed April 25, 2002) in another
appeal in parent Application No. 09/121,628. In addition, prior to the filing of the brief in
this application, this panel of the Board rendered another decision (mailed June 24,
2004) in another appeal in parent Application No. 08/815,556. We have reviewed the
three Board decisions and note that our decision herein is in harmony with our decisions
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Application No. 10/179,812
Page 12
9 Our decision herein is also in harmony with our decision rendered in Application No. 10/047,626.
of April 25, 2002 in Application No. 09/121,628 and June 24, 2004 in Application No.
08/815,556.9 As to the September 17, 2001 Board decision in parent Application No.
08/815,556, we note that the issue in that appeal was whether or not the claims under
appeal would have been obvious at the time the invention was made to a person of
ordinary skill in the art from the teachings of Nesbitt and U.S. Patent No. 5,068,151 to
Nakamura. Thus, the issues in this appeal are different than the issue decided in that
appeal.
For the reasons set forth above, the decision of the examiner to reject claims 1, 9
and 10 under 35 U.S.C. § 103 as being unpatentable over Nesbitt in view of Horiuchi is
affirmed. The decision of the examiner to reject claims 2 to 5 and 11 to 13 under
35 U.S.C. § 103 is also affirmed since the appellant has not challenged the rejection of
these dependent claims with any reasonable specificity, thereby allowing claims 2 to 5
and 11 to 13 to fall with claims 1, 9 and 10 (see In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987)).
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Application No. 10/179,812
Page 13
10 Thus, we regard the examiner's application of the teachings of Sullivan to be mere surplusage
with regard to the rejection of these claims.
The 35 U.S.C. § 103 rejection of claims 1 to 13
We sustain the rejection of claims 1 to 13 under 35 U.S.C. § 103 as being
unpatentable over Nesbitt in view of Horiuchi and Sullivan. With respect to claims 1 to 5
and 9 to 13, the rejection is sustained for the reasons set forth above.10
Claim 6 reads as follows:
A golf ball according to claim 1 wherein the outer layer comprises a low
flexural modulus ionomer resin which includes a blend of a hard high modulus
ionomer with a soft low modulus ionomer.
Based on our analysis and review of Nesbitt and claim 6, it is our opinion that the
differences are (1) the inner cover layer comprising a high acid ionomer including at
least 16% by weight of alpha, beta-unsaturated carboxylic acid as recited in claim 1;
and (2) the outer layer comprising a blend of a hard high modulus ionomer with a soft
low modulus ionomer as recited in claim 6.
Sullivan's invention relates to golf ball technology, and more particularly, golf ball
cover technology. Sullivan teaches that ionomers have been widely used as golf ball
cover materials for the past 15 years and that while these ionomers are very durable,
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they have a deficiency as a golf ball cover material in that they tend to be hard. This
invention is concerned with a mixture of a hard ionomer with a soft ionomer in
order to produce a golf ball cover composition wherein the cover is softer than the prior
art ionomer covers. Sullivan states that a golf ball covered in accordance with his
invention is durable and a skilled golfer can impart back spin to the ball in play.
Sullivan teaches that (1) for over a decade the trade attempted to solve the
problem associated with Surlyn® covered golf balls by the blending of hard Surlyn® with
a soft Surlyn®; (2) until his invention, the blending of a hard Surlyn® and a soft Surlyn®
was totally unsatisfactory in the production of a commercially viable golf ball; and (3) in
accordance with his invention, it has been found that when a hard Surlyn® or a mixture
of hard Surlyn® resins are blended with a soft Surlyn® which is a terpolymer of
methacrylic acid and iso- or n-butylacrylate partially neutralized with a metal salt, a
superior golf ball cover formulation is produced. Sullivan provides that the resulting
cover composition of his invention is intermediate in softness between a balata covered
golf ball and a hard Surlyn® covered golf ball, to such a degree that an adequate back
spin can be imparted to the ball by a skilled golfer. Further, the resulting golf ball
exhibits a degree of cut resistance which is adequate for play and which exhibits
outstanding distance properties which is exhibited by its coefficient of restitution and/or
initial velocity.
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The high modulus ionomer taught by Sullivan has a flexural modulus of from
about 30,000 to 55,000 psi and a hardness of from about 60 to 66 on the Shore D
scale. The hard Surlyn® resins used in this invention are ionic copolymers which are the
sodium or zinc salts of the reaction product of an olefin having from 2 to 8 carbon atoms
and an unsaturated monocarboxylic acid having from 3 to 8 carbon atoms. The low
modulus ionomer taught by Sullivan has a modulus of from about 3,000 to about 7,000
psi and a hardness of from about 25 to about 40 as measured on the Shore D scale.
The low modulus ionomer may be a sodium or zinc salt of a terpolymer of an olefin
having from 2 to 8 carbon atoms, an unsaturated monocarboxylic acid having from 3 to
8 carbon atoms and an unsaturated monomer of the acrylate ester class having from 2
to 22 carbon atoms.
In applying the above-noted test for obviousness, we reach the conclusion that it
would have been obvious at the time the invention was made to a person of ordinary
skill in the art to have modified (1) the resinous material used for the inner cover of
Nesbitt's golf ball to be an ionomer resin containing about 20% alpha, beta-ethylenic
unsaturated carboxylic acid as suggested by the teachings of Horiuchi to improve the
impact resilience of the inner cover and thus increase the coefficient of restitution of the
inner cover and the golf ball for the reasons set forth above with respect to claims 1, 9
and 10; and (2) the resinous material used for the outer cover of Nesbitt's golf ball to be
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Application No. 10/179,812
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a blend of a hard high modulus ionomer with a soft low modulus ionomer as suggested
by the teachings of Sullivan to improve the impact resilience of the outer cover and thus
increase the coefficient of restitution of the golf ball while maintaining the ability of a
skilled golfer to impart adequate back spin to the golf ball.
The appellant argues (brief, p. 11) that (1) Sullivan does not remedy the
previously discussed deficiencies of Nesbitt and Horiuchi; and (2) there is no motivation
to combine Sullivan with Nesbitt and Horiuchi to arrive at the golf ball of claim 6. These
arguments are unpersuasive for the following two reasons. First, as explained
previously we see no deficiency in the teachings of Nesbitt and Horiuchi with respect to
claim 1 on appeal. Second, we believe there is motivation in the applied prior art, taken
as a whole, that would have suggested the limitations set forth in claim 6 for the reasons
set forth in the previous paragraph.
For the reasons set forth above, the decision of the examiner to reject claim 6
under 35 U.S.C. § 103 as being unpatentable over Nesbitt in view of Horiuchi and
Sullivan is affirmed. The decision of the examiner to reject claims 7 and 8 under
35 U.S.C. § 103 is also affirmed since the appellant has not challenged the rejection of
these claims with any reasonable specificity, thereby allowing claims 7 and 8 to fall with
claim 6 (see In re Nielson, supra).
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CONCLUSION
To summarize, the decision of the examiner to provisionally reject claims 1 to 13
under the judicially created doctrine of obviousness-type double patenting over claims 1
to 8, 12 and 13 of copending Application No. 08/815,556 is reversed; the decision of the
examiner to reject claims 1 to 13 under the judicially created doctrine of obviousness-
type double patenting over claims 1 to 14 of U.S. Patent No. 6,623,381 is affirmed; the
decision of the examiner to reject claims 1 to 5 and 9 to 13 under 35 U.S.C. § 103 as
being unpatentable over Nesbitt in view of Horiuchi is affirmed; and the decision of the
examiner to reject claims 1 to 13 under 35 U.S.C. § 103 as being unpatentable over
Nesbitt in view of Horiuchi and Sullivan is affirmed.
Since at least one rejection of each of the appealed claims has been affirmed,
the decision of the examiner is affirmed.
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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. 2005-0806
Application No. 10/179,812
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THE TOP-FLITE GOLF COMPANY, A WHOLLY OWNED
SUBSIDIARY OF CALLAWAY GOLF COMPANY
2180 RUTHERFORD ROAD LEGAL DEPT
CARLSBAD, CA 92008-7328
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