Ex Parte Ishii et al

Patent Trial and Appeal BoardMar 30, 2016

13194064 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/194,064 07 /29/2011 126323 7590 04/01/2016 Honigman Miller Schwartz and Cohn LLP/Nike 350 West Michigan Avenue, Suite 330 Kalamazoo, MI 49007 FIRST NAMED INVENTOR Hideyuki Ishii 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 ATTORNEY DOCKET NO. 11-0562 US/201882-361690 CONFIRMATION NO. 9182 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): Patents@honigman.com abudde@honigman.com HV andenBrink@honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIDEYUKI ISHII, HSIN CHENG, CHIEN-HSIN CHOU, YASUSHI ICHIKAWA, CHEN-TAI LIU, and ARTHUR MOLINARI Appeal2015-006653 Application 13/194,0641 Technology Center 3700 Before MICHAEL C. ASTORINO, KEVIN W. CHERRY, and JAMES A. WORTH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's decision rejecting claims 1, 4---6, 11, 13-18, 21, and 22.2 Claims 2, 3, 7-9, 19, and 20 are cancelled; and claims 10 and 12 are withdrawn. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, "[t]he real party in interest is NIKE, Inc." Appeal Br. 1. 2 We note that claim amendments filed on September 16, 2014 were entered by the Examiner in the Advisory Action, mailed September 30, 2014. Appeal2015-006653 Application 13/194,064 Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A golf ball comprising: an inner core layer; an outer core layer essentially enclosing the inner core layer; an inner cover layer essentially enclosing the outer core layer; and an outer cover layer essentially enclosing the inner cover layer, wherein the inner core layer includes a blend comprising a first highly neutralized acid polymer having a first Vicat softening temperature between about 50 Â°C and about 60 Â°C and a first specific gravity and a second highly neutralized acid polymer having a second Vicat softening temperature between about 40 Â°C and about 60 Â°C and a second specific gravity, wherein the absolute value of the difference between the Vicat softening temperatures is no more than about 5 Â°C and the absolute value of the difference between the specific gravities is no more than 0.005; wherein the outer core layer comprises polybutadiene rubber and is at least about 5 mm thick; wherein the inner cover layer comprises a first thermoplastic material and the outer cover layer comprises a second thermoplastic material, wherein said thermoplastic material of each of the inner cover layer and the outer cover layer independently comprises at least one of an ionomer resin, a polyamide resin, a polyurethane resin, and a polyester resin. 2 Appeal2015-006653 Application 13/194,064 Rejections3 I. Claims 1, 4, 5, 11, 14--18, 21, and 22 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Boehm (US 2008/0171617 Al, pub. July 17, 2008) and Cheng (US 2010/0179001 Al, pub. July 15, 2010). See Final Act. 5. II. Claims 6 and 13 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Boehm, Cheng, and Sullivan (US 2008/0220906 Al, pub. Sept. 11, 2008). See id. at 8. ANALYSIS Rejection I Claims 1, 4, 5, 11, and 14-18 The Examiner finds that Boehm teaches substantially all of the claimed features of independent claim 1, including an inner core for a golf ball including a blend of a first and a second highly neutralized acid polymer. See Final Act. 5. Among other things, the Examiner acknowledges that Boehm does not disclose that the absolute value of the difference between the specific gravities of the first and the second highly neutralized acid polymer is no more than 0.005. See Final Act. 5. The Examiner relies on Cheng to teach other highly neutralized acid polymers suitable for a golf ball's inner core, i.e., HPF 1000 and HPF 2000, and concludes that "[i]t would have been obvious to one of ordinary skill in 3 The Examiner suggests that the addition of a citation to In re Aller, 220 F .2d 454 (CCP A 1955), creates a new ground of rejection. See Ans. 2. However, we fail to understand from the Answer the designation of the rejection as a new ground of rejection based on the same prior art references notwithstanding the additional citation of Aller. 3 Appeal2015-006653 Application 13/194,064 the art ... to select materials suitable for injection molding at the same temperature, to form the blend of first and second highly neutralized acid polymers, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice." Final Act. 6 (emphasis added) (citing In re Lesh in, 277 F .2d 197 (CCP A 1960)). Also, the Examiner finds that the absolute value of the difference between the specific gravities of HPF 1000 and HPF 2000 is no more than 0.005. See Final Act. 6 (citing DuPont Data Sheets). The Appellants contend that Cheng teaches away from a golf ball core comprising a blend of two highly neutralized acid polymers because Cheng "only uses one or the other [HPF 1000 or HPF 2000] as a primary material [in a blend] and makes clear that the second material is different." Appeal Br. 10. The Appellants' contention is not persuasive because it fails to explain how Cheng's disclosure criticizes, discredits, or otherwise discourages the solution claimed. Cheng discloses two polymers (HPF 1000 or HPF 2000) but this does not constitute a disclosure that HPF 1000 or HPF 2000 cannot be blended together, or that discourages blending. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("mere disclosure of alternative designs does not teach away"); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Moreover, we note that the Examiner relies on Boehm's disclosure to explain that highly neutralized acid polymers can be blended together. See Final Act. 5; see Ans. 4. And, as pointed out by the Examiner, HPF 1000 or HPF 2000 are highly neutralized acid polymers. Final Act. 6. 4 Appeal2015-006653 Application 13/194,064 The Appellants contend that injection molding is not limited to blends of polymers having the same or similar Vi cat softening temperatures. See Appeal Br. 1 O; see also Reply Br. 20-21. The Appellants' contention is not persuasive because it fails to explain why a person having ordinary skill in the art would not have found it obvious to blend together HPF 1000 and HPF 2000. In the Reply Brief, the Appellants also contend that the Examiner's rejection is based on impermissible hindsight because it is based on the Appellants' own disclosure. Reply Br. 14. The Appellants support this contention by asserting primarily that Cheng suggests a modification to combine HPF 1000 or HPF 2000 with a second material, e.g., SurlynÂ®. Reply Br. 14 (citing Cheng, para. 15). The Appellants' contention does not explain, persuasively, error in the Examiner's reasoning. The Examiner reasons that one of ordinary skill in the art would select polymers to be blended in a golf ball's inner core as a design choice, because the polymers have the same intended use. See Final Act. 6. Indeed, both Boehm and Cheng disclose the use of highly neutralized acid polymers as having the same intended use, i.e., as materials in the core of a golf ball. See Final Act. 5---6; Boehm, para. 210 (Table IV, HNP1a/HNP2a); Cheng, para. 15. We have considered the Appellants remaining contentions, in the Appeal Brief and the Reply Brief, and have determined that they are not persuasive. For example, the Appellants' contentions directed to the Examiner's application of In re Aller, 220 F.2d 454 (CCPA 1955), and Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985), are not persuasive because we do not rely on the Examiner's application of Aller or Titamium Metals to sustain the Examiner's rejection of claim 1. See Appeal 5 Appeal2015-006653 Application 13/194,064 Br., passim, Reply Br. passim. Rather we rely solely on the Examiner's rejection of claim 1 provided in the Final Office Action. Thus, we sustain the Examiner's rejection of independent claim 1. For the same reasons, we also sustain the Examiner's rejection of 4, 5, 11, and 14--18, which are not argued separately. Claims 21 and 22 The Examiner acknowledges that the combined teachings of Boehm and Cheng do not teach "the difference in Vicat softening temperatures being as narrow as 2 degrees C or 1 degree C," as called for by claims 21 and 22. Final Act. 8; Appeal Br. 13, 14, Claims App. To remedy this deficiency, the Examiner concludes: It would have been obvious to one or ordinary skill in the art ... to select highly neutralized acid polymers having Vicat softening temperatures differing by no more than 2 degrees or 1 degree, 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, In re Aller. Final Act. 8 (emphasis added). As such, the Examiner appears to rely solely on case law, i.e., a holding of Aller, to bridge the gap between the claimed ranges and the references (i.e., Boehm as modified by Cheng). The Appellants contend that the Examiner has not provided sufficient evidence demonstrating that the prior art recognized a difference between Vicat softening temperatures of two materials to be a result effective variable. See Reply Br. 23. The Appellants' contention is persuasive. At the outset, we note that the discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. See In re 6 Appeal2015-006653 Application 13/194,064 Aller, 220 F.2d at 456; Jn re Boesch, 617 F.2d 272, 276 (CCPA 1980). However, an exception has been found where the parameter optimized was not recognized to be a result-effective variable. In re Antonie, 559 F.2d 618, 620(CCPA1977). In this case, the Examiner does not establish that each of the claimed Vicat softening temperature ranges were recognized to be a result effective variable. At best, the Examiner relies on the Appellants' Specification to support the conclusion of obviousness. See Ans. 4. Particularly, the Examiner suggests that blending materials having the claimed difference of Vicat softening temperatures might impact manufacturing processes related to injection molding. See Ans. 4 (citing Spec. para. 19). However, the suggestion of a potential impact upon manufacturing processes related to injection molding, which is supported only from the Appellants' Specification, is insufficient to support the Examiner's conclusion. Thus, the Examiner's rejection of claims 21 and 22 is not sustained. Rejection II The Appellants have not provided further arguments for the rejection of claims 6 and 13. Appeal Br. 11; see also Reply Br. 16. The Appellants merely rely on the arguments presented for the Examiner's rejection of claim 1 for this ground of rejection. For the same reasons we have sustained the rejection of claim 1, we likewise sustain the rejection of claims 6 and 13. DECISION We AFFIRM the Examiner's decision rejecting claims 1, 4---6, 11, and 13-18 under 35 U.S.C. Â§ 103(a). 7 Appeal2015-006653 Application 13/194,064 We REVERSE the Examiner's decision rejecting claims 21 and 22 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 8