Kazuya Kamino et al.

Patent Trials and Appeals Board

Nov 27, 2019

15490285 - (D) (P.T.A.B. Nov. 27, 2019)

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.
15/490,285 04/18/2017 Kazuya KAMINO 3673-0603PUS1 6686
2292 7590 11/27/2019
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
SIMMS JR, JOHN ELLIOTT
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUYA KAMINO, HIDETAKA INOUE,
and KOHEI MIMURA
Appeal 2019-002676
Application 15/490,285
Technology Center 3700
BEFORE JOHN C. KERINS, MICHAEL J. FITZPATRICK, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as SUMITOMO
RUBBER INDUSTRIES, LTD. Br. 1.
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Application 15/490,285
2
CLAIMED SUBJECT MATTER
The claims are directed to golf balls. Spec. 1:11. Claim 1,
reproduced as the sole independent claim on appeal, is illustrative of the
claimed subject matter:
1. A golf ball comprising a core, a mid layer positioned
outside the core, and a cover positioned outside the mid layer,
wherein
a thickness Tm (mm) and a Shore D hardness Hm of the
mid layer, a thickness Tc (mm) and a shore D hardness Hc of the
cover, and an amount of compressive deformation Sb (mm) of
the golf ball meet the following mathematical formula (2),
((Sb * Tc) / (Hc * Hm * Tm)) * 1000 ≥ 0.77 (2),
the golf ball has a plurality of dimples on a surface thereof,
So is a ratio of a sum of areas of the dimples relative to a
surface area of a phantom sphere of the golf ball, expressed as a
percentage, and is equal to or greater than 81.0%,
Rs is a ratio of a number of the dimples each having a
diameter of equal to or greater than 9.60% but equal to or less
than 10.37%, of a diameter of the golf ball, relative to a total
number of the dimples, expressed as a percentage, and is equal
to or greater than 50%,
a dimple pattern of each hemisphere of the phantom sphere
includes three units that are rotationally symmetrical to each
other,
a dimple pattern of each unit includes two small units that
are mirror-symmetrical to each other, and
the golf ball meets the following mathematical formula
(3):
Rs ≥ -2.5 * So + 273 (3).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kasashima US 2009/0209368 A1 Aug. 20, 2009
Okabe US 2010/0167841 A1 July 1, 2010
Tachibana US 2013/0095954 A1 Apr. 18, 2013
REJECTION2
Claims 1–10 stand rejected under 35 U.S.C. § 103 as unpatentable
over Tachibana, Kasashima, and Okabe.
OPINION
Appellant argues claims 1–10 as a group. Br. 6–9. We select claim 1
as representative, and claims 2–10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Regarding independent claim 1, the Examiner finds, inter alia, that
Tachibana teaches a golf ball with the following parameters: (i) a mid layer
with a thickness (Tm) of 1.0 mm and a hardness (Hm) of 65 Shore D; (ii) a
cover with a thickness (Tc) of 0.5 and a hardness (Hc) of 30 Shore D; and
(iii) a compressive deformation (Sb) of 2.8 mm. Final Act. 4 (citing
Tachibana ¶ 96, Table 8, Example 1). The Examiner performs the following
calculation, in accordance with formula (2), as claimed:
((2.8 * 0.5) / (30 * 65 * 1.0)) * 1000 = 0.72.
The Examiner recognizes that claim 1 requires an outcome of greater or
equal to 0.77, and that 0.72 is less than 0.77.

2 The Examiner’s rejection of claims 1–10, and separately of claims 7 and 8,
under 35 U.S.C. § 112(b) have been withdrawn. Ans. 3; Final Act. 2–3.
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Notwithstanding, the Examiner determines that any value greater than
3.0 mm for the compressive deformation in formula (2), while maintaining
the other parameters as disclosed supra, meets the claim requirements. Final
Act. 4; Ans. 3. Thus, the Examiner relies on Tachibana’s disclosure of a
range of values for compressive deformation (Sb), namely, from 2.0 to 3.3
mm, and selects a value of 3.1 mm from the disclosed range to demonstrate
that the following calculation results in a value of 0.79, which is equal to or
greater than 0.77, as required by claim 1:
((3.1 * 0.5) / (30 * 65 * 1.0)) * 1000 = 0.79.
Final Act. 4 (citing Tachibana ¶ 112); Ans. 3.
The Examiner reasons that Tachibana discloses the general conditions
of claim 1, and also evidences that compressive deformation is recognized in
the prior art as a result-effective variable. Final Act. 4 (citing In re Aller,
220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation”); Ans. 3; see also In re
Antonie, 559 F.2d 618, 620 (CCPA 1977) (explaining that this rule is limited
to cases in which the optimized variable is a “result-effective variable”).
Indeed, we agree with the Examiner that Tachibana is evidence that
the compressive deformation of a golf ball was recognized as a result-
effective variable, because Tachibana discloses, for example, that “[by]
causing the compression deformation amount to be 2.0 mm or more,
desirable shot feeling is obtained,” and “[by] causing the compression
deformation amount to be 3.3 mm or less, desirable repulsion is obtained.”
Tachibana ¶ 112; see Ans. 3 (“the compressive deformation of the ball is a
result effective variable affecting shot feel and repulsion and providing for
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compressive deformation in the range of 2.0 to 3.3”) (citing Tachibana ¶
112).
The Examiner further determines that
[i]t is understood by those of ordinary skill in the art that varying
the hardness profile of the core affects the compressive
deformation of the ball and that the core hardness may be altered
without altering the thickness or hardness of the mid layer and
the cover, such that Tachibana suggests a ball satisfying
inequality expression (2).
Ans. 4 (emphasis added). This position is supported by recognition that
formula (2) includes as variables the hardness values for a mid layer and a
cover, but no variable for a core hardness). Thus, the Examiner determines
that it would have been obvious “to alter [Tachibana’s golf ball’s]
compressive deformation to any extent necessary to meet the claim, since it
has been held that where the general conditions of a claim are disclosed in
the prior art, discovering the optimum or working ranges involves only
routine skill in the art.” Final Act. 4.
Alternatively, the Examiner determines that reducing the hardness of
Tachibana’s cover (Hc) from 30 to 27 Shore D, according to the teachings of
Tachibana, results in a golf ball with a compression deformation that meets
the requirements of formula (2). Adv. Act. 2; see Tachibana ¶ 110
(disclosing “Shore D hardness of the cover composition is preferably 45 or
less” and that “[b]y causing the slab hardness H7 of the cover composition to
be 45 or less, the spin rate upon an approach shot with a short iron is
enhanced” and also that “to ensure a sufficient spin rate upon an approach
shot, the slab hardness H7 in Shore D hardness of the cover composition is
preferably 20 or more”). Indeed, selecting a value of 27 for Hc in the
following calculation, in accordance with formula (2), as claimed, results in
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a value of 0.80, which is equal to or greater than 0.77, as required by claim
1:
((2.8 * 0.5) / (27 * 65 * 1.0)) * 1000 = 0.80.
First, Appellant argues that “[i]f the compressive deformation of the
ball of Example 1 is changed to 3.3 mm, this change will also affect Tm,
Hm, Tc, and Hc,” because “a single property of the ball, and in particular the
compressive deformation Sb of the whole golf ball, cannot be changed
without affecting the other properties (the layers making up the golf ball).”
Br. 6–7. However, Appellant’s argument does not address the Examiner’s
determination, as set forth supra, that it was within the knowledge of a
person of ordinary skill in the art to modify the Shore D hardness of the core
(i.e., center 31 as depicted in Tachibana’s Figure 1)—without modifying
variables relative to the thickness and hardness of the mid layer and cover—
to predictably arrive at a compressive deformation for a three-piece golf ball
that meets formula (2), as claimed. See Tachibana ¶ 101 (recognizing that
parameters relative to the center only may be modified, i.e., the compression
deformation of the center may be modified within a range of 2.0 mm or
more and 3.8 mm or less); id. ¶ 102 (disclosing modifications to the center
surface hardness). Appellant’s argument supra also does not address the
Examiner’s finding that Tachibana itself discloses modifying the hardness of
the cover within a known range to achieve the results of formula (2), as
claimed.
Appellant also argues that the Examiner’s rejection lacks a rationale
for modifying Tachibana’s golf ball to result in the claimed invention. Br.
7–9. We disagree, in that the Examiner’s determination that the
compression deformation of the golf ball was recognized in the prior art as a
result-effective variable, when presented with the same general conditions as
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claimed, supports the Examiner’s rationale that it is not inventive to discover
the optimum or workable ranges by routine experimentation.
Appellant relies on “inventive Example 7” as compared to
“Comparative Examples 6 and 8” of the Specification as “evidence of
secondary considerations”, and concludes that “the golf ball having a value
equal to or more than 0.77 achieved unexpectedly superior result in terms of
feel at impact.” Br. 7–8. Appellant provides the following support from the
Specification:

Id. at 7; see Spec. 37:33–38:1 (disclosing that “[t]he evaluation was
categorized . . . on the basis of the number of golf players who answered,
‘the feel at impact was favorable’”, wherein “B: 20 to 24 persons” and “C:
15 to 19 persons”).
Appellant has not provided sufficient evidence that the results relied
upon supra for Example 7 are obtained by anything other than routine
experimentation, in view of the prior art’s recognition that the parameters of
formula (2) are result-effective variables. In other words, Appellant’s
conclusory statement that these results are unexpectedly superior lacks
factual support.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2–10 fall therewith.
CONCLUSION
The Examiner’s rejection of claims 1–10 under 35 U.S.C. § 103 as
unpatentable over Tachibana, Kasashima, and Okabe is AFFIRMED.
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Application 15/490,285
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10 103 Tachibana,
Kasashima, Okabe
1–10
Overall
Outcome
1–10

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED