Ex Parte Tachibana et al

Patent Trial and Appeal Board

Nov 9, 2017

13690651 (P.T.A.B. Nov. 9, 2017)

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.
13/690,651 11/30/2012 Kosuke TACHIBANA 5867-0121PUS2 8584
127226 7590 11/14/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOSUKE TACHIBANA and KEIJI OHAMA
Appeal 2015-007898
Application 13/690,651
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 6—11, and 16—21, which are all the pending
claims. Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Dunlop Sports Co., Ltd. as the real party in
interest. Appeal Br. 1.
Appeal 2015-007898
Application 13/690,651
CLAIMED SUBJECT MATTER
Claims 1,11, and 18 are independent. Claim 1 illustrates the claimed
subject matter and reads:
1. A colored golf ball having a color other than white and
comprising:
a core having a center and at least one intermediate layer
disposed around the center, and
a cover disposed around the core,
wherein at least one intermediate layer contains a
fluorescent dye and/or a fluorescent pigment in an amount
ranging from 0.5 part to 10 parts with respect to 100 parts by
mass of the resin component, contains a low opaque mass
adjusting agent consisting of barium sulfate in an amount
ranging from 5 parts to 30 parts with respect to 100 parts by
mass of a resin component, and has a density of 1.00 g/cm3 or
more and less than 1.20 g/cm3;
the cover contains titanium oxide in an amount of more
than 0.03 parts and a fluorescent dye and/or a fluorescent in an
amount ranging from 0.5 parts to 10 parts with respect to 100
parts by mass of a resin component.
Appeal Br. 21 (Claims App.).
REJECTIONS
I. Claims 1, 6—8, 11, 16, and 18—21 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Nagasawa (US 2010/0261550 Al,
published Oct. 14, 2010) and Kuntimaddi (US 2005/0272900 Al, published
Dec. 8, 2005).2
2 Appellants filed an Amendment After Final Rejection on January 30, 2015,
in which Appellants proposed amending claims 1 and 11 to incorporate the
subject matter of claims 4 and 14, respectively, and cancelling claims 4 and
2
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Application 13/690,651
II. Claims 9 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nagasawa, Kuntimaddi, and Keller (US 5,770,325, issued
June 23, 1998).
III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Nagasawa, Kuntimaddi, and Morgan (US 2008/0248898
Al, published Oct. 9, 2008).
ANALYSIS
Rejection I: Claims 1, 6—8, 11, 16, and 18—21 over
Nagasawa and Kuntimaddi
Claims h 6—8, and 21
As to claim 1, the Examiner finds that Nagasawa discloses a colored
golf bah comprising a core having a center 1 and an intermediate layer 2
disposed around center 1, and a cover 3 disposed around the core, and that
intermediate layer 2 and cover 3 contain a fluorescent dye and/or a
fluorescent pigment. Final Act. 3 (citing Nagasawa H 33, 34, 49—51). In
support, the Examiner states that Nagasawa discloses that “the intermediate
spherical body composed of the core . . . is a sphere colored with the similar
color as the outer cover layer.'1'’ Id.; see Nagasawa 151. The Examiner
concludes that this “mak[es] it obvious to put the fluorescent dye into the
intermediate layer to make it a ‘similar color’ to the fluorescent colored
cover.” Final Act. 3. Alternatively, the Examiner determines that adding
fluorescent pigment to the “intermediate layer . . . would simply be a
duplication of parts.” Id. (citing In re Harza, 274 F.2d 669 (CCPA I960)).
The Examiner finds that Nagasawa discloses that intermediate layer 2
14. The Examiner entered these amendments. See Advisory Act. dated
January 30, 2015; Ans. 2.
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Application 13/690,651
contains a mass adjusting agent consisting of titanium oxide, but does not
disclose that the mass adjusting agent is a low opaque mass adjusting agent
consisting of barium sulfate in the claimed amount, or that intermediate
layer 2 has the claimed density. Id. at 3^4 (citing Nagasawa 135, Table 2,
Ex. 4).
The Examiner finds that Kuntimaddi discloses a low opaque mass
adjusting agent of barium sulfate (citing Kuntimaddi 1382, “fillers used to
adjust ‘density or specific gravity’ include ‘barium sulfate’”), using the filler
in the claimed amount (citing id. 1383), and an intermediate layer having
the claimed density (citing id. 1483). Final Act. 4. The Examiner
concludes that it would have been obvious in view of these teachings to
modify the intermediate layer of Nagasawa by substituting one known
element (i.e., an intermediate layer having a density higher than 1.00 g/cm3
and a mass adjusting agent of barium sulfate in the claimed amount) for
another (i.e., an intermediate layer having “some density” and a mass
adjusting agent of titanium oxide) to obtain predictable results (i.e., “the
continued ability to have a viable golf ball whose intermediate layer has a
recognized and viable density in part because of use of barium sulfate ... to
adjust the density, the filler used in an acceptable amount of 5 to 30 parts”).
Id. at 4—5. The Examiner also determines that the use of a “low opaque”
mass adjusting agent in Nagasawa would be purely aesthetic. Id. at 5.
Appellants contend that Nagasawa does not mention barium sulfate.
Appeal Br. 10. Although we note that Nagasawa does describe the use of
barium sulfate in the core (see Nagasawa 128), Nagasawa does not teach
adding barium sulfate in the intermediate layer, which is part of the “cover.”
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Application 13/690,651
Appellants also contend that
the employment of barium sulfate and titanium oxide in the
intermediate and cover layers, respectively, together with
employment of a fluorescent dye and/or fluorescent pigment in
both these layers would result in the layers having different
colors due to the fact that barium sulfate is a low opaque mass
adjusting agent while titanium oxide is a high opaque mass
adjusting agent.
Appeal Br. 11. In response, the Examiner reasons that “it would be obvious
to use a filler in the intermediate layer to provide a similar color” as in the
cover. Ans. 17. The Examiner also states that Appellants appear to argue
that “one of ordinary skill in the art would not be motivated to use barium
sulfate because the intermediate layer and the cover layer colors would not
be ‘similar.’” Id. at 17—18.
However, the Examiner’s proposed modification of Nagasawa is
premised on the intermediate layer having a “similar color” as the cover
when a fluorescent pigment is incorporated in the intermediate layer. See
Final Act. 3. As such, this position requires the modified intermediate layer
to contain a fluorescent dye and/or fluorescent pigment in the claimed
amount, contain a low opaque mass adjusting agent consisting of barium
sulfate in the claimed amount, have the claimed density, and have a “similar
color” as the cover containing titanium oxide and a fluorescent dye and/or
pigment in the respective claimed amounts. We note that paragraph 382 of
Kuntimaddi discloses that the disclosed fillers “can be used to vary certain
properties of selected portions of the golf ball,” but does not appear to
describe how any of the listed fillers will affect the appearance of such
selected portions of the golf ball. Kuntimaddi does not appear to teach how
adding barium sulfate to the intermediate layer of Nagasawa in the claimed
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Application 13/690,651
amount, and in combination with the remaining components of the
intermediate layer and cover required by claim 1, would affect the
appearance of the golf ball. As Nagasawa only describes adding barium
sulfate to the core of the golf ball, Nagasawa likewise provides no teaching
of how barium sulfate would affect the color of the intermediate layer in the
Examiner’s proposed combination. Consequently, the Examiner has not
provided sufficient evidence to establish that adding barium sulfate along
with a fluorescent pigment in the intermediate layer would yield the
predictable result of the intermediate layer having a “similar color” as the
recited cover.3
The Examiner also takes that the position that the “visibility and
appearance” properties argued by Appellants are “purely aesthetic.” Ans.
14. In contrast, Appellants contend that, “[i]n the golf ball art, visibility and
appearance properties should be considered functional properties rather than
aesthetic properties.” Reply Br. 2. Appellants also contend that Nagasawa
“similarly evaluates visibility, luxury, and brightness.” Id.
The Examiner’s position that the “visibility and appearance” provided
by the claimed golf ball are “purely aesthetic” seems inconsistent with the
stated rationale for modifying the intermediate layer of Nagasawa, which is
premised on the intermediate layer having a “similar color” as the cover.
We also agree with Appellants that the Examiner’s “duplication of
parts” rationale is not supported by sufficient reasoning. Appeal Br. 12.
3 In this regard, we note that Morgan states, “[a]n optional filler component
may be chosen to adjust the density of the blends described herein, but care
should be taken to make sure the optical properties of the cover or the
intermediate layer remain as desired. Examples of useful fillers include . . .
barium sulfate.”). Morgan 1114 (emphasis added).
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Application 13/690,651
The claimed intermediate layer and cover do not have the same limitations.
Accordingly, it is not apparent how the intermediate layer is a “duplicat[e]”
of the cover.
For these reasons, we do not sustain the rejection of claim 1, or claims
6—8 and 21 depending therefrom, as unpatentable over Nagasawa and
Kuntimaddi.
Claims 11, 16, and 17
Claim 11 recites, inter alia, at least one intermediate layer and a cover
having the same limitations as claim 1. Appeal Br. 22—23 (Claims App.).
We do not sustain the rejection of claim 11, or claims 16 and 17 depending
therefrom, as unpatentable over Nagasawa and Kuntimaddi for the same
reasons as claim 1.
Claims 18—20
Claim 18 recites, inter alia, at least one intermediate layer and a cover
having the same limitations as claim 1. Appeal Br. 23—24 (Claims App.).
We do not sustain the rejection of claim 18, or claims 19 and 20 depending
therefrom, as unpatentable over Nagasawa and Kuntimaddi for the same
reasons as claim 1.
Rejection II: Claims 9 and 17 over Nagasawa, Kuntimaddi, and Keller
The Examiner’s application of Keller to reject claims 9 and 17 fails to
cure the deficiencies in the rejection of respective parent claims 1 and 11.
Final Act. 13. Accordingly, we do not sustain the rejection of claims 9 and
17 as unpatentable over Nagasawa, Kuntimaddi, and Keller for the same
reasons discussed above for claims 1 and 11.
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Rejection III: Claim 10 over Nagasawa, Kuntimaddi, and Morgan
The Examiner’s application of Morgan to reject claim 10 does not
cure the deficiencies in the rejection of parent claim 1. Final Act. 13—14.
Accordingly, we do not sustain the rejection of claim 10 as unpatentable
over Nagasawa, Kuntimaddi, and Morgan for the same reasons discussed
above for claim 10.
DECISION
The rejections of claims 1, 6—11, and 16—21 are reversed.
REVERSED
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