Ex Parte Molinari et al

Patent Trial and Appeal BoardAug 18, 2017

13720350 (P.T.A.B. Aug. 18, 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. 13/720,350 12/19/2012 Arthur Molinari 11-1282US83/201882-362307 6163 126323 7590 08/22/2017 Honigman Miller Schwartz and Cohn LLP/Nike 350 West Michigan Avenue, Suite 330 Kalamazoo, MI 49007 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): Patents@honigman.com nike_docketing @ cardinal-ip. com araymond @honigman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR MOLINARI and THOMAS J. KENNEDY III Appeal 2016-005251 Application 13/720,3501 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 21, 23, and 25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellants, the invention relates “to golf balls having indicia printed under a topcoat.” Spec. 12. We reproduce claim 21, below, as illustrative of the claims on appeal. 1 According to Appellants, the “real party in interest is NIKE, Inc.” Appeal Br. 1. Appeal 2016-005251 Application 13/720,350 21. A method of making a golf ball, comprising: forming a golf ball having one or more structural layers; applying indicia on the golf ball; and applying a top coating over the entire ball, including on the indicia, wherein the indicia and the top coating are formulated to prevent alteration of the indicia by printing the indicia with a sublimation dye ink that is insoluble in water and applying a waterborne top coating. REJECTIONS AND PRIOR ART The Examiner rejects claims 21, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable over Proudfit (US 5,542,680, iss. Aug. 6, 1996), Kennedy (US 7,048,651 B2, iss. May 23, 2006), and Spurgeon (US 2002/0039928 Al, pub. Apr. 4, 2002). The Examiner provisionally rejects claims 21, 23, and 25 on the ground of nonstatutory double patenting over claim 1—27 of copending application no. 13/335,5702. ANALYSIS Obviousness Rejection Based on our review of the record, including the Examiner’s Final Office Action and Answer, and Appellants’ Appeal Brief and Reply Brief, for the reasons discussed below, Appellants do not persuade us that the Examiner’s obviousness rejection is in error. Thus, we sustain the rejection of claims 21, 23, and 25. 2 Now US 9,403,064 B2, iss. Aug. 2, 2016. 2 Appeal 2016-005251 Application 13/720,350 Initially, we note that claims 21, 23, and 25 are argued together as a group. Appeal Br. 3-4. We select independent claim 21 as representative, and dependent claims 23 and 25 stand or fall with the independent claim. See 37 C.F.R. § 41.37(c)(l)(iv). With respect to claim 21, the Examiner finds (1) that Proudfit teaches a layered golf ball, printing of indicia on the surface of the golf ball with ink, and the application of a water-soluble top coat over the indicia, (2) that Kennedy discloses the use of a non-water-soluble ink for the indicia, and (3) that Spurgeon discloses the use of sublimation ink printing for indicia on a ball. Answer 2—A. The Examiner determines that it would have been obvious to combine the references to print the indicia with a sublimation dye ink that is insoluble in water, and to apply a waterborne top coating, thereby providing the indicia and the top coating in such a way as to prevent alteration of the indicia, as recited in claim 21. Id. More specifically, the Examiner determines that it would have been obvious ... to modify Proudfit to make the indicia and the top coating formulated to prevent alteration of the indicia by the application of the top coating by using an ink that is insoluble in water[,] as taught and suggested by Kennedy[,] because doing so would be obvious to try choosing from a finite number of identified, predictable solutions (using either a waterborne or solvent based indicia[,] and using either a waterborne or solvent based top coat) with a reasonable expectation of success (using either waterborne or solvent based indicia in combination with either a waterborne or solvent based top coat in order to protect the indicia—see Kennedy: col. 5, lines 56[—]57), (id. at 3), and determines that it would have been obvious ... to modify the combined Proudfit and Kennedy to make the indicia formed from sublimation dye ink[,] as taught by Spurgeon[,] because doing so would be use of 3 Appeal 2016-005251 Application 13/720,350 known technique (using a sublimation dye on a transfer sheet to place a logo on sporting goods equipment) to improve a similar product (a golf ball made using a transfer medium) in the same way (using a sublimation dye on a transfer sheet to print a logo on a golf ball to obtain a high quality and durable logo—see Spurgeon: par. [0016]) (id. at 4). Appellants argue that it would not have been obvious to combine the references as proposed by the Examiner, because none of the cited references “understand^] how to solve the problem of alteration of the printed logo[,] but instead relied on inspection [in Proudfit] to find and remove defective golf balls.” Reply Br. 2—3; see also Appeal Br. 3. More specifically, Appellants argue that the “prior art did not appreciate that the problem with indicia alteration arose from solubility of the ink in the top coat.” Reply Br. 2. We are not persuaded by Appellants’ argument, however. It is not necessary for the prior art to serve the same purpose as that disclosed in Appellants’ Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also KSRInt’l Co., 550 U.S. 398, 419 (2007) (“[N]either the particular motivation nor the avowed purpose of the [Appellants] controls” in an obviousness analysis.) Therefore, the prior art need not recognize or solve the same problem as the claimed invention. In addition, we do not agree with Appellants that the use of inspection in Proudfit indicates that the problem of interaction between the indicia ink and top coat remains unsolved in Proudfit. See Appeal Br. 3. One may conduct inspections for various reasons, and conducting inspections does not imply the existence of any particular problem, solved or unsolved. 4 Appeal 2016-005251 Application 13/720,350 Appellants also argue the Examiner used the Appellants] ’ disclosure of the solution to artificially limit the “identified, predictable potential solutions” in hindsight to four (see bottom of page 8), but these four do not include what the claimed invention [is]. Even if the person of ordinary skill in the art recognized the Examiner’s combinations as predictable solutions, and tried them all, none is the claimed invention. Neither Kennedy nor Spurgeon teaches using a sublimation dye ink that is insoluble in water. Reply Br. 3; see also Appeal Br. 4 (“each of the combinations is not a solution to the problem.”) We are not persuaded by this argument, however. Although no single reference discloses water-insoluble sublimation ink, the rejection is based on a combination of references. See, e.g., Final Action 3. It is well established that non-obviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Specifically, as discussed above, the Examiner found that Proudfit discloses the use of a water-soluble top coat, as claimed (Answer 2), that Kennedy discloses the use of water-insoluble indicia ink (id. at 3), and Spurgeon discloses uses the indicia ink for sublimation printing on sporting goods (id. at 3—4). The Examiner further determined that it would have been obvious to combine the references to provide a water-soluble top coat over a non-water-soluble sublimation ink, as claimed. Id. Additionally, we agree with the Examiner that the use of either water- soluble or non-water-soluble ink and coatings for the indicia and top coat leaves open four general possibilities: both top coat and indicia ink are either water-soluble or non-water-soluble, or either one of the top coat or indicia ink is water-soluble, and the other one is non-water-soluble. 5 Appeal 2016-005251 Application 13/720,350 Answer 8. We also agree with the Examiner that having just four combinations of water-soluble and non-water-soluble leaves a limited number of options, and the Examiner establishes adequately that would be obvious to try the various combinations. Id. at 7—9. See KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (“When . . . there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”). Thus, based on the foregoing, Appellants do not persuade us that the Examiner’s rejection of independent claim 21 is in error. Therefore, we sustain the obviousness rejection of claim 21. Further, we also sustain the obviousness rejection of dependent claims 23 and 25. Double Patenting Rejection Appellants do not argue against the double patenting rejection of claims 21, 23, and 25. Thus, we summarily affirm the double patenting rejection. DECISION We AFFIRM the Examiner’s obviousness rejection of claims 21, 23, and 25. We summarily AFFIRM the Examiner’s nonstatutory obviousness- type double patenting rejection of claims 21, 23, and 25. 6 Appeal 2016-005251 Application 13/720,350 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7