Ex Parte Sajima et alDownload PDFPatent Trial and Appeal BoardSep 7, 201713723937 (P.T.A.B. Sep. 7, 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. 13/723,937 12/21/2012 Takahiro SAJIMA 3673-0454PUS1 4363 127226 7590 09/11/2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER STANCZAK, MATTHEW BRIAN ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 09/11/2017 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 TAKAHIRO SAJIMA, KAZUHIKO ISOGAWA, KOSUKE TACHIBANA, and HIDETAKAINOUE (Applicant: Dunlop Sports Co. Ltd.) Appeal 2016-005905 Application 13/723,9371 Technology Center 3700 Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Non-Final Rejection of claims 1, 4, and 6—23, which constitute all of the claims pending in this application. Claims 2, 3, and 5 have been cancelled. Because the application has been twice rejected, we have jurisdiction pursuant to 35 U.S.C. §§ 6(b) and 134. Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm. 1 Appellant identifies itself, Dunlop Sports Co. Ltd., as the real party in interest. App. Br. 1. Appeal 2016-005905 Application 13/723,937 THE INVENTION The disclosed and claimed invention is directed to a golf ball. Abstract; Spec. 1, lines 10-13. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A golf ball having 300 to 400 dimples on a surface thereof, wherein the golf ball satisfies the following mathematical formula (1): Y< 3.8 * X-2.894 (I), wherein X is 0.78 to 0.95 and represents the ratio of the sum of areas of all the dimples to the surface area of a phantom sphere of the golf ball, and Y represents the standard deviation (mm) of diameters of all the dimples. REFERENCE The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Sajima US 7,112,149 B2 Sept. 26,2006 REJECTION Claims 1, 4, and 6—23 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Sajima. Non-Final Act. 3—9. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellant. We disagree with Appellant’s arguments with respect to claims 1, 4, and 6—23, and we incorporate herein and adopt as our own: (1) the findings and 2 Appeal 2016-005905 Application 13/723,937 reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3—9), and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellant’s arguments (Ans. 7—10). We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments for emphasis as follows. Claims 1, 4, and 6—15 Appellant argues the Examiner improperly used hindsight to select values for X (the ratio of the sum of areas of all the dimples to the surface area of a phantom sphere of the golf ball) and Y (the standard deviation (mm) of diameters of all the dimples) within the ranges taught by Sajima. App. Br. 6. More specifically, Appellant argues the preferred examples are outside the scope of the claim and, because there is no suggestion in Sajima as to how X and Y relate to each other and “the possible combinations of X and Y are many and the relationship between the X and Y values fails to be identified or predictable give[n] the unexpected, improved flight distances exhibited by golf balls of the claimed invention.†Id. at 5, 6; see also Reply Br. 2. That is, Appellant argues that a person of ordinary skill in the art “would fail to find a reason to select an X value and, because of a dependent relationship, then select an appropriate Y value.†Reply Br. 2. Appellant further argues the Examiner’s reliance on MPEP §§ 2144.05, 2123 is misplaced. Reply Br. 3—5. With regard to section 2144.05, Appellant argues “[n]one of the cited decisions described a situation in which the claim at issue required two ranges (or variables) to be selected together with a dependent relationship between each of the two 3 Appeal 2016-005905 Application 13/723,937 variables.†Id. at 3. With regard to section 2123, Appellant argues it is not ignoring any sections of the reference but, instead, Appellant is merely arguing the Examiner “failing to point to any portions of Sajima ’149 which suggest to a [person of ordinary skill in the art] to head in the direction of the claimed invention.†Id. at 5. The Examiner finds Sajima teaches a golf ball with a range of possible ranges for variables X and Y. Non-Final Act. 3. The Examiner further finds that the ranges taught by Sajima include the ranges claimed in claim 1 of the instant application. Id. (citing Examiner’s NPL calculation). Specifically, the Examiner finds that Sajima teaches selecting X in the range of 0.75 to 0.90, which includes 0.86, and teaches selecting Y in the range of 0.15 to 0.45, which includes 0.27. Id. The Examiner concludes that claim 1 is obvious because a golf ball with a value of X equal to 0.86 and a value of Y equal to 0.27 meets the limitations of claim 1. Id. The Examiner further finds Appellant’s evidence of comparative testing insufficient because Appellant has not shown ‘“a greater than additive effect’, ‘statistical and practical significance’, explanation or data via affidavit/declaration, [or] comparison using a sufficient number of tests both inside and outside the claimed range, etc.†Id. at 9. The Examiner further finds the test data insufficient because you cannot make a direct comparison between the testing shown in the Specification with that shown in Sajima because the test conditions were not identical. Ans. 8—9.2 * 4 2 Additionally, the Examiner finds the evidence does not show criticality in claimed ranges because some embodiments outside of the claimed range have superior results and some within the range do not have critical results. Ans. 9—10. Although the findings are relevant for dependent claims which are not separately argued, because they do not apply to all of the claims we 4 Appeal 2016-005905 Application 13/723,937 In claims such as these involving a range, “a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art.†In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (citations omitted). Because there is no dispute that Sajima teaches overlapping ranges with the claimed invention, we agree with the Examiner that there is a prima facie case of obviousness.* * 3 Although Appellant avers that none of the cases cited in the MPEP involve two or more dependent variables, Appellant does not provide any case law indicating that the test for obviousness is different when there are two or more dependent ranges. Moreover, Appellant has not established that the two variables are dependent on each other.4 Accordingly, we are not persuaded by Appellant’s argument. Similarly, we are not persuaded by Appellant’s argument that Sajima teaches away from the claimed range because the claimed ranges are not in the most preferred embodiment. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.†do not rely on them in this Decision and, for the avoidance of doubt, we do not adopt them as are own 3 Sajima recognized the criticality of variables relating to dimples for the improvement of golf balls. See Sajima 1:26-40. Appellant does not argue that the specific variable of the claim were not known in the prior art to have been result-effective variables. 4 Although the claims require the selection of X and Y to satisfy a formula, that does not establish that the selection of the variables are dependent on each other. Moreover, even if they are dependent on each other, because of Appellant’s failure to cite any supporting cases, we would still not be persuaded that the Examiner erred. 5 Appeal 2016-005905 Application 13/723,937 Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (quoting Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)). However, merely falling outside of a preferred embodiment “does not teach away. . . [as] it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.†DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). We are also not persuaded by Appellant’s evidence of unexpected results. As our reviewing court has held, even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges “produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.†In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (quoting In reAller, 220 F.2d 454, 456 (CCPA 1955)); see also Harris, 409 F.3d at 1344 (holding that a 32-43% increase in stress-rupture life “does not represent a ‘difference in kind’ that is required to show unexpected resultsâ€). Although the comparative test data in the Specification shows golf balls made according to the claimed invention have an average flight distance of between prior art having an average flight distance of 257—260.6 m while the prior art has an average flight distance 251.9—255.4 m (Spec. 23—25), those results show a difference in degree, not a difference in kind. There is only a 1.6 m difference between the longest hit prior art ball compared to the shortest hit ball covered by the claimed invention, a difference of less than 6 Appeal 2016-005905 Application 13/723,937 1 %. Moreover, Appellant has not submitted any evidence, such as by way of a declaration, to attempt to show how this is a difference in kind. Moreover, we find the test data itself insufficient to show any meaningful difference between the claimed invention and the prior art. Noticeably lacking is any statistical analysis to show that the difference in ranges in statistically significant or that the study is sufficiently powered to show such a difference. As such, Appellant never addressed the deficiencies identified in the Non-Final Action. See Non-Final Act. at 9. Accordingly, we are not persuaded by Appellant’s argument that the Examiner erred. Therefore, we sustain the Examiner’s rejection of claim 1, along with the rejection of dependent claims 4 and 6—15, which are not separately argued. Claims 16—23 Appellant repeats the arguments discussed above for independent claim 16. App. Br. 7. According to Appellant, because claim 16 recites a narrower range, “the comparative test results support the patentability of independent claim 16 to an even greater degree than that of claim 1.†Id. For the reasons discussed above for claim 1, we are not persuaded by Appellant’s argument. Accordingly, we sustain the Examiner’s rejection of claim 16, along with the rejection of dependent claims 17—23. DECISION For the above reasons, we affirm the Examiner’s decisions rejecting claims 1, 4, and 6—23. 7 Appeal 2016-005905 Application 13/723,937 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). See 37 C.F.R. § 41.50(f). AFFIRMED 8 Copy with citationCopy as parenthetical citation