Ex Parte Sajima et al

Patent Trial and Appeal Board

Sep 7, 2017

13723937 (P.T.A.B. Sep. 7, 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.
13/723,937 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
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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
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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
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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.
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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 results”). 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
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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.
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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
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