Ex Parte MIMURA et al

Patent Trial and Appeal BoardSep 19, 2018

14788311 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/788,311 06/30/2015 2292 7590 09/21/2018 BIRCH STEW ART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East FALLS CHURCH, VA 22042-1248 FIRST NAMED INVENTOR Kohei MIMURA 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. CONFIRMATION NO. 3673-0541PUS1 3504 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 09/21/2018 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 KOHEI MIMURA and TAKAHIRO SAJIMA Appeal2017-009418 Application 14/788,311 1 Technology Center 3700 Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and PAUL J. KORNICZKY, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Examiner's Final Decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellant is the Applicant, Dunlop Sports Co. Ltd., identified by the Appeal Brief as the real party in interest. Br. 1. Appeal2017-009418 Application 14/788,311 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim, with claims 2-9 depending therefrom. Claim 1 is reproduced below: 1. A golf ball comprising a core and a cover positioned outside the core, wherein the golf ball has a large number of dimples on a surface thereof, the cover has a Shore D hardness of equal to or greater than 30 but equal to or less than 50, the golf ball has an amount of compressive deformation of equal to or greater than 3. 0 mm but equal to or less than 5. 0 mm, the amount of compressive deformation being measured under conditions of an initial load of 98 Nanda final load of 1274 N, and the golf ball meets the following mathematical formula (I): 0.806 < ((LI + L2) /2) < 0.920 (I), where: LI represents a ratio (CLI/CDI) of a lift coefficient CL 1 relative to a drag coefficient CD 1, the lift coefficient CL 1 and the drag coefficient CD 1 being measured under conditions of a Reynolds number of 1.290 x 105 and a spin rate of 2820 rpm; and L2 represents a ratio (CL2/CD2) of a lift coefficient CL2 relative to a drag coefficient CD2, the lift coefficient CL2 and the drag coefficient CD2 being measured under conditions of a Reynolds number of 1. 771 x 105 and a spin rate of 2940 rpm. REJECTIONS 1. Claims 1 and 3-9 are rejected under 35 U.S.C. Â§ 103 as being unpatentable over Shinohara (US 2010/0062876 Al, published Mar. 11, 2010) and Maehara (US 5,935,023, issued Aug. 10, 1999). 2. Claim 2 is rejected under 35 U.S.C. Â§ 103 as being unpatentable over Shinohara, Maehara, and Moriyama (US 2002/0119838 Al, published Aug. 29, 2002). 2 Appeal2017-009418 Application 14/788,311 OPINION Shinohara/Maehara - Claims 1 and 3-9 Appellant argues claims 1 and 3-9 as a group. Br. 4--9. 2 We select claim 1 as representative. Claims 3-9 stand or fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellant does not dispute the majority of the Examiner's findings or the rationale provided for combining the teachings of Shinohara with those of Maehara. Rather, Appellant focuses its arguments on whether the combination of references teaches the recited "compressive deformation of equal to or greater than 3.0 mm but equal to or less than 5.0 mm, the amount of compressive deformation being measured under conditions of an initial load of 98 Nanda final load of 1274 N," and, whether "the golf ball meets the ... mathematical formula (I)." See Br. 4--9. With respect to the "compressive deformation" limitation, the Examiner finds that Shinohara teaches "compressive deformation of equal to or greater than 3.0 but equal to or less than 5.0 mm, measured under an initial load of 98 Nanda final load of 1275 N." Final Act. 3 ( citing Shinohara ,r 184 ). Indeed, the cited portion of Shinohara states that "[ t ]he ball has a deflection, expressed as the deformation of the ball when compressed under a final load of 1,275 N (130 kgf) from an initial load of 98 N (10 kgf), of ... at least 3.0 mm, but generally not more than 5.0 mm." Shinohara ,r 184. Although the final load is 1 N higher in Shinohara, the Examiner explains that "[i]t is inherent that a golf ball would exhibit a slightly larger compression value when measured using a greater final load." Ans. 2. That is, because Shinohara states "not more than 5.0 mm" of 2 Appellant did not file a Reply Brief to address the positions taken by the Examiner in the Answer, leaving many of those positions unrebutted. 3 Appeal2017-009418 Application 14/788,311 deflection at 1275 N, it necessarily follows there would also be "not more than 5.0 mm" of deflection at a lower load ( e.g., 1274 N). Appellant responds by contending that "one of skilled in the art would not have been led to the recited amount of compressive deformation through routine experimentation and optimization." Br. 5. That is not persuasive of Examiner error when the reference, itself, as noted above, teaches the recited compressive deformation. 3 Appellant additionally disputes that the recited "compressive deformation" is inherent in Shinohara. Id. at 6-7. However, Appellant's contention in that regard fails to identify any error in the Examiner's determination, alleging, instead, that the Examiner can not simply assert that the golf ball in the cited references may have the claimed amount of compressive deformation, and fails to provide facts and technical reasoning that reasonably support that the golf ball in the cited references must and always have the claimed amount of compressive deformation. Id. at 7. We see no reason why the application of less force would produce more compress10n. As for the "mathematical formula (I)," Appellant also focuses on whether the Examiner has established that (LI + L2) / 2 is a result-effective variable for purposes of routine optimization. See Br. 7-9. The problem with that argument is that, again, the Examiner does not need routine 3 We appreciate that Appellant's contention may be in response to the Examiner's additional statement regarding ball hardness being a result- effective variable. See Final Act. 3. That statement, however, is not fatal to the rejection because, as noted above, in the Answer, the Examiner additionally relies on the teachings of Shinohara, itself, explaining that the recited "compressive deformation" is inherent based on Shinohara' s teachings. See Ans. 2. 4 Appeal2017-009418 Application 14/788,311 optimization to establish unpatentability. There is no dispute that the "mathematical formula (I)" is defined by lift and drag characteristics ("CLl," "CL2," "CDl," "CD2") of the golf ball under specified conditions. That is, the "mathematical formula (I)" is a functional limitation. Claim 1 recites that those lift and drag characteristics are "measured," meaning that those characteristics are determined empirically based on testing the golf ball to determine its performance. The Examiner explains that "the prior art golf ball includes the structural features of the claimed invention and that the ball of the prior art is capable of performing as claimed, namely ... by meeting the claimed inequality expressing a range for the value of (L 1 + L2)/2." Ans. 3. Although the lift and drag characteristics are caused by the underlying structure of the golf ball, Appellant chose to claim those features functionally. A patent applicant is free to recite features of an apparatus either structurally or functionally. See In re Swinehart, 439 F.2d 210,212 (CCP A 1971) (there is nothing intrinsically wrong with drafting claims that define something by what it does rather than what it is). Yet, choosing to define an element functionally, i.e., by what it does, carries with it a risk: where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Swinehart, 439 F.2d at 213. Here, the Examiner has a reasonable basis to believe the functional limitation defined by the "mathematical formula (I)" is present in the prior art, which is sufficient to shift the burden to Appellant to show the golf ball 5 Appeal2017-009418 Application 14/788,311 of Shinohara, as modified by Maehara, does not possess the functional limitations of claim 1. Other than the "compressive deformation" limitation, Appellant does not dispute the Examiner's findings with respect to the teachings of the recited golf ball structure in the asserted prior art or the rationale for their combination. In fact, Shinohara, itself, teaches each of the structural limitations recited in claim 1, as well as the further details of those features recited in claims 3-10. See Final Act. 3-5 (citing Shinohara ,r,r 14, 7 4, 180, 184 ). Appellant does not even respond, let alone rebut in any persuasive manner, the Examiner's determination that the golf ball of Shinohara has the characteristics defined by the "mathematical formula (I)." Accordingly, we are not apprised of error in the rejection of claims 1 and 3-9. Shinohara/Maehara/Moriyama - Claim 2 Claim 2 depends from claim 1, and the Examiner rejects that claim as unpatentable over the combined teachings of Shinohara, Maehara, and Moriyama. See Final Act. 5. Appellant does not present separate arguments with respect to that rejection, relying, instead, on the arguments discussed above relative to claim 1, which we do not find persuasive. Br. 9-10. Accordingly, we are not apprised of Examiner error in the rejection of claim 2. DECISION We AFFIRM the Examiner's decision to reject claims 1-9. 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)(l )(iv). AFFIRMED 6