DETAILED ACTION
35 USC § 112
Consistent with the spec, “about” is interpreted as follows (specification, page 33, lines 17-20):
The terms “about” and “approximately” shall generally mean an acceptable degree of error or variation for the quantity measured given the nature or precision of the measurements.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4, 6, 7, and 9-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. All independent claims 1, 14 and 18, claim that the core “comprising…calcium sulfate dihydrate in a concentration of about 1.3 to about 1.7 parts per hundred rubber… wherein the rubber formulation has a water content of about 0.1 to about 0.5 parts per hundred rubber”. According to the all three independent claims and the specification, the water producing agent is “calcium sulfate dihydrate” (page 11, lines 25-26). As specifically stated in the specification, “calcium sulfate dihydrate has a moisture content of approximately 21 percent mass” (see specification, page 11, lines 25-26). Page 12, lines 1-10 of the specification goes on to dictate how the “water content” may be calculated based on the “water producing agent”. Thus, in all of claims 1, 14, and 18, applicant is specifically claiming that the water producing agent is “calcium sulfate dihydrate” and that the calcium sulfate dihydrate is present in the amount of “about 1.3 to about 1.7 parts”. If this is the case as specifically claimed, then the respective lower and upper limits of the water concentration, as specifically stated on page 12, lines 1-10, is 1.3 x 21% and 1.7 x 21%. This yields a water content with values of 0.27 and 0.36 parts per hundred (see Remarks, received 3/16/26, page 8, applicant actually calculating this range for themselves as an argument). In all claims 1, 14, and 18, applicant claims a lower limit of 0.1 and an upper limit of 0.5 parts. The upper limit is not really a problem. The claim language uses “comprising” (open ended) so another water producing agent may be used or water itself may be used. However, the same cannot be said for the lower limit. If applicant truly is using “calcium sulfate dihydrate” in the minimum amount of 1.3 parts, then the rubber mixture must inherently at least have a minimum water content of 0.27 (i.e. 1.3 x 21%) and the lower limit cannot be 0.1 as is currently claimed (emphasis added). Restated, the Examiner is completely unclear how the rubber mixture can have a water content less than amount based off the specific water producing agent, the specific amount of that water producing agent, and the inherent water content.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 4, 7, 9-20, are rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (herein “Yamanaka”; US Pub. No. 2020/0002514 A1) as evidenced by Bulpett et al., (“Bulpett”; US Pub. No. 2016/0326341 A1) as evidenced by Nakajima et al. (herein “Nakajima”; US Pub. No. 2015/0065268 A1) and in further view of Molitor (US Pat. No. 4,726,590).
Regarding claim 1, Yamanaka discloses a golf ball (abstract), comprising: a core formed from a rubber formulation comprising a base rubber (par. [0021]), an organic peroxide (par. [0029]), and calcium sulfate dihydrate in a concentration of about 1.3 to 4.09 parts per hundred rubber (Table 2, Example 2); wherein the rubber formulation had a water content of about 0.1 to about 0.856 parts per hundred rubber (Table 2, Examples 2 ; listing an amount of calcium sulfate dihydrate of 4.09, and Table 1, listing a water content of 20.93% for calcium sulfate dihydrate, so 4.09 x 0.2093 = 0.856), the core further comprises a core compression and wherein the core compression is in the range of about 70 DCM to about 90 DCM ( [0079]-[0078]; specifically listing 3.0 mm on a 10/130 kfg scale, or 80 on a Atti compression scale, see NPL Compression by Any Other Name for conversion, and see Bulpett: par. [0066] essentially evidencing that DCM and Atti are the same values within the normal Atti range of -75 to 200), and a cover of one or more layers disposed about the core (par. [0096]). It is noted that Yamanaka does not specifically disclose that the upper limit of the water producing agent is at most 1.7 and the that the upper limit the water content is at most 0.5 parts. However, Yamanaka does generally disclose that the water producing agent can range from as high as 11.43 to as low as 1.75 (see Table 2, Example 1 vs. Example 5; noting these are different water producing agents with different water contents), that the specific amount of calcium sulfate dihydrate can vary based on the other core ingredients (Table 2, Example 2 vs. 3), and that the water producing agent increases “workability, kneadability” of the rubber to provide a golf ball with “low spin and durability” (pars. [0038]-[0040]). The Examiner also notes that the water content is a direct result of the content of the water producing agent and the specific type of water producing agent used (see Yamanaka: Table 1, par. [0053] and Table 2). In addition, regarding the amount of the water producing agent and thus the exact water content, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (see applicant’s spec, page 11, lines 7-16; noting applicant does not provide any criticality for the now lesser claimed range of 1.3 to 1.7 within the broader disclosed range of 0.1 to 10 parts for the amount of water producing agent, and see page 12, lines 11-18, applicant giving no criticality for the now lesser claimed range of 0.1 to 0.5 parts of water content to the disclosed 0.01 to 10 parts). Furthermore, to support the Examiner’s assertion that amount of the water producing agent (and thus its inherent water content) is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Nakajima which specifically states that amount of a water producing agent (and thus its inherent water content) is a result-effective variable used to optimize the feel and spin lowering effect of the golf ball (par. [0040]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the amount of the water producing agent (and thus inherently the water content) would be a result effective variable used to optimize the core feel and spin lowering effect. It is noted that Yamanaka does not specifically disclose a synergistic combination of polymethylene polyphenylisocyanate containing MDI in a concentration of about 0.8 to about 1.2 parts pars per hundred rubber. However, Yamanaka discloses using a rubber base for the core (par. [0021]). In addition, Molitor discloses using a synergistic combination of ingredients (col. 3, lines 29-42; for a synergistic effect, see col. 6, lines 31-36; noting both an increase in core hardness/compression and COR consistent with applicant’s page 10, lines 23-26) including a rubber base (col. 3, lines 31-34) and a compression agent (col. 6, lines 31-36; specifically stating that it “hardens the core and decreases compression values”), wherein the compression agent comprises polymethylene polyphenylisocyanate containing MDI (col. 4, lines 34-66 and Table 2, Example 1; specifically listing “Papi 94”; see NPL Dow, specifically stating that “Papi 94” is a “polymethylene polyphenylisocyanate containing MDI”) and wherein the compression agent is present in a compression agent concentration of about 0.8 to about 1.2 parts (col. 5, lines 1-4; noting 0.1 to 10 makes obvious the claimed range, and see Table 2, Example 1; noting 1 pph for Papi 94). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Yamanaka to use a compression agent in the form of polymethylene polyphenylisocyanate containing MDI in the amount of 0.8 to 1.2 parts as taught by Molitor because doing so would be applying a known technique (using diisocyanate in a rubber base, the diisocyanate in the form of Papi 94 used in a known amount) to a known product (a core made from a rubber base which adds in a water producing agent) ready for improvement to yield predictable results (using a diisocyanate in the form of Papi 94 in a rubber base used in a known amount with a water producing agent, the diisocyanate having the “general effect of hardening the core (decreasing compression value), and increasing coefficient [of restitution] – see Molitor: col. 6, lines 31-36).
Regarding claims 3 and 17, the combined Yamanaka and Molitor disclose that the rubber formulation includes a co-agent in an amount of about 23 to 27 parts per hundred rubber (Yamanaka: pars. [0062]-[0064]; noting 5 to 45 parts makes obvious the claimed range for a “co-crosslinking agent” being the claimed “co-agent”).
Regarding claims 4, 16, and 20, the combined Yamanaka and Molitor disclose that the rubber formulation includes a co-agent in an amount of about 20 to 35 parts per hundred rubber (Yamanaka: pars. [0062]-[0064]; noting 5 to 45 parts makes obvious the claimed range for a “co-crosslinking agent” being the claimed “co-agent”).
Regarding claim 7, the combined Yamanaka and Molitor disclose that the core further comprises a geometric center having a hardness, a geometric surface having a hardness, and a hardness gradient equal to the difference in the geometric center hardness and the surface hardness, and wherein the hardness gradient is in the range of about 10 Shore C to about 42 Shore C (Yamanaka: par. [0083]; noting “20 or more” makes obvious the claimed range; also noting that JIS-C and Shore C are equivalents; see Moriyama, US Pat. No. 5,697,856, col. 3, lines 37-39 as evidence)
Regarding claim 9, the combined Yamanaka and Molitor disclose that the core further comprises a Coefficient of Restitution, and wherein the Coefficient of Restitution is in the range of about 0.750 to about 0.830 (Molitor: col. 2, lines 17-19; noting “0.0803 + 0.005” anticipates the claimed range).
Regarding claim 10, the combined Yamanaka and Molitor disclose that the rubber formulation further comprises a co-agent (Yamanaka: par. [0062]), a filler (Yamanaka: par. [0065]), a radical scavenger (Yamanaka: par. [0058]), an initiator (Yamanaka: par. [0029]), an organosulfur (Yamanaka: par. [0058]), or a combination thereof (noting this is an “or” limitation and thus is not needed).
Regarding claim 11, the combined Yamanaka and Molitor disclose that the organosulfur is present in an amount of about 0.1 to 5 parts per hundred rubber (Yamanaka: par. [0060]; noting 0.1 to 0.5 ppr anticipate the claimed range).
Regarding claim 12, the combined Yamanaka and Molitor disclose that the base rubber comprises polybutadiene rubber, polyisoprene, ethylene propylene rubber, ethylene-propylene-diene rubber, styrene- butadiene rubber, or a blend thereof (Yamanaka: par. [0022] listing polybutadiene rubber; the Examiner specifically interpreting this to be one option or another option based on “or” at the end of the claim).
Regarding claim 13, the combined Yamanaka and Molitor disclose that the cover layer comprises a material selected from the group consisting of polyurethanes, polyureas, and hybrids, copolymers, and blends thereof (Yamanaka: par. [0095]; listing “urethane”, aka polyurethane; again the Examiner construing this as a Markush claim require only one option).
Regarding claim 14, Yamanaka discloses a golf ball (abstract), comprising: a core formed from a rubber formulation comprising a base rubber (par. [0021]), and calcium sulfate dihydrate in a concentration WPAc of about 1.3 to about 4.09 parts per hundred rubber (Table 2, Example 2; noting calcium sulfate dihydrate in the amount of 4.09), wherein the rubber formulation had a water content of about 0.1 to about 0.856 parts per hundred rubber (Table 2, Examples 2 ; listing an amount of calcium sulfate dihydrate of 4.09, and Table 1, listing a water content of 20.93% for calcium sulfate dihydrate, so 4.09 x 0.2093 = 0.856), and the core has a core compression C as measured by DCM, and wherein the core compression is in the range of about 70 DCM to about 90 DCM ( [0079]-[0078]; specifically listing 3.0 mm on a 10/130 kfg scale, or 80 on a Atti compression scale, see NPL Compression by Any Other Name for conversion, and see Bulpett: par. [0066] essentially evidencing that DCM and Atti are the same values within the normal Atti range of -75 to 200), and a cover of at least one layer disposed about the core (par. [0096]). It is noted that Yamanaka does not specifically disclose that the upper limit of the water producing agent is at most 1.7 and the that the upper limit the water content is at most 0.5 parts. However, Yamanaka does generally disclose that the water producing agent can range from as high as 11.43 to as low as 1.75 (see Table 2, Example 1 vs. Example 5; noting these are different water producing agents with different contents), that the specific amount of calcium sulfate dihydrate can vary based on the other core ingredients (Table 2, Example 2 vs. 3), and that the water producing agent increases “workability, kneadability” of the rubber to provide a golf ball with “low spin and durability” (pars. [0038]-[0040]). The Examiner also notes that the water content is a direct result of the content of the water producing agent amount (see Yamanaka: Table 1, par. [0053] and Table 2). In addition, regarding the amount of the water producing agent and thus the exact water content, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (see applicant’s spec, page 11, lines 7-16; noting applicant does not provide any criticality for the now lesser claimed range of 1.3 to 1.7 within the broader disclosed range of 0.1 to 10 parts for the amount of water producing agent, and see page 12, lines 11-18, applicant giving no criticality for the now lesser claimed range of 0.1 to 0.5 parts of water content to the disclosed 0.01 to 10 parts). Furthermore, to support the Examiner’s assertion that amount of the water producing agent (and thus its inherent water content) is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Nakajima which specifically states that amount of a water producing agent (and thus its inherent water content) is a result-effective variable used to optimize the feel and spin lowering effect of the golf ball (par. [0040]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the amount of the water producing agent (and thus inherently the water content) would be a result effective variable used to optimize the core feel and spin lowering effect. It is also noted that Yamanaka does not specifically disclose polymethylene polyphyenlisocyanate containing MDI in a concentration CAc of about 0.8 to about 1.2 parts per hundred rubber, wherein (CAc + WPAc)/C > 0.005. However, Yamanaka discloses using a rubber base for the core (par. [0021]). In addition, Molitor discloses using a rubber base (col. 3, lines 31-34) and a compression agent having a compression agent concentration CAc in the about of 0.8 to about 1.2 parts per hundred rubber (col. 6, lines 31-36; specifically stating that it “hardens the core and decreases compression values” and col. 4, line 67 to col. 5, line 3; noting 0.1 to 10 parts makes obvious the claimed range; see also Table 2, Example 1; noting 1 pph for Papi 94), wherein the compression agent comprises polymethylene polyphenylisocyanate containing MDI (col. 4, lines 34-66 and Table 2, Example 1; specifically listing “Papi 94”; and see NPL Dow, specifically stating that “Papi 94” is a “polymethylene polyphenylisocyanate containing MDI”) and wherein (CAc + WPAc)/C > 0.005)(as noted above, CAc can be 1, WPAc can be 4.09, and C can be 80, so (1+4.09)/80 = 0.064 which is greater than 0.005, or WPAc can be 1.75, so (1+1.75)/80 = 0.0343). Finally, in an alternative, the Examiner notes that all of the variables used in the equation are considered result effective variables:
CAc – dictates the hardness of the core, compression, and COR and is based on “the isocyanate employed and the identity of other components” – Molitor: col. 6, lines 31-36 and col. 5, lines 1-4
WPAc – dictates the amount of water that is disassociated – Yamanaka: par. [0053]
C – dictates the amount of spin and resilience of the golf ball – Yamanaka: pars. [0078]-[0080]
Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Yamanaka to use a compression agent having a compression agent concentration CAc, the compression again comprises polymethylene polyphyenlisocyanate containing MDI and wherein (CAc + WPAc)/C > 0.005 as taught by Molitor because doing so would be applying a known technique (using diisocyanate in a rubber base in the amount of 1 pph) to a known product (a core made from a rubber base which adds in a water producing agent, and has a core compression of 80 Atti or DCM) ready for improvement to yield predictable results (using a diisocyanate in the form of Papi 94 in the amount of 1 pph in a rubber base with a water producing agent and with a core compression of 80 Atti or DCM, the diisocyanate having the “general effect of hardening the core (decreasing compression value), and increasing coefficient [or restitution] – see Molitor: col. 6, lines 31-36). In addition, as all of the values used in the equation are considered to be a result effective variable within the art, the combined ratio of those variables is also considered to be a result effective variable that can be optimized through routine experimentation.
Regarding claim 15, the above analysis applies. Restated, as all the variables used in the equation are considered result effective variables, the entire equation is considered a result effective variable and may be optimized through routine experimentation by optimizing each variable. Furthermore, using the specific values as listed in claim 15, the result is (1+4.09)/80 = 0.064 which is greater than 0.01 and less than 0.2.
Regarding claim 18, Yamanaka discloses a golf ball (abstract), comprising: a core formed from a rubber formulation comprising a base rubber (par. [0021]), and a calcium sulfate dihydrate in a concentration WPAc of about 1.4 to about 4.09 parts per hundred rubber (Table 2, Example 2; noting calcium sulfate dihydrate in the amount of 4.09), wherein the rubber formulation had a water content of about 0.1 to about 0.856 parts per hundred rubber (Table 2, Examples 2 ; listing an amount of calcium sulfate dihydrate of 4.09, and Table 1, listing a water content of 20.93% for calcium sulfate dihydrate, so 4.09 x 0.2093 = 0.856), and the core has a core compression C as measured by DCM, and wherein the core compression is in the range of about 70 DCM to about 90 DCM ( [0079]-[0078]; specifically listing 3.0 mm on a 10/130 kfg scale, or 80 on a Atti compression scale, see NPL Compression by Any Other Name for conversion, and see Bulpett: par. [0066] essentially evidencing that DCM and Atti are the same values within the normal Atti range of -75 to 200), and a cover disposed about the core (par. [0096]). It is noted that Yamanaka does not specifically disclose that the upper limit of the water producing agent is at most 1.7 and the that the upper limit the water content is at most 0.5 parts. However, Yamanaka does generally disclose that the water producing agent can range from as high as 11.43 to as low as 1.75 (see Table 2, Example 1 vs. Example 5; noting these are different water producing agents with different contents), that the specific amount of calcium sulfate dihydrate can vary based on the other core ingredients (Table 2, Example 2 vs. 3), and that the water producing agent increases “workability, kneadability” of the rubber to provide a golf ball with “low spin and durability” (pars. [0038]-[0040]). The Examiner also notes that the water content is a direct result of the content of the water producing agent amount (see Yamanaka: Table 1, par. [0053] and Table 2). In addition, regarding the amount of the water producing agent and thus the exact water content, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (see applicant’s spec, page 11, lines 7-16; noting applicant does not provide any criticality for the now lesser claimed range of 1.3 to 1.7 within the broader disclosed range of 0.1 to 10 parts for the amount of water producing agent, and see page 12, lines 11-18, applicant giving no criticality for the now lesser claimed range of 0.1 to 0.5 parts of water content to the disclosed 0.01 to 10 parts). Furthermore, to support the Examiner’s assertion that amount of the water producing agent (and thus its inherent water content) is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Nakajima which specifically states that amount of a water producing agent (and thus its inherent water content) is a result-effective variable used to optimize the feel and spin lowering effect of the golf ball (par. [0040]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the amount of the water producing agent (and thus inherently the water content) would be a result effective variable used to optimize the core feel and spin lowering effect. It is also noted that Yamanaka does not specifically disclose polymethylene polyphyenlisocyanate containing MDI in a concentration CAc of about 0.8 to about 1.2 parts per hundred rubber, wherein ((WPAc * CAc)/(1-1/C))^(1/2) > 0.5. However, Yamanaka discloses using a rubber base for the core (par. [0021]). In addition, Nesbitt discloses using a rubber base (col. 3, lines 31-34) and a compression agent having a compression agent concentration CAc of about 0.8 to 1.2 parts per hundred rubber (col. 6, lines 31-36; specifically stating that it “hardens the core and decreases compression values” and col. 4, line 67 to col. 5, line 3; noting 0.1 to 10 parts making obvious the claimed range; see also Table 2, Example 1; noting 1 pph for Papi 94), wherein the compression agent comprises polymethylene polyphyenlisocyanate containing MDI (col. 4, lines 34-66 and Table 2, Example 1; specifically listing “Papi 94” in the amount of 1 pph; and see NPL Dow, specifically stating that “Papi 94” is a “polymethylene polyphenylisocyanate containing MDI”) and ((WPAc * CAc)/(1-1/C))^(1/2) > 0.5 (as noted above, CAc can be 1, WPAc can be 4.09, and C can be 80, ((4.09*1)^(1/2)/(1-1/80)) = 2.05 which is greater than 0.5, or WPAc can be 1.75, so ((1.75*1)^(1/2)/(1-1/80)) = 1.34). Finally, in the alternative, the Examiner notes that all of the variables used in the claimed equation are considered result effective variables:
CAc – dictates the hardness of the core, compression, and COR and is based on “the isocyanate employed and the identity of other components” – Molitor: col. 6, lines 31-36 and col. 5, lines 1-4
WPAc – dictates the amount of water that is disassociated – Yamanaka: par. [0053]
C – dictates the amount of spin and resilience of the golf ball – Yamanaka: pars. [0078]-[0080]
Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Yamanaka to use a compression agent having a compression agent concentration CAc, the compression again comprises polymethylene polyphyenlisocyanate containing MDI and wherein (((WPAc * CAc)/(1-1/C))^(1/2) > 0.5 as taught by Molitor because doing so would be applying a known technique (using diisocyanate in a rubber base in the amount of 1 pph) to a known product (a core made from a rubber base which adds in a water producing agent, and has a core compression of 80 Atti or DCM) ready for improvement to yield predictable results (using a diisocyanate in the form of Papi 94 in the amount of 1 pph in a rubber base with a water producing agent and with a core compression of 80 Atti or DCM, the diisocyanate having the “general effect of hardening the core (decreasing compression value), and increasing coefficient [or restitution] – see Molitor: col. 6, lines 31-36). In addition, as all of the values used in the equation are considered to be a result effective variable within the art, the combined ratio of those variables is also considered to be a result effective variable that can be optimized through routine experimentation.
Regarding claim 19, the above analysis applies. Restated, as all the variables used in the equation are considered result effective variables, the entire equation is considered a result effective variable and may be optimized through routine experimentation. Furthermore, using the specific values as listed in claim 18, the result is ((4.09*1)^(1/2)/(1-1/80)) = 2.05 or ((1.75*1)^(1/2)/(1-1/80)) = 1.34 which is greater than 0.7 and less than 3.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yamanaka et al. (herein “Yamanaka”; US Pub. No. 2020/0002514 A1) as evidenced by Bulpett et al., (herein “Bulpett”; US Pub. No. 2016/0326341 A1) in as evidenced by/view of Nakajima et al. (herein “Nakajima”; US Pub. No. 2015/0065268 A1) in view of Molitor (US Pat. No. 4,726,590).
Regarding claim 6, the combined Yamanaka and Molitor disclose that core has a geometric surface having a hardness (Yamanaka: par. [0083]; noting some hardness would be inherent). It is noted that the combined Yamanaka and Molitor do not disclose that the hardness is in the range of about 75 Shore C to about 95 Shore C. However, Nakajima discloses a core wherein the outer surface of the core has a surface hardness of 75 to 95 shore C (par. [0055]; noting 65 to 95 JIS-C making obvious the claimed range; noting Shore C and JIS-C are the same measurement; see Moriyama et al., US Pat. No. 5,697,856, col. 3, lines 37-40 as evidence). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Yamanaka and Molitor to make the core surface have a hardness of 75 to 95 Shore C as taught by Nakajima because doing so would be a simple substitution of one element (a core surface hardness of 75 to 95 Shore C) for another (a core surface hardness having some inherent hardness) to obtain predictable results (making the core surface hardness from 75 to 95 Shore C, the hardness known to work in golf balls).
Response to Arguments
Applicant's arguments filed 3/16/26 have been fully considered but they are not generally persuasive.
The Examiner utilizes applicant’s headings for the response.
The Yamanaka / Nakajima / Molitor Combination Does Not Disclose or Suggest the Claimed Concentration of Calcium Sulfate Dihydrate
Of note, the Examiner agrees with applicant that the value of 1.75 is Yamanaka: Table 2, Example 5 is directed at the water producing agent of “magnesium sulfate” and not the claimed “calcium sulfate dihydrate”. However, what the Examiner attempts to shown by citing to a range of 11.43 to 1.75 is that Yamanaka: Table 2 clearly discloses the ability to vary the amount of the water producing agent based on the agent itself. In addition, Examples 2 and 3 clearly show that Yamanaka discloses the ability to vary the amount of specifically “calcium sulfate dihydrate” within the core formulation itself.
The Examiner understands applicant’s position that different water producing agents will produce different amounts of water, so that their concentrations may vary (see Remarks, received 3/16/26, page 6 to 7). However, the Examiner’s position is that Yamanaka clearly discloses using vary amounts based on the type of water producing agent (essentially applicant’s argument), but also discloses varying the amount for a single type of water producing agent (Examples 2 and 3).
Along these lines, applicant argues that “calcium sulfate dihydrate” is not a result effective variable (page 7 of Remarks). Respectfully submitted, this argument is in complete contradiction to applicant’s previous argument above. Restated, applicant goes on record in the Remarks that different water producing agents yield differing amounts of water content. Applicant essentially argues on the record that using an amount 1.75 for “calcium sulfate dihydrate” would not be proper because they two compounds have “differences in water releasing properties” (see Remarks, page 6, lines 6). As such, if each specific type of water producing agent has different “water releasing properties”, it would logically follow that the exact amount of a specific agent used in a core formulation would dictate the amount of water releasing content. This is clearly shown in Yamanaka: Table 2 wherein the different types of water releasing compounds are used in different amounts.
Restated, applicant cannot argue on the one hand that “calcium sulfate dihydrate” is distinct from “magnesium sulfate” based on their water producing content, and then turn around and argue it would not be obvious to vary the specific amounts of those specific compounds based on the amount of their water producing content (emphasis added). In summary, it would have been obvious to a POSA that the amount of the specific type of water producing agent could be found through routine optimization based on its exact water content release (see Yamanaka and applicant’s own Remarks).
Furthermore, applicant argues a “synergistic effect” created by the combination of the “calcium sulfate dihydrate” and the “polymethylene polyphenylisocyanate containing MDI”. In the previous interview, the Examiner pointed applicant in the direction of (i.e. to pursue) “unexpected results” based on the current narrower and amended claimed ranges. The Examiner’s position is completely consistent with the MPEP 2144.05(III)(A) (labeled “Rebuttal of a prima face case of obviousness – A. Showing That the Range is Critical”). Along the lines of “criticality” for the currently claimed ranges, the Examiner provides the following discussion.
To be crystal clear, the specification discloses that the amount of the compression agent (i.e. polymethylene polyphenylisocyanate containing MDI) can be in the amount of 0.1 to 10 parts (specification, page 10, lines 9-11). The specification goes on to state that the water producing agent (i.e. calcium sulfate dihydrate) can be present in the amount of 0.1 to 10 parts (see specification, page 11, lines 8-10). Finally, the specification goes on to state that the water content can be present in the amount of 0.01 to 10 (specification page 12, lines 11-13). As such, a POSA would understand that using any value within these disclosed ranges would yield the same advantage (i.e. the advantage would be present over the entire disclosed range). The prior art of record makes obvious these broader disclosed ranges. In summary, the Examiner does not see any criticality to the now lesser claimed ranges within the disclosed ranges.
Furthermore, even assuming arguendo that a POSA, reading Yamanaka, would not understand that the amount of water producing agent can be varied based on the specific compound selected (see Table 2, Examples 1-5) and can be varied within a single compound selection (see Table 2, Example 2 vs. 3), Nakajima also evidences the ability to vary the water producing agent based on core feel and spin lowering effect.
Along those lines, applicant argues that because Nakajima does not specifically show varying “calcium sulfate dihydrate”, the “findings in Nakajima cannot be extrapolated to establish the concentration of a chemically distinct compound”. Respectfully submitted, the argument is not compelling. Nakajima is brought in to “evidence” that the amount of the water producing agent is known to be a result effective variable regardless of the exact compound used. It does not matter that Nakajima does not disclose the exact same water producing agent as claimed. Applicant goes on to argue that even if Yamanaka (i.e. the primary reference) discloses a reason to optimize, the exact reason to optimize is not the same as the claimed invention (see Remarks, page 7; applicant actually stating “Routine optimization of a variable for one purpose does not render obvious the optimization of that same variable for a different purpose in a different, previously undisclosed combination”, but the Examiner does not see this position in MPEP 2144.05(II)). Respectfully submitted, the exact reason or purpose to optimize a variable does not need to be for the exact same reason or purpose as stated by applicant. All that is required is that a POSA would understand that the variable can be optimized for some reason and thus is known to be a result effective variable.
The Yamanaka / Nakajima / Molitor Combination Does Not Disclose or Suggest the Claimed Water Content
Regarding the water content, the Examiner would like to go on record that at least a part of the water content is an inherent product of the type and amount of the water producing agent used. As such, when applicant claims the exact amount of a specific type of water producing agent, they are inherently dictating at least the lower amount of the water content (see 112(b) above). Thus, the water content is a direct result of the type of water producing agent and its amount. In the above rejection, the Examiner notes that it would have been obvious to optimize the amount of the water producing agent. As such, if it is obvious to optimize the amount of water producing agent, then it would be obvious to optimize the water content as the water content is an inherent property of the water produce agent type and amount.
The Examiner's Rationale for Combining Yamanaka and Molitor Is Legally and Factually Insufficient
Applicant states “A person of ordinary skill in the art incorporating Yamanaka's calcium sulfate dihydrate into Molitor's compressed core formulation would have expected the compression to decrease from that of Molitor's formulation” (see Remarks, page 9; emphasis added). Respectfully submitted, this is the incorrect standard for obviousness. Yamanaka is the primary reference that is being modified by Molitor. Not the other way around. As such, this argument is not compelling. Restated, the polymethylene polyphenylisocyanate containing MDI in Molitor is being used in the Yamanaka golf ball. The Examiner has provided sufficient rationale in the previous office action. Below is a summary from the previous office action.
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Applicant once again argues that the Examiner’s rationale to combine is “insufficient”. This argument is made even though the Examiner specifically states in the rationale to combine that the “improvement” created by Molitor is the “general effect of hardening the core (decreasing compression value), and increasing coefficient [of restitution] – see Molitor: col. 6, lines 31-36). Applicant appears to take the position that the Examiner must show that the primary reference “Yamanaka is ready for improvement” (see page 12 of Remarks). This is not the standard for obviousness. As per MPEP 2143(I)(D), the standard is “finding that the prior art contained a known technique that is applicable to a base product”. Here the base product is in Yamanaka. The improvement is found in Molitor as specifically cited to in the motivation to combine. The Examiner does not need to create a showing that “Yamanaka is ready for improvement” as argued by applicant. Restated, the Examiner only need show that Yamanaka provides a “base product”.
No other arguments are advanced.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
4/6/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
