BRIDGESTONE CORPORATION et al.Download PDFPatent Trials and Appeals BoardAug 25, 20202019004729 (P.T.A.B. Aug. 25, 2020) 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. 15/378,449 12/14/2016 Kazuo UCHIDA Q229844 5545 23373 7590 08/25/2020 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/25/2020 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUO UCHIDA and ATSUSHI KOMATSU Appeal 2019-004729 Application 15/378,449 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. WOOD, 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 1–4 and 6. See Non-Final Act. Act. 1. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on July 23, 2020, a transcript of which will be entered into the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined by 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as BRIDGESTONE CORPORATION and BRIDGESTONE SPORTS CO., LTD. Appeal Br. 3. Appeal 2019-004729 Application 15/378,449 2 CLAIMED SUBJECT MATTER The claims are directed to a golf ball. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf ball having a cover, wherein, provided that lb (g·cm2) represents a moment of inertia of the golf ball, µ (mm) represents deflection hardness corresponding to a deformation amount (mm) of the golf ball in a load direction from when an initial load of 10 kgf is applied to the golf ball to when a final load of 130 kgf is applied to the golf ball, and D represents Shore D hardness of the cover, a spin change amount predictive index ΔS’ represented by the following formula: is from 3.3 to 6.2, wherein the value of µ satisfies: 3.0 mm ≤ µ ≤ 3.5 mm. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Binette US 6,413,170 B1 July 2, 2002 Sullivan US 2010/0081517 A1 Apr. 1, 2010 Dalton, J, Compression by any other name, Science and Golf IV, Proceedings of the World Scientific Congress of Golf (Eric Thain ed., Routledge, 2002) (“Dalton”). Appeal 2019-004729 Application 15/378,449 3 REJECTIONS Claims Rejected 35 U.S.C. § Reference(s)/Basis 1–4, 6 112(b) Indefiniteness 3, 4 112(b) Indefiniteness 1–4 102 Sullivan 1–4 103 Sullivan, Binette 6 103 Sullivan, Binette, Dalton OPINION A. Claims 1–4 and 6—Rejected as Indefinite The Examiner finds that claims 1–4 and 6 are indefinite because Appellant “amend[ed] claim 1 to remove the range values for D and Ib,” and therefore “the ranges of values used are indefinite making the resulting equation for ΔS’ indefinite.” Non-Final Act. 2. Appellant responds that “there is no requirement that ranges be recited for each variable in an equation recited in a patent application claim.” Appeal Br. 6. In the Answer, the Examiner counters that “[A]ppellant has removed the limitations on Shore D and MOI (i.e., essentially removed the species) to encompass any values that may work to arrive at their claimed ΔS’ range of 3.3 to 6.2 (i.e., they now essentially claim the genus . . . ).” Ans. 6. We do not to sustain this rejection. As the Examiner acknowledges, Appellant’s amendment of claim 1 broadens its scope; however, that does not, by itself, render the claim indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977) (breadth is not indefiniteness). B. Claims 3 and 4—Rejected as Indefinite Appellant does not appeal the Examiner’s rejection of claims 3 and 4 as indefinite. Appeal Br. 6. Therefore, this rejection is summarily sustained. Appeal 2019-004729 Application 15/378,449 4 See Manual of Patent Examining Procedure § 1205.02 (9th ed., Rev. 10, June 2020) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer.”). C. Claims 1–4—Rejected as Anticipated by Sullivan The Examiner finds that Sullivan discloses specific ranges for moment of inertia (“MOI”, which claim 1 designates “Ib”), “deformation/compression” (corresponding to “deflection hardness,” or μ, recited in claim 1), and shore D hardness of the golf ball cover, from which ranges values can be taken and used in the claimed ΔS’ equation to obtain a ΔS’ value that falls within the claimed range for ΔS’. See Non-Final Act. 4– 5 (citing Sullivan ¶¶ 90, 135, 138).2 Specifically, the Examiner selects a value of 76 g-cm2 for Ib, 3.5 mm for μ, and a Shore D hardness of 50; and obtains a ΔS’ value of 4.4. Id. at 4. Appellant responds that Sullivan does not anticipate the claims because it does not disclose any specific single 2 As the name implies, “deflection hardness” reflects hardness or softness of the golf ball. Spec. ¶ 16. It is determined by how much the ball deforms in a load direction when a given force is applied. Id. The specific deflection- hardness measurement disclosed in the Specification is referred to elsewhere in the record as “130-10 kg deflection” (Sullivan ¶ 135) or “the 130-10 kg test” (Dalton, 3). The higher the value of the deflection hardness, the softer the golf ball. There are other ways to quantify a ball’s hardness. For example, Sullivan uses “Atti compression,” which is a measure of the travel of a compressing spring rather than a measure of the ball’s deflection. Sullivan ¶ 135; Dalton, 1–2. Atti-compression values can be converted to deflection hardness values using a conversion factor disclosed in Dalton. Dalton, 7–9. Lower Atti-compression values correspond to higher deflection values, and vice versa. Id. at 7. Appeal 2019-004729 Application 15/378,449 5 embodiment having values for Ib, μ, and Shore D (such as those selected by the Examiner) that result in a ΔS’ value from 3.3 to 6.6. We agree. Our reviewing court has held that the disclosure of a range does not necessarily constitute a disclosure of the end points of the range or any specific point within the range. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999–1000 (Fed. Cir. 2006). Thus, Sullivan’s disclosure of ranges of Ib, μ, and Shore D from which selected values of 76, 3.5, and 50, respectively, can be taken, does not necessarily constitute a disclosure of these specific values from within the more broadly disclosed ranges. The Examiner notes that a claimed range can be anticipated if it is disclosed in the prior art “with sufficient specificity.” Ans. 7 (quoting MPEP § 2121.03(II)). Here, however, we disagree with the Examiner that the broad ranges disclosed in Sullivan disclose with sufficient specificity values that result in a ΔS’ between 3.3 and 6.6. Accordingly, we do not sustain the Examiner’s anticipation rejection. D. Claims 1–4—Rejected as Unpatentable over Sullivan and Binette Appellant argues claims 1–4 as a group. Appeal Br. 6–11. We select claim 1 as representative, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). As noted above, the Examiner finds that Sullivan discloses ranges of values for MOI/Ib, deflection hardness/μ, and Shore D hardness of the cover that encompass values that, when used in the claimed ΔS’ equation, result in ΔS’ values that fall within the claimed ΔS’ range. The Examiner further finds that Binette teaches that MOI/Ib, deflection hardness/μ, and cover Shore D hardness are result-effective variables known to control a golf ball’s Appeal 2019-004729 Application 15/378,449 6 spin. Non-Final Act. 4–5 (citing Binette, 7:29–32, 8:39–42, 36:25–38); Ans. 8 (citing Binette, 7:29–32, 8:39–42, 36:32–48). Appellant responds that it is not sufficient to find that moment of inertia/Ib, compression hardness/μ, and Shore D hardness are result-effective variables; instead, “the Examiner must find some cited art that recognizes ΔS’ as a result effective variable.” Appeal Br. 8. Appellant has not persuaded us that the Examiner erred in rejecting claims 1–4 as obvious over Sullivan and Binette. In particular, we are not persuaded that the Examiner was required to show that ΔS’, itself, is a result-effective variable. The variable ΔS’ represents the expected change in a golf ball’s spin rate—compared with a “standard” golf ball—based on changes to a standard golf ball’s MOI, deflection hardness, and cover Shore D hardness. Spec. ¶¶ 20–27. It was known in the art that a golf ball’s spin rate “is an important golf ball characteristic for both the skilled and unskilled golfer.” Binette, 4:35–36. It was also known that a golf ball’s MOI, deflection hardness, and Shore D hardness affect a golf ball’s spin rate. Binette teaches that a greater MOI “results in less spin.” Id. at 7:30–33, 8:39–42. Binette also teaches that “[t]he degree of compression of a ball against the club face and the softness of the cover strongly influences the resultant spin rate.” Id. at 36:34–39. Likewise, Sullivan teaches that “compression is an important factor in golf ball design” that can “affect the ball’s spin rate off the driver and the feel.” Sullivan ¶ 135; see also Dalton, 1 (same). Thus, we agree with the Examiner than MOI/Ib, deflection hardness/μ, and cover Shore D hardness are result-effective variables known to influence a golf ball’s spin rate. The claimed equation represents the known relationship between a golf ball’s MOI/Ib, deflection hardness/μ, and Appeal 2019-004729 Application 15/378,449 7 cover Shore D and spin rate. One of ordinary skill in the art, seeking a given spin rate, would know to manipulate these variables to obtain a desired spin rate. In this regard, the Federal Circuit’s decision in In re Applied Materials, Inc., 692 F.3d 1289 (2012) is instructive. In Applied Materials, the claims at issue were drawn to a grooved polishing pad for chemical mechanical polishing of integrated-circuit substrates. Id. at 1292. The claims specified ranges for three specific parameters: The depth, width, and pitch of the pad grooves. Id. at 1293. There, appellant Applied Materials asserted that the multiple dimensional parameter values were “selected based on multiple criteria, with trade-offs among the several results obtained based on the selection of those variables (such as selecting pitch and width to balance pad flexibility, difficulty in removing waste material, and slurry transport).” Id. at 1294–95 (internal quotation marks omitted). The court determined, however, that “[t]he mere fact that multiple result-effective variables were combined does not necessarily render their combination beyond the capability of a person having ordinary skill in the art.” Id. at 1298. Although “[e]vidence that the variables interacted in an unpredictable or unexpected way could render the combination nonobvious,” appellant in that case “failed to show anything unpredictable or unexpected in the interaction of the variables.” Id. Here, the claimed spin rate equation represents the combination of MOI/Ib, deflection hardness/μ, and cover shore D hardness on a ball’s spin rate. As in Applied Materials, the combination of these variables “does not necessarily render their combination beyond the capability of a person having ordinary skill in the art.” Applied Materials, 692 F.3d at 1298. Appeal 2019-004729 Application 15/378,449 8 Further, Appellant has not brought to our attention any evidence that MOI/Ib, compression hardness/μ, and Shore D hardness interact in an unpredictable or unexpected way that would render the combination nonobvious, and we discern no such evidence from the record. For the above reasons, we sustain the Examiner’s rejection of claims 1–4 as unpatentable over Sullivan and Binette. E. Claim 6—Rejected as Unpatentable over Sullivan, Binette, and Dalton Appellant does not separately argue the patentability of claim 6, which depends from claim 1. Accordingly, for the reasons discussed above in connection with claim 1, we sustain the Examiner’s rejection of claim 6 as unpatentable over Sullivan, Binette, and Dalton. Appeal 2019-004729 Application 15/378,449 9 CONCLUSION The Examiner’s rejections are decided as follows: DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6 112(b) Indefiniteness 1–4, 6 3, 4 112(b) Indefiniteness 3, 4 1–4 102 Sullivan 1–4 1–4 103 Sullivan, Binette 1–4 6 103 Sullivan, Binette, Dalton 6 Overall Outcome: 1–4, 6 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 Copy with citationCopy as parenthetical citation