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 1-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. US 8,262,509 B2.
Kim teaches a golf ball including a composition having an unsaturated
polymer, a cross-linking agent, a peptizer, and an accelerator (abstract and reference claim 1), which can be molded (col 10, line 4). Kim discloses that the accelerator can be selected to be either a 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole (reference claim 8 and col 5, line 24).
Regarding claims 1, 3, 5, 7, 9-12 and 17-20, Kim teaches a crosslinked golf ball core Table 1, Core #7 (Table 1, last entry, col 10) which comprises 100 parts of polybutadiene rubber CB10 (corresponding to base rubber (a)), 17.25 parts Zinc Oxide, 35 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 initiator 1,1-bis( t-butylperoxy)-3,3,5-tri-methylcyclohexane (col 6, lines 65-66) (and corresponds to the required (c)), 1 part of DBPP dibenzamidodiphenyldisulfide and 1 part of Nocceler M60, which is a salt of 2-mercaptobenzothiazole (col 5, lines 10-15). Kim notes that the invention is not limited to the particular disclosed embodiments (col 11, lines 45-46), and recognizes the accelerator 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole as equivalents (reference claim 8). An obvious embodiment of Core#7 (Table 1) would be where 1 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.
Kim Table 1, Obvious Embodiment of Core #7
Effective amounts per 100 parts by mass of base rubber
MW (g/mol)
moles
Cis-poly1,4-butadiene, CB10 (Base rubber)
100
100
e) Zinc Oxide
17.25
17.25
81.406
17.25/81.406=0.2119
Zinc Diacrylate (co-crosslinking agent)
35
35
Varox 231 XL(crosslinking initiator)
1
0.4
302.4
0.4/302.4=0.0013
f) dibenzamido
diphenyldisulfide
1
1
2-mercaptobenzothiazole
1
1
167.25
1/167.25=0.0059
In the obvious composition of Kim, as depicted above, the amount of benzothiazole compound (d) is present at 1 part by mass with respect to 100 parts by mass of the base rubber, and the molar ratio of (d)/(c) = 0.0059/0.0013 = 4.5, which meet the requirements of instant claims 3, 10 and 18.
The claimed relationship {T2-T1)/(X-18)} ≥ 0.46 (of instant claims 1, 9 and 17) would be satisfied by Kim’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, Kim teaches a crosslinked golf ball core Table 1, Core #7 (Table 1, last entry, col 10) which comprises 100 parts of polybutadiene rubber CB10 (corresponding to base rubber (a)), 17.25 parts Zinc Oxide, 35 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 initiator 1,1-bis( t-butylperoxy)-3,3,5-tri-methylcyclohexane (col 6, lines 65-66) (and corresponds to the required (c)), 1 part of DBPP dibenzamidodiphenyldisulfide (which corresponds to applicant’s organic sulfur compound (f)) and 1 part of Nocceler M60, which is a salt of 2-mercaptobenzothiazole. Kim notes that the invention is not limited to the particular disclosed embodiments (col 11, lines 45-46), and recognizes the accelerator 2-mercaptobenzothiazole and a salt of 2-mercaptobenzothiazole as equivalents (reference claim 8). An obvious embodiment of Core#7 would be where 1 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.
Kim Table 1, Obvious Embodiment of Core #7
Effective amounts per 100 parts by mass of base rubber
MW (g/mol)
moles
Cis-poly1,4-butadiene, CB10 (Base rubber)
100
100
e) Zinc Oxide
17.25
17.25
81.406
17.25/81.406=0.2119
Zinc Diacrylate (co-crosslinking agent)
35
35
Varox 231 XL(crosslinking initiator)
1
0.4
302.4
0.4/302.4=0.0013
f) dibenzamido
diphenyldisulfide
1
1
2-mercaptobenzothiazole
1
1
167.25
1/167.25=0.0059
In the obvious composition of Kim, as depicted in the Table above the amount of benzothiazole compound (d) is present at 1 part by mass with respect to 100 parts by mass of the base rubber, and the organic sulfur compound dibenzamidodiphenyldisulfide corresponding to component (f) is also present at 1 part by mass, and thus the mass ratio of (d)/(f) = 1/1 = 1, which meets the required ratio.
The moles of benzothiazole compound (d) =0.0059 , and the moles of crosslinking initiator =0.0013 and the molar ratio of (d)/(c) = 0.0059/0.0013 = 4.5, which meet the requirements of instant claims 4, 14 and 22.
The claimed relationship {T4-T3)/(X-18)} > 0.3 (of instant claims 2, 13 and 21) would be satisfied by Kim’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 claim 25, as discussed when addressing claim 1, Kim’s disclosure makes the required rubber composition obvious. Kim also teaches zinc oxide which corresponds to (e) metal compound. The total mole M2 from compound of formula (1) = 0.0059. Mole of M1 of zinc oxide, compound (e) = 0.2119 and the valent of zinc =2. The required ratio (M2/M1 x valent) = 0.0059/ (0.2119 x 2)= 0.014, meets the claimed requirement.
Regarding claim 26, as discussed when addressing claim 2, Kim’s disclosure makes the required rubber composition obvious. Kim also teaches zinc oxide which corresponds to (e) metal compound. The total mole M2 from compound of formula (1) = 0.0059. Mole of M1 of zinc oxide, compound (e)= 0.2119 and the valent of zinc =2. The required ratio (M2/M1 x valent) = 0.0059/ (0.2119 x 2)= 0.014, meets the claimed requirement.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 13, 21 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 14 , 15 and 20 of U.S. Patent No. U.S. Patent No. 12,275,807 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented invention also claim the rubber, the crosslinked rubber molded product and the golf ball of the same composition, all of which satisfy the same relationship.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-24 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.
Conclusion
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/HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
/S.M.D./
Examiner
Art Unit 1765