VOLVIK, INC.

Patent Trials and Appeals Board

Feb 9, 2021

2020003223 (P.T.A.B. Feb. 9, 2021)

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.
15/939,959 03/29/2018 In-Hong HWANG 16129-000097-US 8779
28997 7590 02/09/2021
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
St. Louis, MO 63105
EXAMINER
STANCZAK, MATTHEW BRIAN
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/09/2021 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):
bkamer@hdp.com
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IN-HONG HWANG and KYUNG-AHN MOON
____________

Appeal 2020-003223
Application 15/939,959
Technology Center 3700
____________

Before JUSTIN BUSCH, AMEE A. SHAH, and ROBERT J. SILVERMAN,
Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–3 and 5–13, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Volvik, Inc.” Appeal Br. 3.
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Application 15/939,959

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CLAIMED SUBJECT MATTER
The Appellant’s “invention relates to a golf ball dividing method for
symmetrically arranging dimples on a surface of a golf ball and a dimple
arrangement method of arranging dimples along the dividing line segments.”
Spec. ¶ 2. Specifically, the invention “provide[s] a golf ball which is a
spherical quasi-octahedron, wherein the dimples and lands [portions of the
ball surface between dimples] are symmetrically arranged and the land
surface is minimized, so that the flight distance and the flying stability are
improved.” Id. ¶ 12.
Claim 1 is the only independent claim on appeal, is representative of
the claims, and is reproduced below (with added lettered bracketing for
reference):
1. A golf ball comprising a surface on which dimples and lands
are symmetrically arranged within an imaginary, spherical quasi-
octahedron, wherein the imaginary, spherical quasi-octahedron
is configured to have
[(a)] a northern hemisphere and a southern hemisphere,
wherein the northern hemisphere is configured to have an
arbitrary one point of the golf ball as a north pole,
[(b)] an imaginary, polar deformed spherical triangle
which has, as three sides,
a first line segment connecting a line segment
starting from a point 51 (latitude: 0 degrees, longitude: 0
degrees) on an equator, passing through a point 63
(latitude: 36.52 degrees, longitude: 330 degrees), and
extending to a point 83 (latitude: 54.92 degrees, longitude:
270 degrees) and a line segment starting from a point 54
(latitude: 0 degrees, longitude: 180 degrees) on the
equator, passing through a point 62 (latitude: 36.52
degrees, longitude: 210 degrees), and extending to a point
83 (latitude: 54.92 degrees, longitude: 270 degrees) at the
point 83,
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Application 15/939,959

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a second line segment connecting a line segment
starting from a point 52 (latitude: 0 degrees, longitude: 60
degrees) on the equator, passing through a point 61
(latitude: 36.52 degrees, longitude: 90 degrees), and
extending to a point 82 (latitude: 54.92 degrees, longitude:
150 degrees) and a line segment starting from a point 55
(latitude: 0 degrees, longitude: 240 degrees) on the
equator, passing through a point 62 (latitude: 36.52
degrees, longitude: 210 degrees), and extending to a point
82 (latitude: 54.92 degrees, longitude: 150 degrees) at the
point 82, and
a third line segment connecting a line segment
starting from a point 53 (latitude: 0 degrees, longitude: 120
degrees) on the equator, passing through a point 61
(latitude: 36.52 degrees, longitude: 90 degrees), and
extending to a point 81 (latitude: 54.92 degrees, longitude:
30 degrees) and a line segment starting from a point 56
(latitude: 0 degrees, longitude: 300 degrees) on the
equator, passing through a point 63 (latitude: 36.52
degrees, longitude: 330 degrees), and extending to a point
81 (latitude: 54.92 degrees, longitude: 30 degrees) at the
point 81
[(c)] and includes the north pole at the center thereof, and
three imaginary, equatorial deformed spherical triangles, each of
which is provided to have one side shared with the imaginary,
polar deformed spherical triangle and two sides bisected by the
equator,
[(d)] wherein the southern hemisphere is configured so as
to have one imaginary, polar deformed spherical triangle and
three imaginary, equatorial deformed spherical triangles in the
same manner as the northern hemisphere, and
[(e)] wherein a dimple having the largest diameter is
arranged at the center of the each polar and equatorial imaginary,
deformed spherical triangles.
Appeal Br. 17–18 (Claims App.).

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Application 15/939,959

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hwang US 5,564,708 Oct. 15, 1996
Marotta et al. (“Marotta”) US 2005/0113187 A1 May 26, 2005

THE REJECTION
Claim 1–3 and 5–13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hwang and Marotta.

OPINION
We agree with the Appellant’s contention that the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 1 is in error because
the Examiner does not provide adequate reasoning for how Hwang renders
obvious limitation (e) of a dimple having the largest diameter being arranged
at the center of the deformed spherical triangles. See Appeal Br. 14, Reply
Br. 4–5.
The Examiner finds, in relevant part, that Hwang teaches the golf ball
of independent claim 1 “comprising a surface on which dimples and lands
are symmetrically arranged.” Final Act. 3 (bolding omitted) (citing Hwang,
Fig. 5). The Examiner acknowledges that “Hwang does not specifically
disclose a dimple having the largest diameter is arranged at the center of the
deformed spherical triangle,” but finds that “Hwang specifically discloses
placing ‘a larger dimple’ at the center.” Id. at 5 (bolding omitted) (citing
Hwang, Fig. 6, col. 4, ll. 31–33). The Examiner then finds that:
(1) “regarding using the largest dimple at the center, it has been held that
where the general conditions of a claim are disclosed in the prior art, it is not
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inventive to discover the optimum or workable ranges by routine
experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955)”; (2) the Specification does not give “criticality to having the
largest dimple at the center”; and (3) “dimple size/diameter is a result-
effective variable (i.e. a variable which achieves a recognized result),” as
evidenced by Marotta, which “can be optimized or found though routine
experimentation.” Id. (citing Spec. ¶ 70, Marotta ¶ 16). The Examiner
concludes “[t]hus, it would have been obvious to one of ordinary skill in the
art at the time of the invention that the diameter size of the dimple at the
center of the spherical triangle could be found through routine
experimentation in order to optimize flight performance.” Id.
Hwang discloses “a golfball having a plurality of dimples in its outer
spherical surface,” with the dimples having “various sizes and depths and
[being] configured in a pattern that is based upon dividing the golfball’s
surface into a spherical octahedron having eight octahedral triangles and a
spherical hexaoctahedron having eight hexaoctahedral triangles and six
hexaoctahedral quadrangles.” Hwang, Abst. Hwang “adjusts size,
displacement, and depth of dimples in connection with dimple patterns to
attain improved aerodynamic balance and flight stability with overall longer
flight distances.” Id. at col. 1, ll. 58–61. One embodiment uses six different
dimple sizes (diameters) whereby a diameter of a given size classification
dimple should be equivalent with one another but between 1.1 and 1.3 times
greater than the diameter of the next largest size. Id. at col. 3, l. 62–col. 4,
l. 4. For example, A>B>C>D>E>F whereby 1.1B≤A≤1.3B. Id. at col. 3,
ll. 62–67. “Around the centers of the eight octahedral triangles, six
uniformly shaped D-sized dimples are arranged so that when each center of
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the dimple is connected, a circle 14 is formed. Circle 14 could vary in size
depending on the diameter of the dimples.” Id. at col. 4, ll. 21–24. Both
poles may include a dimple. Id. at col. 4, ll. 24–27. “If a dimple is placed
within circles 14, it should be larger (e.g. a C-sized dimple) than the dimples
forming the circles 14.” Id. at col. 4, ll. 31–33.
We agree with the Appellant that Aller is not applicable here. Appeal
Br. 14. The Examiner finds that using the largest diameter dimple (i.e.,
Hwang’s dimple size A) at the center instead of Hwang’s larger diameter
dimple (i.e., any dimple size larger than those surrounding the center) would
be a matter of routine experimentation. However, Aller pertains to situations
where, when “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.” 220 F.2d at 456. Aller does not discuss comparisons such
as that which we have here—largest versus larger. The Examiner does not
adequately explain how having the largest dimple at the center relates to an
optimum property or workable range.
To the extent the Examiner modifies Hwang’s larger dimple at the
center to be the largest diameter dimple (see Ans. 19), the Examiner fails to
consider changes resulting from such a modification. Increasing the
diameter size of Hwang’s larger size dimple would, for example, change the
diameter size of other dimples (see Hwang, col. 3, ll. 62–67 (requiring a
specific relationship between dimple sizes)) or change the number and
pattern of dimples. The Examiner does not provide reasoning why one of
ordinary skill in the art would change Hwang’s center dimple size to be the
largest size when faced with these other changes.
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Accordingly, based on the record before us, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claim 1 and dependent
claims 2, 3, and 5–13.

CONCLUSION
The Examiner’s decision to reject claims 1–3 and 5–13 under
35 U.S.C. § 103 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–13 103 Hwang, Marotta 1–3, 5–13

REVERSED