Dunlop Sports Co. Ltd.

Patent Trials and Appeals Board

Mar 22, 2022

2021002780 (P.T.A.B. Mar. 22, 2022)

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. 15/782,577 10/12/2017 Chiemi MIKURA 5867-0314PUS1 1022 2292 7590 03/22/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHIEMI MIKURA, KAZUYOSHI SHIGA, HIKARU NAGAKURA, and RYOTA SAKAMINE ____________ Appeal 2021-002780 Application 15/782,577 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. MOHANTY, 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 1-3, 5-11, 13, 14, and 17-25. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as SUMITOMO RUBBER INDUSTRIES, LTD. (Appeal Br. 1). Appeal 2021-002780 Application 15/782,577 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a golf ball (Spec., page 1, line 5). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A golf ball comprising a spherical core and at least one cover covering the spherical core, wherein a hardness difference DI (H75 - HO) between a hardness H75 at a point located at a distance of 75% of a radius from a center of the spherical core and a center hardness HO of the spherical core is IO or more and 27 or less in Shore C hardness, a hardness difference D2 (Hs - H75) between a surface hardness Hs of the spherical core and the hardness H75 at the point located at the distance of 75% of the radius from the center of the spherical core is 0.5 or more and 6.5 or less in Shore C hardness, a hardness difference D5 (H75 - H50) between the hardness H75 at the point located at the distance of 75% of the radius from the center of the spherical core and a hardness H50 at a point located at a distance of 50% of the radius from the center of the spherical core is 8 or more in Shore C hardness, and a hardness difference D4 (H50 - H25) between the hardness H50 at the point located at the distance of 50% of the radius from the center of the spherical core and a hardness H25 at a point located at a distance of 25% of the radius from the center of the spherical core is - 3 or more and 2 or less in Shore C hardness. THE REJECTION The following rejection is before us for review: Claims 1-3, 5-11, 13, 14, and 17-25 are rejected under 35 U.S.C. § 103 as unpatentable over Shindo (US 2014/0357408 Al, published Dec. 4, 2014) as evidenced by Moriyama (US 5,776,012, published Jul. 7, 1998). Appeal 2021-002780 Application 15/782,577 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the prior art Shindo fails to disclose any examples which disclose both: 1) a hardness difference “D4” (H50-H25) of -3 to 2 Shore C, and 2) a hard difference “D5” (H75-H50) of 8 or more Shore C (Appeal Br. 9). The Appellant also argues that the rejection uses improper hindsight reconstruction for the modification to having a hardness difference “D2” (Hs-H75) in the claimed range of .5 to 6.5 (Appeal Br. 9, 10, Reply Br. 2, 3). In contrast, the Examiner has determined that the rejection is proper (Final Act. 3-5, Ans. 4-8). We agree with the Appellant. Claim 1 is directed to a golf ball that has a spherical core and covering. Claim 1 also includes limitations for 4 different “hardness differences” D1, D2, D3, and D4 each with a certain hardness difference, measured in Shore C hardness, between a region of the golf ball. The Examiner cited to Shindo at Table 1, example 8, as disclosing the basis for the rejection (Final Act. 3-5). The Examiner has acknowledged that the cited prior art at Table 1, example 8 does not disclose the hardness differences D2 and D4 (Final Act. 3-5). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-002780 Application 15/782,577 4 The claim requires that “a hardness difference D2 (Hs - H75) between a surface hardness Hs of the spherical core and the hardness H75 at the point located at the distance of 75% of the radius from the center of the spherical core is 0.5 or more and 6.5 or less in Shore C hardness”. Shindo at Table 1, example 8 discloses Hs=73.5 and H75=73.8 and thus D2=-0.3 which is out of the claimed range of 0.5-6.5 in Shore Hardness.3 The rejection cites to Shindo at paragraph 94 disclosing that Hs could be harder based on the desired resilience and feel (Final Act. 3). The rejection states that the modification would have been obvious to make the value 74.8, which would make the value of D2 fall in the claimed range (Final Act. 3). Shindo at paragraph 94 does disclose that the HS is preferably 70 or more, and of 95 or less, to make the ball not excessively soft or hard and obtain a better shot feeling. The claim also requires “a hardness difference D4 (H50 - H25) between the hardness H50 at the point located at the distance of 50% of the radius from the center of the spherical core and a hardness H25 at a point located at a distance of 25% of the radius from the center of the spherical core is -3 or more and 2 or less in Shore C hardness”. Shindo at Table 1, example 8, discloses H50=65.6 and H25=63.3 thus D4=2.3 which is out of the claimed range with a top limit of 2. The Examiner has stated that the claimed range is not critical and cites to Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985), which states that where “[t]he proportions are so close that prima facie one skilled in the art would have 3 The Moriyama reference at col. 2, lines 23-25, discloses that JIS-C hardness is equal to Shore C hardness. Appeal 2021-002780 Application 15/782,577 5 expected them to have the same properties” and that prima facie case of obviousness exists as the claimed ranges are so close (Appeal Br. 4, 5). In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis: “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Here, the claim is directed to a golf ball with 4 specific hardness ranges D1, D2, D3, and D4. The rejection of record has acknowledged that the cited prior art example fails to disclose both D2 and D4, but provides a separate obviousness rational individually for both of D2 and D4 (Final Act. 3-5). The reason for the modification of D2 has been based on an obviousness rationale provided to give the golf ball a better resilience and feel by using the claimed hardness range (Final Act. 3, 4). The rejection separately states that the modification of D4 is deemed obvious by being so close to the prior art range that a prima facie case of obviousness is established (Final Act. 4, 5). Here, the rejection does not rely on only one of the modification of D2 that has been provided, or the prima case for D4 that has been provided, but rather in contrast requires both modifications of D2 and D4 to support the rejection. The rejection of record lacks articulated reasoning with rational underpinnings to modify both of D2 to have a certain range of surface hardness, and to have the claimed range of D4 without impermissible hindsight and a case of obviousness has not been established and the rejection of claim 1 is not sustained. The remaining claims are drawn to similar subject matter and the rejection of these claims is not sustained for the same reasons given above. Appeal 2021-002780 Application 15/782,577 6 CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-3, 5-11, 13, 14, and 17-25 under 35 U.S.C. § 103 as unpatentable over Shindo as evidenced by Moriyama. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-11, 13, 14, 17- 25 103 Shindo, Moriyama 1-3, 5-11, 13, 14, 17- 25 REVERSED