Ex Parte Simonutti et al

Patent Trial and Appeal BoardSep 27, 2012

10780005 (P.T.A.B. Sep. 27, 2012)

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. 10/780,005 02/17/2004 Frank M. Simonutti WG0057H 9568 7590 09/28/2012 Terence P. O'Brien Wilson Sporting Goods Co. 8700 W. Bryn Mawr Avenue Chicago, IL 60631 EXAMINER HUNTER, ALVIN A ART UNIT PAPER NUMBER 3711 MAIL DATE DELIVERY MODE 09/28/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRANK M. SIMONUTTI and ROBERT T. THURMAN ____________ Appeal 2009-011186 Application 10/780,005 Technology Center 3700 ____________ Before JOHN C. KERINS, EDWARD A. BROWN and WILLIAM V. SAINDON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011186 Application 10/780,005 2 STATEMENT OF THE CASE Frank M. Simonutti and Robert T. Thurman (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 5, 8, 10-13, 18, 19, 28-30, 32-34, 36, 37, 41, 42 and 57-68. Claims 3, 4, 6, 7, 9, 14-17, 20-27, 31, 35, 38-40 and 43-56 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ claimed invention is to a golf ball. Claim 1, reproduced below, is illustrative: 1. A golf ball comprising: a solid center having a deflection, under an applied static load of 200 lb., of between about 0.090 inches and about 0.150 inches; at least one intermediate layer comprised of thermoplastic material, the at least one intermediate layer comprises a co- or ter-polymer of ethylene and acrylic acid, wherein 100% of the acid groups are neutralized with metal ions, the co- or ter-polymer including a level of Magnesium Oleate; and a cover layer comprising an ionomer or ionomer blend and having a Shore D hardness, measured on the curved surface of the golf ball, of greater than about 70; wherein, the golf ball, when struck by a driver club at a clubhead velocity of about 160 feet-per- second, has an initial velocity off the clubhead of greater than 240 feet-per-second. Appeal 2009-011186 Application 10/780,005 3 THE REJECTIONS The Examiner has rejected: (i) claims 1, 2, 5, 8, 18, 19 and 57 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan (US 5,779,561, iss. Jul. 14, 1998) in view of Statz (US 6,815,480 B2, iss. Nov. 9, 2004); (ii) claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz and Yamada (US 5,585,440, iss. Dec. 17, 1996); (iii) claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz and Yamagishi (US 5,779,563, iss. Jul. 14, 1998); (iv) claims 33 and 34 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz, Yamada and Yamagishi; (v) claims 10 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz and Louis G. Caschera, The Legal Golf Ball, in StrictlyGolf Balls, The Golf Handbook, Revised Edition 16-17 (1998) (hereinafter “Caschera”); (vi) claims 36 and 37 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz, Yamagishi and Caschera; (vii) claims 60 and 61 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz and Caschera; and (viii) claims 65 and 66 under 35 U.S.C. § 103(a) as being unpatentable over Sullivan in view of Statz, Yamada and Caschera. Appeal 2009-011186 Application 10/780,005 4 ANALYSIS Claims 1, 2, 5, 8, 18, 19 and 57-- Sullivan/Statz Appellants present arguments for claim 1, separate arguments for claim 2, and do not present separate or additional arguments for the remaining claims subject to this rejection. App. Br. 5-9. We will take claim 1 as representative of the group including the claims that were not separately argued. The Examiner found that Sullivan disclosed the claimed golf ball, with the exception that, while an intermediate layer containing an ionomer was disclosed, the type of ionomer was not specifically disclosed. Ans. 7. Statz was relied on as disclosing the claimed ionomer, and the Examiner concluded that it would have been obvious to modify the Sullivan golf ball in accordance with the teachings of Statz in order to increase the resilience of the golf ball. Id. The Examiner reasoned that, since the resulting golf ball would have the same structure as the claimed golf ball, the ball would possess the claimed properties directed to initial velocity off a clubhead (claim 1) and coefficient of restitution (claim 2). Id. Appellants argue that Sullivan does not disclose a golf ball meeting the limitation that the cover layer has a Shore D hardness of “greater than about 70,” and thus the ball would not meet the 240 feet-per-second initial velocity requirement. App. Br. 6. In response to positions taken by the Examiner relative to the Shore D hardness of the cover of the Sullivan ball, Appellants maintain that Sullivan does not disclose the significance of producing a ball with the claimed Shore D hardness level for the cover to obtain the claimed initial velocity requirement. Reply Br. 3. After acknowledging that Sullivan discloses a Comparative Example and an Appeal 2009-011186 Application 10/780,005 5 Example of the Sullivan invention in which the golf balls have a cover with a Shore D hardness of 68, Appellants maintain that this does not teach or suggest “a cover layer with a Shore D hardness value of ‘about 70’ or, more particularly, greater than about 70.” App. Br. 6; Reply Br. 3. In addition to the specific examples presented in Sullivan, Sullivan further discloses that “[t]he outer cover layer preferably has a greater hardness than the inner cover layer and a Shore D hardness of at least 60.” Sullivan, col. 2, l. 66-col. 3, l. 1. Sullivan further describes that “[t]he inner cover layer 14 preferably has a Shore D hardness . . . in the range of 1-80 . . . .” Sullivan, col. 10, ll. 40-43. As such, Sullivan clearly contemplates that the inner cover layer can have a hardness in the range of 70-80, and given Sullivan’s disclosure that the outer cover layer preferably has a greater hardness than the inner cover layer, Sullivan teaches or suggests an outer cover layer having a Shore D hardness in that same range to slightly higher than that range. The combined teachings of Sullivan and Statz therefore result in a golf ball meeting all structural limitations set forth in claim 1. As posited by the Examiner, since the subject matter of claim 1 does not structurally distinguish over the combination, the golf ball is regarded as inherently meeting the initial velocity requirement set forth in claim 1. Appellants have argued that golf balls with outer covers having a hardness of 68 on the Shore D scale would not meet the claimed initial velocity requirement. Appellants have not presented evidence or otherwise established that the Sullivan ball having an outer cover of a hardness above 70 Shore D, as suggested in the portions of the Sullivan description noted above, and as modified by Statz, would not meet the claimed initial velocity requirement. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as Appeal 2009-011186 Application 10/780,005 6 here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Appellants further argue that claim 1 includes structural limitations as well as performance-based property limitations, and that, “[a] variety of factors can affect the initial velocity property of a golf ball. For example, the weight, specific fillers, and/or size of the ball can all affect the initial velocity. The initial velocity limitation distinguishes Appellants’ claimed golf ball from other golf balls . . . .” Reply Br. 4. In the preceding paragraph, Appellants recite the claimed structural limitations, stating that “the resulting golf ball has exceptional initial velocity properties when struck with a driver club.” Id. However, with the exception of the outer cover hardness, which we have addressed above, Appellants have not contended that the Sullivan golf ball, modified as proposed by the Examiner in view of Statz, does not possess those characteristics. The rejection of claim 1, and that of claims 5, 8, 18, 19 and 57 grouped therewith, is sustained. Appellants separately argue, for claim 2, that the coefficients of restitution (COR) disclosed in Sullivan and in Statz are not greater than 0.815 at a test velocity of 150 feet-per-second. App. Br. 9; Reply Br. 3-4. The arguments fail to address the fact that the rejection is one made based on modifying the Sullivan golf ball as proposed by the Examiner, and that the coefficients of restitution reported in the Sullivan and Statz patents are not reflective of what the coefficient of restitution would be for the modified Appeal 2009-011186 Application 10/780,005 7 Sullivan golf ball. Again, since the claimed structural features are met by the modified Sullivan golf ball, it is reasonable for the Examiner to maintain that the claimed coefficient of restitution limitation is met, and the burden is on Appellants to demonstrate otherwise. This, Appellants have not done. The rejection of claim 2 is sustained. Claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68--Sullivan/Statz/Yamada Appellants note that “[m]uch of the discussion above relating to claim 1 is directly applicable to these limitations of claim 28.” App. Br. 10. In particular, Appellants argue, as they did for claims 1 and 2 in relation to Sullivan and Statz, that Yamada “does not disclose, suggest or teach the Shore D hardness and COR limitations of claim 28.” Id. As noted above, Sullivan discloses the claimed Shore D hardness for the cover layer, and, given that the structural limitations of the claim are met by the Examiner’s proposed combination and modification, the COR limitation is seen as being met as well, in the absence of evidence to the contrary. The rejection of claims 28-30, 32, 41, 42, 58, 59, 62-64, 67 and 68 is sustained. Claims 11 and 12--Sullivan/Statz/Yamagishi Claim 11 depends from claim 1 and further recites that the core, the at least one intermediate layer and the cover layer are to have approximately the same specific gravity. App. Br., Clms. App. Claim 12 depends from claim 11, and recites that the specific gravities of those elements are to be between about 1.118 and 1.132. Id. Appellants maintain that Yamagishi provides no suggestion or motivation to produce a core, an intermediate layer and a cover having approximately the same specific gravity. App. Br. 11. Rather, argue Appeal 2009-011186 Application 10/780,005 8 Appellants, Yamagishi teaches increasing the moment of inertia of the ball by moving as much weight as possible to the outer portion of the golf ball. Id. Appellants further assert that Yamagishi specifically teaches away from the components having approximately the same specific gravity, in that the reference teaches that the outer cover should have a higher specific gravity than the inner cover. Id. Yamagishi does state that “[t]he cover outer layer 3 is formed to a greater specific gravity than core 1 and the inner cover layer 2 . . . .” Yamagishi, col. 3, ll. 59-60. Notwithstanding this disclosure, as the Examiner twice points out, Yamagishi almost immediately thereafter specifically discloses that “the difference of specific gravity between the cover outer layer and the core is 0.01 to 0.15.” Yamagishi, col. 4, ll. 3-4; Ans. 11, 16. While Appellants do not appear to have provided specific guidance in the Specification as to what does and does not constitute “approximately the same” with respect to the claim limitation at issue, a difference of 0.01 where the preferred values for specific gravity are on the order of 1.10 to 1.25 would appear to meet that limitation. Claim 12 is further illustrative of a range contemplated by Appellants. The variance between the lower claimed limit (1.118) and the upper claimed limit (1.132) for the specific gravities of the recited ball elements is 0.014, which is higher than at least part of the range (0.01-0.15) contemplated by Yamagishi. We are not persuaded that the Examiner erred in concluding that the subject matter of claims 11 and 12 would have been obvious, and the rejection is sustained. Appeal 2009-011186 Application 10/780,005 9 Claims 33 and 34--Sullivan/Statz/Yamada/Yamagishi These claims present the same limitations as discussed above with respect to claims 11 and 12, with the instant claims depending from claim 28. For the same reasons discussed above, we are not persuaded that the Examiner erred in concluding that the subject matter of these claims would have been obvious. The rejection is sustained. Claims 10 and 13--Sullivan/Statz/Caschera Claims 10 and 13 contain limitations as to the size of the golf ball, and the recited sizes are smaller than the minimum required by the United States Golf Association (USGA) for use in USGA sanctioned events. Compare, Caschera, p. 16, with claims 10, 13. The Examiner concluded that it would have been obvious, in view of Caschera’s teaching that reducing the diameter of the ball can increase distance, to produce the modified Sullivan ball with a diameter meeting the limitations of claims 10 and 13 in order to increase distance. Ans. 12. Appellants counter that Sullivan discloses that the golf ball should be at least 1.68 inches, that such disclosure is consistent with USGA requirements. App. Br. 13. Appellants further urge that, notwithstanding the Caschera disclosure, modifying the Sullivan ball to have a smaller diameter within the claimed ranges “would be repugnant to the teachings” of Sullivan, and would change the principle of operation of the Sullivan ball by taking it outside the parameters of USGA approval. App. Br. 13. We are not persuaded that moving outside the USGA requirements by producing a smaller diameter golf ball would change the principle of operation of the Sullivan golf ball. It would change the ball from being USGA approved to being not approved. However, as noted by Appellants, Appeal 2009-011186 Application 10/780,005 10 the USGA specifications apply only to play in USGA-sanctioned events, and that it is known in the art to produce golf balls that do not meet USGA specifications. Spec., p. 3, paras. [0006]-[0008]. These golf balls were presumably designed for use by golfers playing outside of USGA-sanctioned events, and the disclosure reflects that it is well within the level of ordinary skill in the art to include the size of the golf ball as a parameter that may be changed in order to affect the performance of the ball. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007) (a person of ordinary skill is also a person of ordinary creativity, not an automaton). The statement that the proposed modification would be repugnant to the teaching of Sullivan appears to also be based on the modification disqualifying the ball from USGA approval. For the reasons noted above, this argument is not persuasive of nonobviousness. The rejection of claims 10 and 13 is sustained. Claims 36 and 37--Sullivan/Statz/Yamagishi/Caschera These claims present the same limitations as discussed above with respect to claims 10 and 13, with the instant claims depending from claim 28. For the same reasons discussed above, we are not persuaded that the Examiner erred in concluding that the subject matter of these claims would have been obvious. The rejection is sustained. Claims 60 and 61--Sullivan/Statz/Caschera These claims are directed to a range of weights for the golf ball, specifically weights that do not fall within USGA specifications. As with the size limitations discussed above, Appellants argue that to modify the weight of the Sullivan ball to have it exceed the maximum allowable USGA weight would be repugnant to the teachings of Sullivan. App. Br. 14. For Appeal 2009-011186 Application 10/780,005 11 essentially the same reasons discussed above with respect to claims 10 and 13, we find this argument unpersuasive. The rejection of claims 36 and 37 is sustained. Claims 65 and 66--Sullivan/Statz/Yamada/Caschera. These claims present the same limitations as discussed above with respect to claims 60 and 61, with the instant claims depending from claim 28. For the same reasons discussed above, we are not persuaded that the Examiner erred in concluding that the subject matter of these claims would have been obvious. The rejection is sustained. CONCLUSION Appellants have not persuaded us that the subject matter of claims 1, 2, 5, 8, 10-13, 18, 19, 28-30, 32-34, 36, 37, 41, 42 and 57-68 would not have been obvious over the references cited against each claim. DECISION The decision of the Examiner to reject claims 1, 2, 5, 8, 10-13, 18, 19, 28-30, 32-34, 36, 37, 41, 42 and 57-68 under 35 U.S.C. § 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh