BRIDGESTONE CORPORATION et al.

Patent Trials and Appeals Board

Aug 25, 2020

2019004729 (P.T.A.B. Aug. 25, 2020)

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.
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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”).
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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.
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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.
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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
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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
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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.
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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.
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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