DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. US2004/0248670A1.
Okamoto teaches a golf ball including a composition having an unsaturated
polymer, a cross-linking agent, a peptizer, and an accelerator (reference claims 1 and 7), which can be molded (reference claim 45). Okamoto discloses that the accelerator can be selected to be either a 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole (reference claim 11).
Regarding claims 1, 3, 5, 7, 9-12 and 17-20, Okamoto teaches a crosslinked golf ball core Table 3, Core #5 (Table 1, last entry, page 7) which comprises 100 parts of polybutadiene rubber BR40 (corresponding to base rubber (a)), 15 parts zinc oxide, 39 parts of ZDA zinc diacrylate (corresponding to co-crosslinking agent (b) and instant claims 5, 7, 11-12, 19-20) 1 part of Varox 231 XL, which is a peroxide crosslinking initiator 1,1-bis( t-butylperoxy)-3,3,5-tri-methylcyclohexane (para [0031]) (and corresponds to the required (c)), 0.75 part of Amine PCTP ammonium salt of pentachlorothiophenol (para [0048]) and 2 part of Nocceler M60, which is a salt of 2-mercaptobenzothiazole (para [0025]).
Okamoto notes that the invention is not limited to the particular disclosed embodiments (para [0051]), and recognizes the accelerator 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole as equivalents (reference claim 11). Okamoto further provides the optimum range of the zinc oxide filler to be 10 to 80 parts per 100 parts of the rubber (reference claims 17-19).
In order to optimize the physical properties such as density of the golf ball, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Okamoto’s composition Core#5 (Table 3) where 15 parts of zinc oxide is decreased to 10 parts and where 2 part of Nocceler M60 is substituted with 2-mercaptobenzothiazole, and is shown in the Table below. The 2-mercaptobenzothiazole corresponds to the required benzothiazole of formula (1) where R1, and R2 to R5 are hydrogen. It is prima facie obvious to substitute art recognized equivalence for the same purpose of creating a crosslinked golf ball core. See MPEP 2144.06 II.
Table 3, Embodiment of Core #5
Obvious Embodiment of Core #5
MW (g/mol)
moles
Cis-poly1,4-butadiene, CB10 (Base rubber)
100
100
e) Zinc Oxide
15
10
81.406
10/81.406=0.1228
Zinc Diacrylate (co-crosslinking agent)
39
39
Varox 231 XL9
1
1
302.4
1/302.4=0.0033
f) Amine PCTP (organic sulfur compound)
1
1
2-mercaptobenzothiazole
2
2
167.25
2/167.25=0.0119
In the obvious composition of Okamoto, as depicted above, the amount of benzothiazole compound (d) is present at 2 part by mass with respect to 100 parts by mass of the base rubber, and the molar ratio of (d)/(c) = 0.0119/0.0033 = 3.6, which meet the requirements of instant claims 3, 10 and 18.
The total mole M2 from compound of formula (1) = 0.0119. Mole of M1 of zinc oxide, compound (e)= 0.1228 and the valent of zinc =2. The required ratio (M2/(M1 x valent)) = 0.0119/ (0.1228 x 2)= 0.048, meets the claimed requirement.
The claimed relationship {(T2-T1)/(X-18)} ≥ 0.46 (of instant claims 1, 9 and 17) would be satisfied by Okamoto’s obvious rubber embodiment as shown in the Table above (and the crosslinked product, a golf ball core), since the composition meets all the applicant’s components and their required amounts. Applicant’s attention is brought to: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Regarding claims 2, 4, 6, 8, 13-16 and 21-24, Okamoto teaches a crosslinked golf ball core Table 3, Core #5 (Table 1, last entry, page 7) which comprises 100 parts of polybutadiene rubber BR40 (corresponding to base rubber (a)), 15 parts zinc oxide, 39 parts of ZDA zinc diacrylate (corresponding to co-crosslinking agent (b) and instant claims 6, 8, 15-16, 23-24) 1 part of Varox 231 XL, which is a peroxide crosslinking initiator 1,1-bis(t-butylperoxy)-3,3,5-tri-methylcyclohexane (para [0031]) (and corresponds to the required (c)), 0.75 part of Amine PCTP ammonium salt of pentachlorothiophenol (para [0048]) and 2 part of Nocceler M60, which is a salt of 2-mercaptobenzothiazole (para [0025]).
Okamoto notes that the invention is not limited to the particular disclosed embodiments (para [0051]), and recognizes the accelerator 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole as equivalents (reference claim 11). Okamoto further provides the optimum range of the zinc oxide filler to be 10 to 80 parts per 100 parts of the rubber (reference claims 17-19).
In order to optimize the physical properties such as density of the golf ball, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Okamoto’s composition Core#5 (Table 3) where 15 parts of zinc oxide is decreased to 10 parts and where 2 part of Nocceler M60 is substituted with 2-mercaptobenzothiazole, and is shown in the Table below. The 2-mercaptobenzothiazole corresponds to the required benzothiazole of formula (1) where R1, and R2 to R5 are hydrogen. It is prima facie obvious to substitute art recognized equivalence for the same purpose of creating a crosslinked golf ball core. See MPEP 2144.06 II.
Table 3, Embodiment of Core #5
Obvious Embodiment of Core #5
MW (g/mol)
moles
Cis-poly1,4-butadiene, CB10 (Base rubber)
100
100
e) Zinc Oxide
15
10
81.406
10/81.406=0.1228
Zinc Diacrylate (co-crosslinking agent)
39
39
Varox 231 XL9
1
1
302.4
1/302.4=0.0033
f) Amine PCTP (organic sulfur compound)
1
1
2-mercaptobenzothiazole
2
2
167.25
2/167.25=0.0119
In the obvious composition of Okamoyo, as depicted in the Table above the amount of benzothiazole compound (d) is present at 2 part by mass with respect to 100 parts by mass of the base rubber, and the organic sulfur compound Amine PCTP (ammonium salt of pentachlorothiophenol) corresponding to component (f) is present at 1 part by mass, and thus the mass ratio of (d)/(f) = 2/1 = 2, which meets the required ratio.
The amount of benzothiazole compound (d) is present at 2 part by mass with respect to 100 parts by mass of the base rubber, and the molar ratio of (d)/(c) = 0.0119/0.0033 = 3.6, which meet the requirements of instant claims 4, 14 and 22.
The total mole M2 from compound of formula (1) = 0.0119. Mole of M1 of zinc oxide, compound (e)= 0.1228 and the valent of zinc =2. The required ratio (M2/(M1 x valent)) = 0.0119/ (0.1228 x 2)= 0.048, meets the claimed requirement.
The claimed relationship {(T4-T3)/(X-18)} > 0.3 (of instant claims 2, 13 and 21) would be satisfied by Okamoto’s obvious rubber embodiment as shown in the Table above (and the crosslinked product, a golf ball core), since the composition meets all the applicant’s components and their required amounts. Applicant’s attention is brought to: Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Response to Arguments
Applicant’s arguments filed on 04/28/2026 with respect to prior art rejection of claim(s) 1-26 under 35 U.S.C § 103 over Kim US 8,262,509B2 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The terminal disclaimer filed on 04/28/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of prior US patent No. 12,275,807B2 has been reviewed and is accepted. The terminal disclaimer has been recorded. The approved terminal disclaimer overcomes the double patenting rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765
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