Ex Parte Tomita et al

Patent Trial and Appeal BoardAug 23, 2017

13406413 (P.T.A.B. Aug. 23, 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. 13/406,413 02/27/2012 Seisuke Tomita 11-0731 7600 US/201882-361692 126323 7590 08/25/2017 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 08/25/2017 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 SEISUKE TOMITA and THOMAS J. KENNEDY III Appeal 2016-004996 Application 13/406,413 Technology Center 3700 Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-004996 Application 13/406,413 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 4, 6, 7, and 9. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE CLAIMED SUBJECT MATTER The claims are directed to a golf ball having a larger, lower-density inner core and a thinner, higher-density outer core. Spec. 11. Sole independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A solid golf ball comprising: an inner core; an outer core essentially surrounding the inner core; and a cover essentially surrounding the outer core and having an outer surface comprising a dimple pattern comprising a plurality of dimples; wherein the sold golf ball has a moment of inertial of at least 86 g-cm2; wherein the inner core comprises, by weight, a blend of from about 0.5 to 99.5% of one or more highly neutralized acid polymers and from about 0.5 to about 99.5% one or more metallocene-catalyzed polymers, based on the total weight of the polymers, and has a specific gravity between about 0.85 and 0.95, a COR of 0.795 to about 0.89 and a diameter of from about 21 to about 37 mm; and wherein the outer core comprises one or more highly neutralized acid polymers and has a specific gravity of from about 1.3 to about 4, a thickness of from about 0.25 mm to about 2 mm, and wherein the cover has a specific 2 Appeal 2016-004996 Application 13/406,413 gravity equal to or greater than the specific gravity of the outer core. REFERENCES Harris US 6,025,442 Feb. 15,2000 Higuchi US 6,210,292 B1 Apr. 3, 2001 Boehm US 2008/0171617 A1 July 17,2008 REJECTION Claims 1, 4, 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Boehm, Harris, and Higuchi. Non-Final Act. 3. ANALYSIS The Examiner relies on Boehm to teach the claimed solid golf ball having, inter alia, an inner core, an outer core, and a cover with a plurality of dimples, the golf ball having the claimed moment of inertia. Non-Final Act. 3 (citing Boehm || 18, 20, 174, 241, Fig. 1). The Examiner also finds that Boehm’s golf ball comprises a blend of one or more highly neutralized acid polymers and one or more metallocene-catalyzed polymers, but acknowledges that Boehm does not teach the specific claimed weight percentages of those materials. Id. at 3^4. For that limitation, the Examiner relies on Harris. Id. at 4 (citing Harris, 4:14—16, 5:1—7). The Examiner also acknowledges that the combination of Boehm and Harris does not disclose that the outer core has a thickness of from 0.25 mm to about 2 mm, and wherein the cover has a specific gravity that is equal to or greater than the outer core’s specific gravity. Id. Therefore, the Examiner relies on Higuchi for this limitation. Id. at 5 (citing Higuchi, 5:30—34, 6:5—9, Table 5). According to the Examiner, it would have been 3 Appeal 2016-004996 Application 13/406,413 obvious to one of ordinary skill to modify the pairing of Boehm and Harris to make the outer core have the thickness taught by Higuchi, and to make the cover with a specific gravity equal to or greater than the outer core’s specific gravity, because “doing so would be a simple substitution” that would “obtain predictable results,” specifically, “‘a very soft pleasant feel upon approach shots [and] putting, and ease of control upon iron shots, and a satisfactory trajectory and improved flight performance upon full shots with a driver.’” Id. (quoting Higuchi, 1:55—60). Appellants respond that a person of ordinary skill in the art would not have had a reasonable expectation of achieving the benefits promised by Higuchi simply by adopting its outer core thickness and a cover specific gravity that is equal to or greater than the intermediate layer’s specific gravity, because Higuchi makes clear that those benefits are obtained only when all of its inventive features are utilized. App. Br. 4—5. We agree with Appellants. Higuchi teaches a golf ball with numerous material and physical properties. Higuchi’s golf ball includes a solid core, intermediate layer, and cover, the cover having a Shore D hardness that is at least 20 units higher than the Shore D hardness of the intermediate layer, the golf ball having a specific “dimple volume ratio” determined by the product of the Shore D hardness of the cover and the Shore D hardness of the intermediate layer. Higuchi, 1:55—2:28. In a preferred embodiment, the intermediate layer has a Shore D hardness of 5 to 35, a thickness of 0.2 to 5.0 mm, and a specific gravity of at least 0.8; the cover has a Shore D hardness of 40 to 70, a thickness of 1.0 to 5.0 mm, and a specific gravity of at least 0.9. Id. at 2:42—56. As Appellants note, Higuchi teaches that it is only “[w]hen all these features are fulfilled” that the ball will have “a very 4 Appeal 2016-004996 Application 13/406,413 soft pleasant feel upon approach shots and putting, a high spin receptivity and hence, ease of control upon iron shots, and a satisfactory trajectory and improved flight performance upon full shots with a driver.” Higuchi, 2:57— 61; see also App. Br. 6. Based on this teaching, we are not persuaded that a person of ordinary skill in the art would reasonably have expected to obtain these benefits only by utilizing the specified intermediate-layer thickness and a cover specific gravity equal to or greater than the intermediate layer’s specific gravity. Further, the Examiner has not identified any teaching in Higuchi that describes any beneficial attributes obtained solely from these properties. Therefore, we are not persuaded that a person of ordinary skill in the art would have combined Boehm and Harris as the Examiner proposes. For these reasons, we do not sustain the rejection. DECISION For the above reasons, the Examiner’s rejection of claims 1, 4, 6, 7, and 9 is reversed. REVERSED 5