Ex Parte Wachi

Board of Patent Appeals and Interferences

Mar 25, 2009

10378922 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TOSHIRO WACHI
__________

Appeal 2008-59861
Application 10/378,922
Technology Center 3700
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Decided:2 March 25, 2009
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Before ERIC GRIMES, MELANIE L. McCOLLUM, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL

1 Oral Hearing held March 17, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5986
Application 10/378,922

This is an appeal under 35 U.S.C. § 134 involving claims to a golf ball
manufacturing method. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 3, 4, 7, and 8 are pending and on appeal. We will focus on
claim 3, which reads as follows:
3. A method for manufacturing a golf ball, comprising the steps of:
grinding a core of another golf ball into powder rubber in which more
than 30 % of particles are more than 0.8 mm in an average particle diameter,
the another golf ball covered with one or more layers, in which 40 mass
parts or less of metal salt of α, β unsaturated fatty acids is compounded to
100 mass parts of diene rubber;
preparing a core of the golf ball by kneading 0.1 to 30 mass parts of
the powder rubber with a core material in which 40 % mass parts or less of
metal salt of α, β unsaturated fatty acids is compounded to 100 mass parts
diene rubber; and
covering the core of the golf ball with one or more layers.
Claims 3, 4, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
obvious over Yamagishi (US 5,050,886, Sep. 24, 1991) in view of Ohama
(US 6,139,447, Oct. 31, 2000) (Ans. 3).
The Examiner relies on Yamagishi for disclosing:
a golf ball comprising a core and a cover. The core is made
from polybutadiene rubber, zinc acrylate (33%, 36%, etc, see
table 2), and 10 to 65% rubber powder . . . also made from
polybutadiene rubber and zinc acrylate (5%, 20%, 31%, see
table 1 ). The diameter of the rubber particles is greater than
0.8 mm.
(Id.)
The Examiner relies on Ohama for teaching “a golf ball made from a
rubber powder. The rubber powder may be recycled rubber from the core of
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a golf ball or may alternatively be obtained by newly producing vulcanized
rubber and then grinding it into powder.” (Id.) The Examiner also relies on
Ohama for teaching kneading (id. at 5).
The Examiner concludes that “[o]ne of ordinary skill in the art would
have modified Yamagishi in view of Ohama to lower manufacturing costs”
(id. at 3). The Examiner also states that “[r]ecycling is a common practice
known in the golf art for eliminating the overflow of used golf balls found
on golf courses” (id. at 6).
ISSUE
Did the Examiner err in concluding that the process of claim 3 would
have been obvious over Yamagishi and Ohama?
FINDINGS OF FACT
1. Yamagishi discloses a golf ball comprising:
a core and a shell surrounding said core, said core composed of
(a) a matrix formed of a first, relatively hard rubber and (b) a
multiplicity of particles dispersed in said matrix and accounting
for 10-65% of the volume of said core, said particles being
formed of a second, relatively soft rubber and having a particle
size of greater than 0.8 mm but not greater than 7.0 mm.
(Yamagishi, Abstract.)
2. Yamagishi also discloses that both rubbers are “formed of
compositions mainly comprising a natural rubber and/or a synthetic rubber
having conventionally been used for two-piece golf balls” (id. at col. 2,
ll. 16-22).
3. As the relatively soft particulate rubber, Yamagishi exemplifies
compositions containing 100 parts cis-1,4-polybutadiene and from 3 to 31
parts zinc acrylate (id. at col. 2, ll. 60-62, & Table 1).
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4. As the relatively hard rubber, Yamagishi exemplifies
compositions containing 100 parts cis-1,4-polybutadiene and 33 or 36 parts
zinc acrylate (id. at col. 2, ll. 64-65, & Table 2(1)).
5. Ohama discloses a rubber composition for use in a golf ball
including a base rubber and a rubber powder (Ohama, col. 2, ll. 38-42).
6. Ohama discloses that the vulcanized rubber powder “may be
prepared from . . . recycled rubber of . . . the core of [a] two or multi-piece
golf ball” (id. at col. 3, ll. 26-30).
7. Ohama also discloses that, “[a]lternatively, the vulcanized
rubber powder is obtained by newly producing vulcanized rubber and then
grinding it into powder” (id. at col. 3, ll. 29-32).
8. To produce the rubber composition, Ohama discloses that the
“base rubber is mixed with the vulcanized rubber powder . . . using a
conventional device such as a . . . kneader” (id. at col. 5, ll. 16-20).
PRINCIPLES OF LAW
“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted). “[A]ny need or problem known in the field of endeavor at the time
of invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, ___, 127 S. Ct. 1727, 1742 (2007).
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
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art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
“Attorney’s argument in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
ANALYSIS
Yamagishi discloses a golf ball comprising a core and a shell, the core
comprising (a) a rubber matrix containing 100 parts cis-1,4-polybutadiene
and 33 or 36 parts zinc acrylate and (b) rubber particles containing 100 parts
cis-1,4-polybutadiene and from 3 to 31 parts zinc acrylate and having a
particle size of greater than 0.8 mm, the particles accounting for 10-65% of
the volume of the core (Findings of Fact (FF) 1-4).
Ohama discloses preparing rubber powder from recycled rubber of the
core of a two or multi-piece golf ball (FF 6); obtaining rubber powder by
grinding rubber into a powder (FF 7); and mixing the rubber powder with
base rubber using a kneader to form a rubber composition (FF 8). Based on
the disclosures in Ohama, we agree with the Examiner that it would have
been prima facie obvious to prepare the core of Yamagishi’s golf balls by
grinding the core of another golf ball into a powder rubber and kneading the
powder rubber with a base rubber.
Appellant argues:
[T]he Examiner has not identified . . . where either of the
references teaches or suggests “grinding another golf ball into
powder rubber in which more than 30% of particles are more
than 0.8 mm in an average particle diameter,” as recited in
claim 3. Stated differently, although Ohama . . . uses a recycled
golf ball, there is no disclosure of grinding the golf ball into a
powder rubber in which more than 30% of particles are more
than 0.8 mm in an average particle diameter.
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Appellant recognizes that Yamagishi discloses that “the particle
soft rubber has a particle size of greater than 0.8 mm”. . . .
However, the fact that a particle size, in an existing ball, is
greater than 0.8 mm before grinding does not ensure that a
particle size is greater than 0.8 mm after grinding another golf
ball. If a powder which contains particles of 0.8 mm is ground,
it is likely that the resultant particles will be less than 0.8 mm.
(App. Br.3 11.)
We are not persuaded. The Examiner does not argue that it would
have been obvious to grind Yamagishi’s golf ball to form another golf ball.
Instead, the Examiner concludes that it would have been obvious, based on
the disclosures in Ohama, to grind the core of another golf ball to form
Yamagishi’s golf ball (Ans. 4 (“It should be noted that the secondary
reference [Ohama] is cited [to] teach the use of recycled material while the
primary reference [Yamagishi] is cited to disclose the composition including
the quantities and dimensions of the ingredients.”). Yamagishi discloses
rubber powder having a particle size of greater than 0.8 mm (FF 1). Thus, in
order to form Yamagishi’s golf ball, it would have been obvious to grind the
core of the other golf ball into powder rubber having a particle size of
greater than 0.8 mm.
Appellant also argues that Ohama fails to teach or suggest “kneading
0.1 to 30 mass parts of the powder rubber” (App. Br. 13). We are not
persuaded. As discussed above, Ohama discloses that the “base rubber is
mixed with the vulcanized rubber powder . . . using a conventional device
such as a . . . kneader” (FF 8). In addition, Yamagishi discloses golf balls
containing particles “accounting for 10-65% of the volume of said core”

3 Appeal Brief dated June 28, 2005.
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(FF 1). Thus, in order to generate the golf balls disclosed in Yamagishi, we
agree with the Examiner that it would have been prima facie obvious to
knead powder rubber in the range of 0.1 to 30 mass parts recited in claim 3.
In addition, Appellant argues:
Yamagishi discloses that “the golf ball ... has a core constituted
of a relatively hard matrix rubber (*shore D hardness 55 to 65)
and a multiplicity of particles of a relatively soft rubber (*shore
D hardness 15 to 50).” . . . But, Ohama discloses that “the
vulcanized rubber before cracked and/or ground into powder
preferably has a JIS-C hardness of 40 to 95” . . . and “the
vulcanized and molded rubber composition preferably has a
JIS-C hardness of 50 to 90.” . . . Thus, Yamagishi and Ohama
disclose golf balls of different structures, and would thus, not
be combined by a skilled artisan.
(App. Br. 14-15.)
We are not persuaded. The Examiner is not combining the materials
of Yamagishi’s golf ball with the materials of Ohama. Instead, the
Examiner is relying on Ohama for disclosing techniques by which the golf
ball of Yamagishi can be prepared (Ans. 4). Both Yamagishi and Ohama
disclose rubber compositions for use in golf balls that contain particulate
rubber in a base rubber (FF 1 & 5). Therefore, we agree with the Examiner
that one of ordinary skill in the art would look to Ohama for techniques that
could be used in forming Yamagishi’s golf balls. In particular, we agree
with the Examiner that one of ordinary skill in the art would have used the
techniques disclosed in Ohama “to lower manufacturing costs” and “for
eliminating the overflow of used golf balls found on golf courses” (Ans. 3 &
6).
Appellant also argues:
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[O]ne of ordinary skill in the art would not have been motivated
to use particles from a ground golf ball having “40 mass parts
or less of metal salt of α, β unsaturated fatty acids . . .
compounded to 100 mass parts of diene rubber” in a new golf
ball “with a core material in which 40 % mass parts or less of
metal salt of α, β unsaturated fatty acids is compounded to 100
mass parts diene rubber,” because such a combination would
not improve the flight characteristics of the Yamagishi ball. In
fact, the suggested combination does not improve the flight
characteristics or hitting feel of the golf ball, as desired by each
of the prior art references. On the contrary, the asserted
combination would result in a reduction in the flight or carry of
a golf ball, which is opposite of the goals set out in the cited
references.
(App. Br. 15.)
We are not persuaded. As discussed above, Yamagishi discloses a
golf ball comprising a core comprising (a) a rubber matrix containing
100 parts cis-1,4-polybutadiene and 33 or 36 parts zinc acrylate and
(b) rubber particles containing 100 parts cis-1,4-polybutadiene and from 3 to
31 parts zinc acrylate (FF 1-4). Based on this disclosure, we agree with the
Examiner that it would have been prima facie obvious to combine particles
having “40 mass parts or less of metal salt of α, β unsaturated fatty acids . . .
compounded to 100 mass parts of diene rubber . . . with a core material in
which 40 % mass parts or less of metal salt of α, β unsaturated fatty acids is
compounded to 100 mass parts diene rubber,” as recited in claim 3. With
regard to the particles being from a ground golf ball, we agree with the
Examiner that this would have been obvious based on the disclosure in
Ohama for the reasons discussed above. In addition, with regard to flight
characteristics and hitting feel, Appellant has not provided persuasive
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evidence that the process of claim 3 provides golf balls having unexpected
properties as compared to Yamagishi’s golf balls.
In addition, Appellant argues:
[T]here is no clear disclosure (explicit or implicit) of grinding
in Yamagishi. Moreover, Ohama . . . discloses grinding, but
only with respect to the newly produced vulcanized rubber, not
recycled waste rubber. . . . Thus, to the extent one might
employ grinding in the method disclosed by Yamagishi, there is
no suggestion (at least not an explicit one) for grinding recycled
waste rubber such as from a recycled golf ball. Moreover, it is
not entirely clear how the particles would be ground so that at
least 30% are more than 0.8 mm in average diameter. The
Examiner simply assumes that this is possible, but there is no
discussion of this in either reference.
(Reply Br. 4.)
We are not persuaded. To the extent that Ohama does not teach
grinding a recycled golf ball, we agree with the Examiner that this would
have been obvious based on the teachings in Ohama. In addition, Appellant
has not persuaded us that grinding rubber so that more than 30% of the
particles are more than 0.8 mm in average diameter would not have been
within the level of ordinary skill in the art.
Appellant also argues that neither Yamagishi nor Ohama disclose “the
process of ‘grinding’ into powder rubber a core of ‘another golf ball’ mixed
with 40% mass parts or less of metal salt of unsaturated carboxylic acid”
(Reply Br. 4 (emphasis omitted)). We are not persuaded. Yamagishi
discloses rubber particles containing 100 parts cis-1,4-polybutadiene and
from 3 to 31 parts zinc acrylate (FF 3). In addition, Yamagishi discloses that
the rubber used to form the rubber particles has “conventionally been used
for two-piece golf balls” (FF 2). As discussed above, Ohama discloses
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recycling golf balls and grinding rubber to form particles (FF 6-7). Thus, we
agree with the Examiner that it would have been obvious to grind into
powder the core of another golf ball that includes 40% mass parts of metal
salt of unsaturated carboxylic acid in order to form Yamagishi’s rubber
particles.
In addition, Appellant argues:
Yamagishi is different in both its purpose and constitution from
the instant application which aims at lowering of flying distance
suited to a training ball. Yamagishi does not reduce the flying
distance. . . . As to durability, reviewing the examples and the
comparative examples in Ohama, the mixture of the powder
rubber increases the durability more than the nonmixture, and
as to the flying distance, the mixture is similar to or greater than
with respect to the non-mixture. Such effects are reverse to
those of the instant application. Since the flying distance is
similar to or increased as compared to that of a game ball, use
of the teachings in a training ball designed for low bounding
could not have been expected.
(Reply Br. 5.) However, Appellant has not provided persuasive evidence
that the process of claim 3 provides golf balls having unexpected properties
as compared to the closest prior art. Thus, we are not persuaded by this
argument.
CONCLUSION
Appellant has not shown that the Examiner erred in concluding the
process of claim 3 would have been obvious over Yamagishi and Ohama.
We therefore affirm the obviousness rejection of claim 3. Claims 4, 7, and 8
have not been argued separately and therefore fall with claim 3. 37 C.F.R.
§ 41.37(c)(1)(vii).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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