Ex Parte Kamino et al

Patent Trial and Appeal Board

Mar 20, 2017

13454550 (P.T.A.B. Mar. 20, 2017)

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
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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