SUMITOMO RUBBER INDUSTRIES, LTD.Download PDFPatent Trials and Appeals BoardJul 2, 20212020004382 (P.T.A.B. Jul. 2, 2021) Copy Citation 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. 16/004,618 06/11/2018 Kohei MIMURA 009700-SR0003 5695 78198 7590 07/02/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 07/02/2021 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): info@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte KOHEI MIMURA and TAKAHIRO SAJIMA __________ Appeal 2020-004382 Application 16/004,618 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, 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 1–6. Claim 7 has been canceled. Appeal Br. 11 (Claims App.). 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. Appeal Brief (“Appeal Br.”) 2, filed Feb. 19, 2020. Appeal 2020-004382 Application 16/004,618 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to golf balls.” Spec. 1:12. Claim 1, the sole independent claim on appeal, is representative of the claimed subject matter and recites: 1. A golf ball having a plurality of dimples on a surface thereof, wherein a standard deviation Su of areas of all the dimples is not greater than 1.62 mm2 , and a standard deviation Pd of distances L between dimples of all neighboring dimple pairs is not greater than 0.458 mm. Appeal Br. 11 (Claims App.). THE REJECTIONS I. Claims 1, 2, and 4–6 stand rejected under 35 U.S.C. § 103 as unpatentable over Sajima (US 2015/0031477 A1, published Jan. 29, 2015) and Aoyama (US 2004/0132551 A1, published July 8, 2004). II. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over Sajima, Aoyama, and Inoue (US 2015/0119168 A1, published Apr. 30, 2015). ANALYSIS Rejection I – Obviousness over Sajima and Aoyama Appellant does not offer arguments in favor of dependent claims 2 and 4–6 separate from those presented for independent claim 1. Appeal Br. 2–9. We select claim 1 as the representative claim, and claims 2 and 4–6 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019). As to claim 1, the Examiner finds that Sajima discloses a golf ball having a plurality of dimples on a surface thereof, wherein a standard Appeal 2020-004382 Application 16/004,618 3 deviation Su of areas of all the dimples is not greater than 1.62 mm2. Non- Final Act. 3 (citing Sajima ¶ 10, Table 3).2 The Examiner notes that “Sajima teaches that dimples may be arranged advantageously by designing a dimple pattern having a center-to-center distance as small as possible to increase the occupation ratio” and thus, “suggest[s] that neighboring dimple pairs may be set in close proximity and indicat[es] that dimple coverage is a result effective variable.” Id. (citing Sajima ¶ 96). The Examiner acknowledges that “Sajima does not report a standard deviation of distances between dimples in neighboring dimple pairs.” Id. The Examiner, however, finds that: (1) “Aoyama teaches a golf ball having dimples arranged to provide a relatively high percentage of dimple coverage” (id. (citing Aoyama Table 2)); (2) “Aoyama indicates that relatively high dimple coverage improves aerodynamic efficiency and is a result effective variable” (id. (citing Aoyama ¶ 65)); and (3) Aoyama’s “dimple arrangement reflects that dimples of all neighboring dimple pairs are nearly coincident” (id. (citing Aoyama Fig. 5; emphasis added)). The Examiner explains, “[i]t follows that [the golf ball of Aoyama’s Figure 5 has a] standard deviation of distances between dimples of all neighboring dimple pairs [of] a small value.” Id. The Examiner concludes that it would have been obvious to an ordinarily skilled artisan to modify the golf ball of Sajima to have a “standard deviation of distances between dimples of all neighboring dimple pairs being a small value, as taught by Aoyama,” to provide “a packed dimple arrangement to yield the predictable result of increasing dimple coverage.” Id. The Examiner concedes that Sajima does not “set[] forth the range of values for the standard deviation of distances between dimples of all neighboring 2 Non-Final Office Action (“Non-Final Act.”), dated Aug. 19, 2019. Appeal 2020-004382 Application 16/004,618 4 dimple pairs” as “not greater than 0.458 mm and less than 0.4 mm.” Id. at 3–4. The Examiner, however, reasons that it would have been obvious to an ordinarily skilled artisan to further modify the golf ball of Sajima “to provide a standard deviation range as claimed, 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.” Id. at 4 (citing In re Aller, 220 F.2d 454 (CCPA 1955)). Appellant contends that “neither Sajima nor Aoyama discloses a range of acceptable standard deviations Pd of distances L between dimples of neighboring dimple pairs, much less, the claimed range of standard deviations Pd of distances L between dimples of neighboring dimple pairs being not greater than 0.458 mm.” Appeal Br. 5–6 (emphases added). Appellant, here, incorrectly characterizes claim 1 as requiring a range of values. Claim 1 only requires a golf ball having two structural requirements: (1) a standard deviation Su of areas of all the dimples that is not greater than 1.62 mm2 and (2) a standard deviation Pd of distances L between dimples of all neighboring dimple pairs that is not greater than 0.458 mm. Appeal Br. 11 (Claims App.). That is, claim 1 does not require a plurality of golf balls having standard deviations Pd of distances L between dimples of all neighboring dimple pairs that are from 0 to 0.458 mm. A single golf ball, having any value from 0 to 1.62 mm2 for its standard deviation Su and any value from 0 to 0.458 mm for its standard deviation Pd, would meet the subject matter of claim 1. Thus, we are not persuaded by Appellant’s contention that neither Sajima nor Aoyama discloses a range of acceptable standard deviations Pd and a claimed range of standard deviations Pd. Appeal 2020-004382 Application 16/004,618 5 Appellant contends that the Examiner incorrectly concludes that “[i]t follows that the standard deviation of distances between dimples of all neighboring dimple pairs would be a small value” from the Examiner’s finding that Aoyama’s “dimple arrangement [in its golf ball as shown in Aoyama’s Figure 5] reflects that dimples of all neighboring dimple pairs are nearly coincident.” Appeal Br. 6. Appellant argues that “the Examiner’s conclusion appears to be based entirely on the assumption that increasing dimple coverage necessarily results in a sufficiently small standard deviation Pd of distances L between dimples of ‘neighboring dimple pairs’ to satisfy the claimed range of ‘not greater than 0.458 mm.’” Id. To demonstrate that “maximizing the surface area of a golf ball occupied by dimples is not the same as reducing the distance L between dimples of ‘neighboring dimple pairs,’” Appellant provides two figures in its Appeal Brief. Id. More particularly, Appellant’s Figure 1 illustrates four small dimples arranged to have a land area therebetween of L1x by L1y. Id. Appellant’s Figure 2 illustrates two small dimples and two large dimples (in comparison to the dimples of Figure 1) arranged to have a land area therebetween of L2x by L2y. Id. at 7. Appellant argues that although “the dimple diameters in Fig. 2 are larger than the dimple diameters in Fig. 1,” “the land area in Fig. 2 is smaller than a land area in Fig. 1.” Id. This argument is not well-taken. First, Appellant’s Figures 1 and 2 in the Appeal Brief appear to be presented to show that smaller dimple diameters does not necessarily result in a golf ball that has more surface area occupied by the dimples. See Appeal Br. 6–7. However, we note that the surface area occupied by the dimples is not recited in claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the Appeal 2020-004382 Application 16/004,618 6 claims.”). Further, Appellant does not explain how a standard deviation Pd is determined in a golf ball having a dimple arrangement of Appellant’s Figure 1 or a dimple arrangement of Appellant’s Figure 2 to correlate with the above assertion concerning dimple diameter and surface areas of the dimples. See Appeal Br. 6–7. Consequently, it is unclear why an assumption that increasing dimple coverage necessarily results in a sufficiently small standard deviation Pd of distances L between dimples of “neighboring dimple pairs” would not satisfy a standard deviation Pd range of “not greater than 0.458 mm.” We also note that Appellant’s Figure 2 has different-sized dimples, whereas Figure 1 has same-sized dimples. See Appeal Br. 6–7. We observe that claim 1 does not require the golf ball to have different-sized dimples. A standard deviation is a statistic that measures the dispersion of a dataset relative to its mean.3 It stands to reason that a standard deviation Su of areas of all the dimples of 0 (which is not greater than 1.62 mm2) would mean that the dimples are of the same size. With such dimples of the same size that are touching each other (i.e., “coincident” (see Non-Final Act. 3)), the golf ball would have a standard deviation Pd of distances L between dimples of all neighboring dimple pairs of 0 (which is not greater than 0.458 mm). Thus, it appears to us that such a dimple arrangement would meet the subject matter of claim 1. Second, even when considering golf balls having different-sized dimples, the Examiner correctly responds that the dimple arrangement shown in Aoyama’s Figure 5 is relied on and that Appellant’s dimple 3 See https://www.investopedia.com/terms/s/standarddeviation.asp (last accessed May 21, 2021). Appeal 2020-004382 Application 16/004,618 7 arrangement in its Figure 2 does not have the same dimple arrangement. See Ans. 3 (responding that Appellant’s Figures 1 and 2 “depict a dimple arrangement leaving relatively large unoccupied land areas,” whereas Aoyama teaches “increas[ing] the dimple coverage by arranging dimples of multiple sizes according to Figure 5 of Aoyama rather than according to [A]ppellant’s figures, which leave a significant amount of unoccupied space”); see also Appeal Br. 6–7.4 As such, Appellant’s contention does not apprise us of Examiner error. Appellant next argues that “the adjacent dimples of Aoyama are not ‘neighboring dimple pairs’ according to claim 1 and the present [S]pecification since the adjacent dimples do not satisfy the conditions set forth in the [S]pecification” and thus, it is unreasonable for the Examiner to conclude that the golf ball of Aoyama’s Figure 5 has a standard deviation of distances between dimples of all neighboring dimple pairs of a small value. Appeal Br. 7–8. Appellant’s naked assertion that “the adjacent dimples of Aoyama are not ‘neighboring dimple pairs’” does not inform us of Examiner error. As Appellant notes, the Specification discloses that “neighboring dimple pairs” must meet the following two requirements: (1) a straight line that connects the centers of these dimples to each other does not intersect any other dimple, and (2) each of the two common inscribed lines of these dimples does not intersect any dimple. Appeal Br. 7 (citing Spec. 17:2–9). We note that requirement (2) above is rather broad. Requirement (2) does not define “common inscribed lines.” See Spec. 17:8–9; see also generally, Spec. It appears to us that there could be “common inscribed lines” other than the 4 Examiner’s Answer (“Ans.”), dated Mar. 25, 2020. Appeal 2020-004382 Application 16/004,618 8 tangent Tg lines depicted in Appellant’s Figures 6 and 8. See Spec. Figs. 6, 8, 10:11–14. Nonetheless, even if we consider the recited “neighboring dimple pairs” in claim 1 as dimple pairs that meet the above two requirements with “common inscribed lines” as the diagonal Tg lines depicted in Appellant’s Figures 6 and 8, we fail to see why two adjacent dimples that are either touching each other or are very close to touching each other, as depicted in Aoyama’s Figure 5, do not meet the above two requirements. We thus fail to see why Aoyama does not disclose “neighboring dimple pairs.” Given that Aoyama discloses “neighboring dimple pairs” in its Figure 5, and the “neighboring dimple pairs” either touch each other (i.e., “coincident”) or are close to touching each other, we agree with the Examiner’s assessment that the standard deviation of distances between Aoyama’s “neighboring dimple pairs” would be a small value. As pointed out above, if all “neighboring dimple pairs” touch each other, then the distance between them is 0 and the standard deviation would be also 0. See also Ans. 4 (discussing that Aoyama’s “neighboring dimple pairs” meet the two requirements discussed in Appellant’s Specification). Consequently, we agree with the Examiner’s assessment that the dimple arrangement in Aoyama’s Figure 5 having an increased dimple coverage would “inherently reduce the standard deviation of distances between dimples of neighboring dimple pairs.” Ans. 3; see also id. at 4 (“The dimple arrangement depicted in Figure 5 of Aoyama shows a closely packed arrangement intended to increase dimple coverage and consequently the distance between adjacent dimples [(‘neighboring dimple pairs’)] is generally uniform, suggesting a relatively small standard deviation of distances between the adjacent dimples [(‘neighboring dimple pairs’)].”). Appeal 2020-004382 Application 16/004,618 9 We further observe the following. First, Appellant does not address the rejection as set forth by the Examiner. Here, the Examiner takes the position that the standard deviation of distance between “neighboring dimple pairs” as claimed is obvious because “discovering the optimum or working ranges involves only routine skill in the art.” Non-Final Act. 4 (citing In re Aller). In other words, the Examiner determines that the standard deviation of distance between “neighboring dimple pairs” is a result-effective variable. See also Ans. 5 (“The [E]xaminer maintains the position that the degree of dimple coverage is a result effective variable, . . . and a commensurately small standard deviation of distances between dimples of neighboring dimple pairs would follow”). Appellant does not appear to dispute this determination. “[W]here 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”). In re Aller, 220 F.2d at 456. “[T]he discovery of an optimum value of a variable in a known process is usually obvious.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters for prior art result-effective variables “flows from the ‘normal desire of scientists or artisans to improve upon what is already generally known.’” Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).) Second, in regard to claim 1’s requirement, “a standard deviation Pd of distances L between dimples of all neighboring dimple pairs is not greater than 0.458 mm,” Appellant directs our attention to Table 3 of the Specification. Appeal Br. 3–4 (arguing that the golf balls in Appellant’s Tables have “excellent flight performance”). Although Table 3 shows 4 examples, each having a standard deviation Pd of L that is equal to or less than 0.458 mm, Table 3 does not provide any data in terms of flight Appeal 2020-004382 Application 16/004,618 10 performance of golf balls that have a standard deviation Pd of L that is greater than 0.458 mm. Thus, there is no comparison data to show that the golf balls in Appellant’s Table 3 do indeed have “excellent flight performance.” In regard to Appellant’s Table 4, the flight distance of Comparative Example 1 is 261.4 m, which is better than the flight distance of Appellant’s Example 5 which is 260.6 m. We thus observe that, contrary to Appellant’s assertion, viewing the entirety of the data in Tables 3 and 4, Appellant’s Specification does not show significant advantages in the flight performance of Appellant’s golf balls. Consequently, we agree with the Examiner that Appellant has not demonstrated criticality with regard to the claimed subject matter. See Ans. 5. As such, Appellant has not shown the occurrence of unpredictable results in regard to the claimed subject matter. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 416 (2007). Id. at 416. As such, we agree with the Examiner that the modification of Sajima’s golf ball with closely packed dimples as taught by Aoyama would “yield predictable results.” See Non-Final Act. 3. In summary, and based on the record presented, we sustain the Examiner’s rejection of claim 1 as unpatentable over Sajima and Aoyama. We further sustain the rejection of claims 2 and 4–6, which fall with claim 1. Rejection II – Obviousness over Sajima, Aoyama, and Inoue Appellant does not provide any arguments as to the rejection of claim 3. Appeal Br. 9. Accordingly, as we find no deficiencies in the Examiner’s rejection of claim 1, we likewise sustain the Examiner’s rejection of claim 3, Appeal 2020-004382 Application 16/004,618 11 for reasons similar to those discussed above for claim 1, as unpatentable over Sajima, Aoyama, and Inoue. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6 103 Sajima, Aoyama 1, 2, 4–6 3 103 Sajima, Aoyama, Inoue 3 Overall Outcome 1–6 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 Copy with citationCopy as parenthetical citation