Ex Parte SAJIMA et al

Patent Trials and Appeals BoardFeb 14, 2019

13886291 - (D) (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/886,291 05/03/2013 127226 7590 02/19/2019 BIRCH, STEW ART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 Takahiro SAJIMA 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. 3673-0474PUS 1 1033 EXAMINER SIMMS JR, JOHN ELLIOTT ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 02/19/2019 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 T AKAHIRO SAJIMA and HIDETAKA INOUE Appeal2017-009287 Application 13/886,291 1 Technology Center 3700 Before STEVEN D. A. McCARTHY, MICHAEL L. HOELTER, and SUSAN L. C. MITCHELL, Administrative Patent Judges. MITCHELL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejections of claims 1--4, 9, and 11-19 as set forth in a Non-final Office Action and modified in the Examiner's Answer. Non-final Office Action (Sept. 28, 2016) ("Non-final Act."); Examiner's Answer (Apr. 20, 2017) ("Ans."); 37 C.F.R. Â§ 41.3l(a)(l). We have jurisdiction under 35 U.S.C. Â§ 6(b). 1 The Appellant states that the application was assigned to Dunlop Sports Co. Ltd. ("Dunlop") on May 6, 2013, indicating that Dunlop is the real party in interest. Appeal Brief (Feb. 28, 2017) ("Appeal Br.") at 1. Appeal2017-009287 Application 13/886,291 The Examiner rejected all of the pending claims as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention and rejected all of the pending claims as unpatentable over various combinations of prior art. The Appellant argues that the claims are definite, and the Examiner's rejection should be reversed. The Appellant also argues that one of ordinary skill in the art would have no proper reason, rationale, or motivation to modify prior art cited by the Examiner in order to arrive at any claimed invention. For the reasons explained below, the Examiner provided adequate evidence to support a determination of indefiniteness, and adequate evidence and reasoning based on rational underpinnings to support a determination of obviousness of the claimed subject matter. Thus, we AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to golf balls that include a center, an inner envelope layer, an outer envelope layer, and a cover. Amended Specification (Feb. 29, 2016) ("Spec."), 1:11-14. Claims 1 and 19 are the only independent claims. Claim 1 illustrates the subject matter on appeal and is reproduced below with the disputed claim language shown in italics for emphasis. 1. A golf ball comprising a core and a cover positioned outside the core, wherein the core comprises a center, an mner envelope layer positioned outside the center, and an outer envelope layer positioned outside the inner envelope layer, the cover comprises one or more layers, 2 Appeal2017-009287 Application 13/886,291 wherein the center, the inner envelope layer, and the outer envelope layer are formed from a rubber composition; wherein the rubber composition of at least one of the center, the inner envelope layer, and the outer envelope layer includes: (a) a base rubber; (b) a co-crosslinking agent; ( c) a crosslinking initiator; and (d) an acid and/or a salt other than an a,B- unsaturated carboxylic acid having 3 to 8 carbon atoms or a metal salt thereof, the co-crosslinking agent (b) is: (b 1) an a,B-unsaturated carboxylic acid having 3 to 8 carbon atoms; or (b2) a metal salt of an a,B-unsaturated carboxylic acid having 3 to 8 carbon atoms, and a component having the greatest hardness in a range from a central point of the golf ball to a surface of the golf ball is an outermost layer of the cover; wherein the acid and/ or the salt ( d) 1s an aromatic carboxylic acid and/or a salt thereof; wherein a carbon number of a carboxylic acid component of the carboxylic acid and/or the salt thereof is equal to or greater than 1 but equal to or less than 8; and 3 Appeal2017-009287 Application 13/886,291 wherein an amount of the acid and/or the salt (d) is equal to or greater than 1.0 parts by weight but equal to or less than 5.0 parts by weight, per 100 parts by weight of the base rubber (a). Appeal Br. Claims Appendix ("Appeal Br. Cl. Appx."), 1. EVIDENCE Reiter us 4,688,801 Aug. 25, 1987 Yoshida US 6,361,454 Bl Mar. 26, 2002 Kato US 6,855,074 B2 Feb. 15,2005 Watanabe US 2006/0229143 Al Oct. 12, 2006 Sullivan US 2011/0143863 Al June 16, 2011 REJECTIONS The Non-final Office Action includes the following rejections: 1. Claims 1--4, 9, and 11-19 are rejected under 35 U.S.C. Â§ 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention; 2. Claims 1, 9, 11-13, and 15-18 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Watanabe, Kato, and Sullivan;2 2 Appellant cancelled claims 5-8 and claim 10. See Amendment Under 37 C.F.R. Â§ 1.116 (March 18, 2016), 3. Both the Appellant and the Examiner addressed only pending claims 1--4, 9, and 11-19 in briefing on appeal. See generally Appeal Br., Ans., Reply Brief (June 19, 2017) ("Reply"). Therefore, we address only pending claims 1, 9, 11-13, and 15- 18 for this rejection, and not claims 5-8 and 10 that the Examiner inadvertently included in the rejection. See Non-final Act. ,r 7. 4 Appeal2017-009287 Application 13/886,291 3. Claims 2--4 and 14 are rejected under 35 U.S.C. Â§ 103 as unpatentable over Watanabe, Kato, Sullivan, and Yoshida; 3 and 4. Claim 19 is rejected under 35 U.S.C. Â§ 103 as unpatentable over Watanabe, Kato, and Reiter. ANALYSIS Indefiniteness In the Non-final Office Action, the Examiner stated that the independent claims, claims 1 and 19, are indefinite because "the limitation providing for the carbon number of a carboxylic acid component of the carboxylic acid and/or salt thereof, may refer to the carboxylic acid component of (b ), the co-crosslinking agent, or to the carboxylic acid component of (d) the acid and/or salt." Non-final Act. ,r 4. The Appellant responds that appropriate antecedent basis exists because the limitation of claims 1 and 19 immediately preceding the wherein clause at issue refers explicitly to component ( d) rather than component (b ). Appeal Br. at 8. In answer, the Examiner notes that the independent claims describe component (b) as a carboxylic acid or salt of the carboxylic, and maintains 3 Appellant argues the patentability of claim 1 with regard to the first three rejections at issue here. Appeal Br. 8-15. Appellant does not argue separately for patentability of dependent claims 2--4, 9, and 11-18. See id.; id. at 15 (stating "[c]laims 2--4 and 14 ultimately depend from independent claim 1. As such, the unexpectedly superior results ... would also rebut any alleged primafacie case of obviousness with respect to this rejection."). Therefore, we select claim 1 as the representative claim, and claims 2--4, 9, and 11-18 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). 5 Appeal2017-009287 Application 13/886,291 that the Appellant could clarify this wherein clause at issue by stating explicitly that it is intended to further characterize component (d). Ans. ,r 3. The Appellant replies that the carbon number of the carboxylic acid of component (b) is already defined in claims 1 and 19, so the limitation at issue that describes the carbon number could only refer to component ( d). Reply 3. We sustain the indefiniteness rejection on the basis provided in the Non-final Office Action and agree that limitation could be clarified unequivocally simply by specifying that it applies to component ( d). Although Appellant notes that the carbon number of component (b) is explicitly defined in the independent claims prior to the wherein clause at issue that also defines a carbon number, the Examiner is correct that the limitation specifying that "a carbon number of a carboxylic acid component of the carboxylic acid and/ or the salt thereof is equal to or greater than 1 but equal to or less than 8" could apply to either component (b) or component ( d) because both are carboxylic acids or salts thereof. Appeal Br. Cl. Appx. at 1-2. To avoid any ambiguity, we sustain the Examiner's rejection of claims 1--4, 9, and 11-19 under 35 U.S.C. Â§ 112(b ). Unpatentability over Watanabe, Kato, and Sullivan The Examiner found that Watanabe discloses each limitation in claim 1 except the limitations that the core comprises an outer envelope layer formed from a rubber composition and that component ( d) is an aromatic carboxylic acid and/or a salt thereof. Non-final Act. ,r 7. The Examiner found that Kato teaches an outer envelope layer formed from a rubber composition. Id. The Examiner stated that it would have been 6 Appeal2017-009287 Application 13/886,291 obvious to one of ordinary skill in the art at the time the invention was made to provide Watanabe with a rubber outer core envelope layer as taught by Kato to "yield the predictable result of facilitating the customization of the response to the ball." Id. As to the remaining limitation, the Examiner found that Sullivan, which involves golf ball core rubber compositions, teaches that such a composition may include a component ( d) that is a salt of a carboxylic acid and may be an aliphatic acid ( such as zinc stearate) or an aromatic acid (such as benzoic acid with a carbon number greater than 1 but equal to or less than 8). Id. The Examiner stated that it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide Watanabe, as modified, with a known substitute component ( d), such as an aromatic carboxylic acid as taught by Sullivan. Id. The Appellant argues that the Examiner provides no appropriate rationale to combine the teachings of modified Watanabe and Sullivan because the Examiner supports the obviousness rejection with a mere conclusory statement by asserting that Sullivan's component ( d) is a known substitute for Watanabe's stearic acid and zinc stearate without providing any explanation for the statement. Appeal Br., 9. The Examiner maintains that "it would have been obvious to substitute one of the other components in place of zinc stearate, disclosed by both Watanabe and Sullivan, with an aromatic carboxylic acid or salt, as taught by Sullivan." Ans. ,r 4. The Examiner supports this conclusion regarding the obvious substitution of an aromatic carboxylic acid or salt as component ( d) stating that Sullivan teaches a similar rubber composition as in Watanabe "including the same components and disclosing materials suitable as component ( d), including 7 Appeal2017-009287 Application 13/886,291 zinc stearate as well as other materials, some of which are aromatic carboxylic acids or salts." Id. ,r 4. The Appellant further argues that the inclusion of the claimed component ( d) as taught by Sullivan is not an obvious substitution because the inclusion of component ( d) leads to unexpected results in the form of improved flight distance that would not be predictable to one of ordinary skill in the art. Appeal Br. at 10-11. The Appellant points to results obtained by forming the inner envelope layer from a rubber composition including the claimed acid and/or salt component ( d), such as those reported for Example 15 in the application's Specification. Id. The Appellant compares inventive Example 15 to Example 2 and Comparative Example 7, neither of which contain component ( d) as claimed, to show that the claimed invention has an unexpectedly superior flight distance. Id. The inner envelope layer of Example 15 includes zinc octoate, whereas zinc octoate is present in the center of Example 2 rather than in the inner envelope layer. Id. The inner envelope layer of Comparative Example 7 does not contain acid/salt component (d). Id. at 11. Example 15's flight distance was 181.3 meters, Example 2's flight distance was 180.5 meters, and Comparative Example 7's flight distance was 180.0 meters. Spec. Table 11 at 68, Table 15 at 72. Thus, the maximum flight difference between these examples is 1.3 meters. The Appellant also submitted an additional example in a 3 7 C.F .R. Â§ 1.132 Declaration to provide what Appellant terms a proper side-by-side comparison of the claimed invention and a golf ball that does not meet the claim limitations by comparing three golf balls that are the same except for the inner envelope layer. Appeal Br. at 12-13. See also Declaration Under 8 Appeal2017-009287 Application 13/886,291 37 C.F.R. Â§ 1.132 (Jun. 20, 2016) ("Sajima Dec."). The inner envelope layer of the Additional Example includes 5 parts by weight of zinc stearate, which has a carbon number of 18 that is outside of the claims' carbon number range for component ( d). The inner envelope layer of Example 17 includes 5 parts by weight of zinc myristate, which has a carbon number of 14 that is also outside of the claims' carbon number range for component ( d). Appeal Br. at 13. The inner envelope layer of Example 15 includes 5 parts by weight of zinc octoate, which has a carbon number of 8 that is within the claimed range for component (d). The Additional Example's flight distance was 180.4 meters, Example 17's flight distance was 180.7 meters, and Example 15's flight distance was 181.3 meters. Sajima Dec. at 2. The Appellant asserts that all of these examples show that the greater flight distance achieved with inventive Example 15 demonstrates that the claimed golf ball is unexpectedly superior to golf balls that are outside of the scope of the claimed carbon number range for component ( d). The Examiner answers that Example 15 includes zinc octoate in the inner envelope layer, which is "a salt of an aliphatic acid and does not satisfy the limitations of Claim 1, requiring an aromatic acid or salt." Ans. ,r 5. Thus, the Examiner maintains that the comparison between Example 15 and Example 2 does not establish unexpected results of the claimed golf ball over the prior art. Id. Regarding the Additional Example provided in the declaration, the Examiner answers that although Example 15 provides an additional 0.9 meters of flight distance over the Additional Example, this difference in flight distance is to be expected with a variation of the concentration and selection of material. Ans. ,r,r 6, 8. The Examiner also states that the prior 9 Appeal2017-009287 Application 13/886,291 art teaches the inclusion of several alternative materials, including fatty acids and fatty acid salts, and a range for their concentrations. Id. ,r 6. The Examiner contends that "the claimed composition does not define a golf ball having superior and unexpected results over balls not possessing the claimed features" because similar results were obtained by including a component ( d) that is outside the scope of the claimed invention, such as those used in Examples 17 and 18. Id. ,r,r 5---6. The Appellant replies that the difference between the flight distance of Example 15 and the flight distances of Examples 17 and 18 is 0.3 to 0.6 meters. Reply, 3. The Appellant argues that a person of ordinary skill in the art would find such a difference to be very significant. Id. The Appellant also argues that the difference in flight distance is evidence of unexpected results that overcome any prima facie case of obviousness. Id. at 4. After considering the arguments submitted by the Examiner and the Appellant, we are not persuaded that the Examiner erred in rejecting claims 1, 9, 11-13, and 15-18 under 35 U.S.C. Â§ 103 as unpatentable over Watanabe, Kato, and Sullivan. As explained by the Examiner, the combined prior art references disclose each limitation found in the Appellant's claims. The Appellant does not dispute that the references disclose each of the claim limitations, but argues that the Examiner provided no motivation to combine the teachings of Watanabe and Sullivan. We agree with the Examiner's determination that one having ordinary skill in the art would have been led by the teachings of both Kato and Sullivan to modify Watanabe's core and rubber compositions. The Specifications of Watanabe, Kato, and Sullivan each discuss goals of improving flight distance which is also a goal of the invention claimed here. See Watanabe [0001]; Kato 1:22-26, 2:5-10, 2:20- 10 Appeal2017-009287 Application 13/886,291 23; Sullivan [0006]; Spec. 1: 17-23. Also, we agree with the Examiner that Sullivan, which teaches golf ball core rubber compositions that may include a component ( d), teaches a known substitute component ( d), that as we discuss below, we agree would produce predictable results. Non-final Act. ,r 7. Therefore, we find that the Examiner has articulated adequate reasoning based on rational underpinnings for the proposed combination of Watanabe, Kato, and Sullivan. The Appellant also argues that the differences in flight distance between a golf ball made according to the claims and one that is not, as discussed in the Specification and the Sajima Declaration, show unexpected results for the claimed invention that overcome the Examiner's obviousness rejection. We find on this record that Appellant has failed to show that the range of flight differences between the claimed golf ball and those outside of the claimed composition would represent a significant difference in flight distance to one of ordinary skill in the art. See Sajima Declaration ( conclusory statement that the superior results achieved by the claimed invention were unexpected); Appeal Br. 13 ( conclusory statement that inventive Example 15 is unexpectedly superior). The Appellant uses Example 15 as the best example of the claimed invention, but there are other examples in the Specification with similar or better flight distances that do not meet the claim limitations, such as Examples 5 and 10. Spec. Table 12 at 69, Table 13 at 70. Example 5 has a flight distance of 181.9 meters and Example 10 has a flight distance of 181.5 meters. Id. On this record, we agree with the Examiner that the Appellant's flight distance results are to be expected with a variation of the concentration 11 Appeal2017-009287 Application 13/886,291 and selection of the material. Thus, we sustain the rejection of the claims under 35 U.S.C. Â§ 103. Unpatentability over Watanabe, Kato, Sullivan, and Yoshida Claims 2--4 and 14 depend from claim 1, either directly or indirectly. As discussed above, the Examiner found that the combination of Watanabe, Kato, and Sullivan discloses each limitation in claim 1. The Appellant relies on the same arguments discussed above that were used to address the obviousness rejections over Watanabe, Kato, and Sullivan as a group. Appeal Br., 9-13, 15. For the reasons discussed above, we do not find error in the Examiner's rejection of claims 2--4 and 14. Thus, we sustain the rejection of claims 2--4 and 14. Unpatentability over Watanabe, Kato, and Reiter The Examiner found that Watanabe discloses everything in claim 19 except the limitation that the core comprises an outer envelope layer formed from a rubber composition and the limitation that component ( d) is not stearic acid or zinc stearate. Non-final Act. ,r 9. The Examiner found that Kato teaches an outer envelope layer formed from a rubber composition. Id. The Examiner stated that it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide Watanabe with an outer core envelope layer as taught by Kato to "yield the predictable result of facilitating the customization of the response to the ball." Id. The Examiner found that Reiter teaches a component ( d) that is a fatty acid or a zinc salt of the fatty acid, such that the fatty acid may include stearic acid, myristic acid, octanoic acid, and lauric acid. Id. at 8-9. The Examiner also found that 12 Appeal2017-009287 Application 13/886,291 Reiter's carboxylic acid component of the carboxylic acid and/or salt thereof may exclude stearic acid and may have a carbon number in the range of 1 to 8 because Reiter discloses octanoic acid as a possible fatty acid choice. Id. Reiter also teaches that the amount of acid and/or salt ( d) may be 1.0-5.0 parts by weight per 100 parts by weight of base rubber. Id. The Examiner stated that it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide Watanabe with a known substitute component ( d) composed of the claimed amount of fatty acid or salt excluding stearic acid and zinc stearate and having the claimed carbon number as taught by Reiter. Id. The Appellant relies on the same arguments described above that were used to address the obviousness rejections over Watanabe, Kato, and Sullivan as a group. Appeal Br. at 9-13, 16-21. For the reasons discussed above, we do not find error in the Examiner's rejection of claim 19. Thus, we sustain the rejection of claim 19. DECISION The decision of the Examiner rejecting claims 1-4, 9, and 11-19 is affirmed. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 13