Ex Parte Kamino et alDownload PDFPatent Trial and Appeal BoardMar 20, 201713454550 (P.T.A.B. Mar. 20, 2017) 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. 13/454,550 04/24/2012 Kazuya KAMINO 3673-0294PUS2 1814 127226 7590 03/22/2017 Birch, Stewart, Kolasch & Birch, LLP P.O. Box 747 Falls Church, VA 22040-0747 EXAMINER GORDEN, RAEANN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 03/22/2017 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 KAZUYA KAMINO and KEIJI OHAMA Appeal 2015-004594 Application 13/454,550 Technology Center 3700 Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and GORDON D. KINDER, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to a golf ball. Claim 1, the sole independent claim, reproduced below, is illustrative of the claimed subject matter: 1. A golf ball which comprises a core, a cover situated on the external side of the core, and a paint layer provided to cover the cover, wherein: the base polymer of the cover is a urethane resin; Appeal 2015-004594 Application 13/454,550 the base polymer of the paint layer is a two-pack type urethane resin or a two-pack type epoxy resin; the cover has a thickness Tc of 0.1 mm or greater and 0.7 mm or less; the paint layer has a thickness Tp (mm) of 0.015 mm or greater and 0.040 mm or less; and the ratio (Tp/Tc) is 0.021 or greater and 0.40 or less. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Ohira US 2006/0030428 A1 Feb. 9,2006 REJECTION1 Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ohira. OPINION It is undisputed that Ohira discusses a number of characteristics that could be considered when constructing a golf ball, including cover material, cover thickness, and paint or coating layer thickness. The Examiner found that Ohira discloses urethane resin as one of the possible base polymers used for constructing the cover. Final Act. 2; Ans. 4 (citing Ohira, para. 48). The Examiner found that by disclosing “the thickness of the cover layer is usually 0.5 to 3 mm,” Ohira discloses a cover layer that overlaps at least the lower end of the 0.1 mm to 0.7 mm range recited in claim 1. Final Act. 2; Ans. 2—3. The Examiner also found that by disclosing “[t]he thickness of 1 The Examiner withdrew a provisional double-patenting rejection over Application Number 12/232,371 (abandoned). Ans. 3. 2 Appeal 2015-004594 Application 13/454,550 the coating film should be 5 to 50 pm” Ohira discloses a range which encompasses the 15 to 40 pm range recited in claim 1. There is no dispute that Ohira does not specifically mention the ratio of paint thickness (Tp) to cover thickness (Tc), but the Examiner determined that particular values could be selected from within Ohira’s disclosed ranges to arrive at the recited 0.021 to 0.40 ratio for Tp/Tc. Final Act. 2. The Examiner does not appear to consider the aforementioned portions of Ohira to disclose the particular ranges recited, or values therein, with sufficient specificity to render Ohira’s disclosure anticipatory. See, e.g., MPEP § 2131.03. The Examiner nevertheless considers the subject matter of claim 1 obvious. However, the final rejection does not appear to set forth any particular reason for reaching this conclusion. Ohira does not appear to relate any of the aforementioned properties to any particular results. In the Examiner’s Answer, the Examiner, quoting from MPEP § 2144.05 and cases discussed therein, indicates that a prima facie case of obviousness is considered to exist when ranges “overlap or lie inside ranges disclosed by the prior art.” Ans. 3. Appellants, citing the same section of the MPEP, argue Ohira’s broad disclosure of ranges is too generic, without more, to demonstrate the obviousness of the claimed subject matter which is limited to the specific ranges recited. App. Br. 4—5; see, e.g., MPEP § 2144.05 (“if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus.”) (citing In re Baird, 16 F.3d 380 (Fed. Cir. 1994); In re Jones, 958 F.2d 347 (Fed. Cir. 1992), MPEP § 2144.08) Appellants also point out that a prima facie case of obviousness based on 3 Appeal 2015-004594 Application 13/454,550 overlapping or encompassing ranges may be rebutted by showing, among other things, unexpected results. App. Br. 5—6 (citing MPEP § 2144.05(111)). It is important to remember that the term prima facie obvious’ relates to the burden on the examiner at the initial stage of the examination.” In re Oetiker, 977 F. 2d 1443, 1446 (Fed. Cir. 1992) (second emphasis added). Once the Examiner has made a prima facie showing of obviousness “the applicant has the burden of production to demonstrate that the examiner’s preliminary determination is not correct.” Id. at 1449 (Plager, J., concurring) (emphasis added). “[T]he conclusion of obviousness vel non is based on the preponderance of evidence and argument in the record.” Id. at 1446. “The examiner, and if later involved, the Board, retain the ultimate burden of persuasion on the issue.” Id. at 1449 (Plager, J., concurring). Here, Appellants have come forward with evidence of unexpected improvements in the flight characteristics of a golf ball having a particular cover material and thickness, paint thickness, and ratio of paint thickness to cover thickness. App. Br. 6—7 (citing examples in the Specification compiled in Table 4 (Spec. 41)). The Examiner has not identified the absence of a nexus between the proffered test results and claimed subject matter. See, e.g., MPEP §§ 716.01(b), 2145. Nor has the Examiner made of record any reason why the results obtained would have been predictable or not unexpected. The Examiner does not appear to have given proper consideration to Appellants’ rebuttal evidence as is required in reaching a conclusion of obviousness. See MPEP §§ 21452, 716.01-02. The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010) 2 “Rebuttal evidence and arguments can be presented in the specification” MPEP § 2145 (citing In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995)). 4 Appeal 2015-004594 Application 13/454,550 (precedential). For that review to be meaningful, it must be based on some concrete evidence in the record to support the Examiner’s factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). It is neither our place, nor Appellants’ burden, to speculate as to the basis for rejecting claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO’s obligation to provide timely notice to the applicant of all matters of fact and law asserted.), accord In re Oetiker, 977 F.2d at 1449 (Plager, J., concurring) (“The examiner cannot sit mum, leaving the applicant to shoot arrows into the dark hoping to somehow hit a secret objection harbored by the examiner.”) As the Examiner has failed to address all the evidence of record (see, e.g., In re Soni, 54 F.3d at 750 (“all evidence of nonobviousness must be considered when assessing patentability”)), on the entirety of the record before us, the Examiner has not established that the evidence of obviousness outweighs the evidence of nonobviousness. See In re Caveney, 761 F.2d 671, 674, (Fed. Cir. 1985) (A preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application). Accordingly, the Examiner’s rejection cannot be sustained on the ground3 set forth by the Examiner. DECISION The Examiner’s rejection is reversed. REVERSED 3 “[A] “ground of rejection” for purposes of Rule [41.50(a)(1)] is not merely the statutory requirement for patentability that a claim fails to meet but also the precise reason why the claim fails that requirement.” Hyatt v. Dudas, 551 F. 3d 1307, 1312 (Fed. Cir. 2008) 5 Copy with citationCopy as parenthetical citation