DETAILED ACTION
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 8-10, 12-14, 22, 22, 25, 27, 28, and 31-34 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 three independent claims 8, 21, and 25 now claim “such that the first circular marking and the second circular marking are perceived as linear when view from above”. First, the language of the claim automatically assumes that the ball is placed in the correct orientation so that the functional language occurs (i.e. that the rings appear linear). Restated, claims 8, 21, and 25 automatically assumes, without specifically claiming, that the orientation of the ball is that of Fig. 2B below, and not Fig. 2F (Fig. 2F clearly showing a circle not appearing “linear”; as apparently applicant is arguing “linear” to synonymous with “straight”; see “Response to Arguments” below, noting the Examiner is actual unclear what applicant considers to be “linear” as no specific interpretation is advanced or elaborated on in the arguments). Second, even assuming arguendo that the ball is position according to Fig. 2B, the language also assumes, without specifically claiming, that the user is positioned directly over the balls center in Fig. 2B such that the rings again appear linear. Restated, the annotated figures below show how a user could be positioned “over” the golf ball and not have the circles appear as “linear” as is required by claim 1 (i.e. “linear” as apparently argued by applicant to be “straight”).
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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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 8-10, 12-14, 21, 22, 25 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz (US Pub. No. 2005/0132909 A1) in view of Pelz (US Pub. No. 2006/02993113 A1) and in further view of Katsuhiro et al. (herein “Katsuhiro”; US Pat. No. 5,282,306).
Regarding claim 8, Lutz discloses a method for printing a first marking and a second marking on a golf ball (title), the method comprising: arranging ink in an etching pattern on a printing plate (par. [0031]), wherein the etching pattern includes a representation of the first marking and the second marking (pars. [0031] and [0027]; noting it is obvious that the same “indicia” or mark may be printed multiple times on the ball); matching a reference position on the printing plate to a first reference position on the golf ball (pars. [0027], [0031]-[0032]; noting this is obvious by “orientation of the ball followed by printing”; emphasis added); transferring a first ink press from the printing plate to a pad (par. [0031]); transferring the first ink press from the pad to the golf ball such that the golf ball includes the first marking (pars. [0031]-[0032]); rotating the golf ball, to a second reference position on the golf ball (par. [0027]; noting “a second orientation of the ball followed by printing of second indicia”); matching the reference position on the printing plate to the second reference position on the golf ball (pars. [0027], [0031]-[0032]; noting this is obvious as the indicia is supposed to be provided a certain location on the ball); transferring a second ink press from the printing plate to the pad (pars. [0031]-[0032]); and transferring the second ink press from the pad to the golf ball such that the golf ball includes the second marking (pars. [0031]-[0032]). It is noted that Lutz does not specifically disclose that the first and second markings are circular, such that the first circular marking and the second circular marking are perceived as linear when viewed from above, wherein the first circular marking is a complete circle having a constant diameter around the first reference position of the golf ball, rotating the ball 180 degrees, wherein the second reference position is on an opposite pole of the golf ball from the first reference position, and wherein the second circular marking is a complete circle having a constant diameter around the second reference position of the golf ball, wherein the first circular marking and the second circular marking have a diameter. However, Pelz discloses a golf ball with “printed” markings (par. [0018]) wherein the first and second markings are circular (Figs. 3 and 4, item 14), such that the first circular marking and the second circular marking are perceived as linear when viewed from above (Fig. 4; noting “linear” simply means “of, consisting of, or using lines” as defined by dictionary.com and https://byjus.com/maths/curved-line/ clearly establishing that a “line” may be curved), wherein the first circular marking is a complete circle having a constant diameter around the first reference position of the golf ball (Fig. 1 and pars. [0016], [0018]; noting the ring is about the reference position of a pole), rotating the ball 180 degrees (Fig. 4, items 14; noting rotation of 180 degrees would be obvious, or at a minimum “suggested”, in order to apply the ring at opposite poles; see par. [0018]), wherein the second reference position is on an opposite pole of the golf ball from the first reference position (Fig. 3, items 14 and par. [0018]; noting “printed on each polar region”), and wherein the second circular marking is a complete circle having a constant diameter around the second reference position of the golf ball (Fig. 1 and pars. [0016], [0018]; noting the ring is about the reference position of the other pole); wherein the first circular marking and the second circular marking have a diameter (Fig. 3, items 14; noting some diameter is inherent). In the alternative, assuming arguendo that applicant is trying to claim “perceived as straight linear when viewed from above”, Pelz discloses other lines that are “perceived as straight linear when viewed from above” (Fig. 3, items 12 and 10; see Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009), the Court stating that combining side-by-side embodiments does not take a leap of inventiveness). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Lutz to use a circular mark, such that the first circular marking at second circular marking are perceived as linear when viewed from above, wherein the first circular marking is a complete circle having a constant diameter around the first reference position of the golf ball, rotating the ball 180 degrees, wherein the second reference position is on an opposite pole of the golf ball from the first reference position, and wherein the second circular marking is a complete circle having a constant diameter around the second reference position of the golf ball, the first circular and second circular marking having a diameter as taught and suggested by Pelz because doing so would be use of a known technique (using polar rings on opposite sides of the golf ball with some inherent diameter) to improve a similar method (a method of marking golf balls that utilizes a specific orientation of the ball prior to a first stamp, and creating a second specific orientation prior to a second stamp) in the same way (using polar rings stamped with some inherent diameter on opposite sides of the golf ball, the ball aligned to the pole prior to the first stamped ring, and then rotated 180 to the second pole prior to stamping the same polar ring on the opposite pole). In the alternative, it would have been obvious to a person of ordinary skill in the art to make the circles appear as straight linear when view from above because doing so would not take a leap of inventiveness. It is also noted that the combined Lutz and Pelz do not specifically disclose that the diameter is at least 30 mm. However, regarding the specifics of the printed matter (i.e. the specific diameter used), it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0039], giving no criticality to the exact diameter). Restated, there is not functional relationship between the exact size of the printed matter and the substrate because there is no criticality for the exact size. Assuming arguendo that there is a functional relationship, the Examiner refers applicant to Pelz: Fig. 3, items 12 and 10 and Harrison, US Pub. No. 2007/0004524 A1, Fig. 2, evidencing rings that are present at address and in locations consistent with applicant’s drawings (i.e. making obvious the size limitation). Finally, it is noted that the combined Lutz and Pelz do not specifically disclose that the marks are compensating for a curvature of the golf ball as determined by a least one processor. However, Katsuhiro discloses that marks are compensating for a curvature of the product as determined by a least one processor (col. 11, lines 19-47). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Lutz and Pelz to make the marks compensating for a curvature of the golf ball as determined by a least one processor as taught and suggested by Katsuhiro because doing so would be use of a known technique (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object onto which a marking is placed) to improve a similar product (a golf ball with curves having markings placed on it) in the same way (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object in the form of a golf ball onto which a marking is placed).
Regarding claim 9, the combined Lutz, Pelz, and Katsuhiro disclose that the diameter of the first circular marking is equal to the diameter of the second circular marking (Pelz: Fig. 1, item 14 and Fig 3; noting this would be obvious). In the alternative, assuming arguendo that this is not obvious, it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983). Here, having the diameters be equal does not provide functional relationship to the substrate of the ball. And assuming arguendo that it does, it is obvious from both Pelz: Fig. 3 and Harrison: Fig. 2.
Regarding claim 10, the combined Lutz, Pelz, and Katsuhiro that the etching pattern is based on the diameter of the first circular marking and the second circular marking (Pelz: Figs. 1 and 3, item 14 and Lutz: par. [0031]; noting this would be obvious and common sense).
Regarding claims 12 and 27, it is noted that the combined Lutz, Pelz, and Katsuhiro do not specifically disclose that the first circular marking and the second circular marking have a line weight between 0.1 mm and 3 mm. However, regarding the specifics of the printed matter, it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0039], giving no criticality to the exact line thickness). Here, the exact thickness of the circles does not provide a functional relationship to the substrate of the ball; especially because there is no criticality to the exact line weight dimension.
Regarding claim 13, it is noted the combined Lutz, Pelz, and Katsuhiro do not specifically disclose that rotating the golf ball 90 degrees, to a centerline plane of the golf ball, wherein the centerline plane is between the first circular marking and the second circular marking; arranging ink in a centerline marking etching pattern on a centerline marking printing plate, wherein the centerline marking etching pattern corresponds to a first centerline marking; matching a centerline on the centerline marking printing plate to the centerline plane on the golf ball; transferring a third ink press from the centerline marking printing plate to a centerline marking pad; and transferring the third ink press from the centerline marking pad to the golf ball such that the golf ball includes the first centerline marking, wherein the first centerline marking is located at the centerline plane of the golf ball. However, the Examiner thinks the prior art makes this limitation obvious. That is, Lutz discloses the ability to rotate the ball after two orientations in order to further stamp the ball with a third indicia (par. [0027]; specifically stating “optionally subsequent orientation and printing of subsequent indicia”), by arranging ink in a marking etching pattern on a marking printing plate (pars. [0031]-[0032]); wherein the marking etching pattern corresponds to a first marking (pars. [0031]-[0032]); matching a marking printing plate to a position on the golf ball (pars. [0027], and [0031]-[0032]), transferring an ink press from the marking printing plate to a marking pad; and transferring the ink press from the marking pad to the golf ball such that the golf ball includes the first marking (pars. [0031]-[0032]). Furthermore, Pelz discloses using a mark located at the equator based on a centerline plane of the golf ball that is positioned 90 degrees off the polar region or stamp, wherein the centerline plane is between the first circular marking and the second circular marking (pars. [0016] and [0018] and Fig. 1, items 10 and 12; noting the center plane is the equator); wherein the first centerline marking is located at the centerline plane of the golf ball (Figs. 1, items 10, 12; noting collectively they are positioned about the center plane or equator of the golf ball, see par. [0018], see also par. [0023]; noting it would be obvious that the area between the two lines could be “solid”). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the combined Lutz and Pelz to use an equator marking line positioned 90 degrees of the polar region because doing so would use of a known technique (moving the ball to another orientation in order to stamp that location of the ball) to improve a similar product (a golf ball that has multiple markings on it, including markings at both pole regions and at the equator) in the same way (rotating the ball 90 degrees in order to stamp lines at the equator, the stamp positioned directly between the two polar rings).
Regarding claim 14, the combined Lutz, Pelz, and Katsuhiro disclose that the first circular marking and the second circular marking each comprise at least one of a dashed line, a design of letters, a design of letters within a solid background, two concentric circles, or a design of symbols (Pelz: par. [0023]; specifically stating that “letters”, i.e. a “design of letters”, can be used as the markings). In the alternative, regarding the specifics of the printed matter, it has been held that no patentable weight is given to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0043], giving no criticality to the exact indicia used for the ring/circle). Restated, Pelz clearly discloses a printed ring that is a solid line (Fig. 4, item 14). Thus, applicant’s use of a printed circular ring on a golf ball is not a “new and unobvious functional relationship” as Pelz already discloses it. As such, any specific limitations regarding the exact nature of the printed matter (i.e. the printed ring) are not entitled to patentable weight under In re Gulack; this includes the exact indicia used to create the circle/ring.
Regarding claim 21, Lutz discloses a method for printing on a golf ball (title), matching a reference position on the printing plate to a first reference position on the golf ball (pars. [0027], [0031]-[0032]; noting this is obvious by “orientation of the ball followed by printing”; emphasis added); transferring a first ink press from the printing plate to a pad (par. [0031]); transferring the first ink press from the pad to the golf ball such that the golf ball includes the first marking (pars. [0031]-[0032]); rotating the golf ball, to a second reference position on the golf ball (par. [0027]; noting “a second orientation of the ball followed by printing of second indicia”); matching a reference position on the printing plate to the second reference position on the golf ball (pars. [0027], [0031]-[0032]; noting this is obvious as the indicia is supposed to be provided a certain location on the ball); transferring a second ink press from the printing plate to the pad (pars. [0031]-[0032]); and transferring the second ink press from the pad to the golf ball such that the golf ball includes the second marking (pars. [0031]-[0032]), wherein the printing plate includes a representation of the first marking and the second marking (pars. [0031] and [0027]; noting it is obvious that the same “indicia” or mark may be printed multiple times on the ball). It is noted that Lutz does not specifically disclose that the first and second markings are circular, such that the first circular marking and the second circular marking are perceived as linear when viewed from above, wherein the first and second circular marking have a diameter, rotating the ball 180 degrees, wherein the second reference position is on an opposite pole of the golf ball from the first reference position. However, Pelz discloses a golf ball with “printed” markings (par. [0018]) wherein the first and second markings are circular (Figs. 3 and 4, item 14), such that the first circular marking and the second circular marking are perceived as linear when viewed from above (Fig. 4; noting “linear” simply means “of, consisting of, or using lines” as defined by dictionary.com and https://byjus.com/maths/curved-line/ clearly establishing that a “line” may be curved), wherein the first and second circular have a diameter (Fig. 1 and pars. [0016], [0018]; noting the ring is about the pole), rotating the ball 180 degrees (Fig. 4, items 14; noting rotation of 180 degrees would be obvious, or at a minimum “suggested”, in order to apply the ring at opposite poles; see par. [0018]), wherein the second reference position is on an opposite pole of the golf ball from the first reference position (Fig. 3, items 14 and par. [0018]; noting “printed on each polar region”). In the alternative, assuming arguendo that applicant is trying to claim “perceived as straight linear when viewed from above”, Pelz discloses other lines that are “perceived as straight linear when viewed from above” (Fig. 3, items 12 and 10; see Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009), the Court stating that combining side-by-side embodiments does not take a leap of inventiveness). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Lutz to use a circular mark, wherein the first and second circular markings have a diameter, rotating the ball 180 degrees, wherein the second reference position is on an opposite pole of the golf ball from the first reference position as taught and suggested by Pelz because doing so would be use of a known technique (using polar rings on opposite sides of the golf ball) to improve a similar method (a method of marking golf balls that utilizes creating a specific orientation of the ball prior to a first stamp, and creating a second specific orientation prior to a second stamp) in the same way (using polar rings stamped on opposite sides of the golf ball, the ball aligned to the pole prior to the first stamped ring, and then rotated 180 to the second pole prior to stamping the same polar ring on the opposite pole). In the alternative, it would have been obvious to a person of ordinary skill in the art to make the circles appear as straight linear when view from above because doing so would not take a leap of inventiveness. It is also noted that the combined Lutz and Pelz do not specifically disclose that the diameter is at least 30 mm. However, regarding the specifics of the printed matter (i.e. the specific diameter used), it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0039], giving no criticality to the exact diameter). Restated, there is not functional relationship between the exact size of the printed matter and the substrate because there is no criticality for the exact size. Assuming arguendo that there is a functional relationship, the Examiner refers applicant to Harrison, US Pub. No. 2007/0004524 A1, Fig. 2, evidencing rings that are present at address and in locations consistent with applicant’s drawings (i.e. making obvious the size limitation). Restated, Pelz clearly discloses a printed ring that has some inherent diameter (Fig. 4, item 14). Finally, it is noted that the combined Lutz and Pelz do not specifically disclose that the marks are compensating for a curvature of the golf ball as determined by a least one processor. However, Katsuhiro discloses that marks are compensating for a curvature of the product as determined by a least one processor (col. 11, lines 19-47). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Lutz and Pelz to make the marks compensating for a curvature of the golf ball as determined by a least one processor as taught and suggested by Katsuhiro because doing so would be use of a known technique (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object onto which a marking is placed) to improve a similar product (a golf ball with curves having markings placed on it) in the same way (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object in the form of a golf ball onto which a marking is placed).
Regarding claim 22, the combined Lutz, Pelz, and Katsuhiro disclose that the first circular marking and the second circular marking comprises a design of letters, a design of letters within a solid background, or a design of symbols (Pelz: par. [0023]; specifically stating that “letters”, i.e. a “design of letters”, can be used as the markings). In the alternative, regarding the specifics of the printed matter, it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0043], giving no criticality to the exact indicia used for the ring/circle). Here, the exact format of the circles does not provide a functional relationship to the substrate of the ball; especially because there is no criticality to the exact format of the ring in the specification.
Regarding claim 25, Lutz discloses a method for printing on a golf ball (title), pad printing a first marking at a first reference position of a golf ball (pars. [0031]-[0032]); rotating the golf ball (par. [0027]); pad printing a second marking at a second reference position on the golf ball (pars. [0031]-[0032]), rotating the golf ball (par. [0027]), and pad printing a first marking (pars. [0027] and [00311]-[0032]), and wherein pad printing the first marking and the second marking includes a representation of the first marking and the second marking (pars. [0031] and [0027]; noting it is obvious that the same “indicia” or mark may be printed multiple times on the ball). It is noted that Lutz does not specifically disclose that the first and second markings are circular and positioned around a reference point, such that the first circular marking and the second circular marking are perceived as linear when view from above, wherein the second reference position is on an opposite pole of the golf ball from the first reference position, printing a first centerline marking, wherein the first centerline marking is located at a centerline plane of the golf ball between the first circular marking and the second circular marking, wherein the first circular marking and the second circular marking have a diameter. However, Pelz discloses a golf ball with “printed” markings (par. [0018]) wherein the first and second markings are circular and positioned around a reference point (Figs. 3 and 4, item 14; noting the reference point is the pole as per pars. [0016] and [0018]), such that the first circular marking and the second circular marking are perceived as linear when viewed from above (Fig. 4; noting “linear” simply means “of, consisting of, or using lines” as defined by dictionary.com and https://byjus.com/maths/curved-line/ clearly establishing that a “line” may be curved), wherein the second reference position is on an opposite pole of the golf ball from the first reference position (Fig. 3, items 14 and par. [0018]; noting “printed on each polar region”), printing a first centerline marking (Fig. 1, lines 10 and 12; collectively), wherein the first centerline marking is located at a centerline plane of the golf ball between the first circular marking and the second circular marking (Fig. 1, and pars. [0016] and [0018]; noting the centerline plane would be the equator), wherein the first circular marking and the second circular marking have a diameter (Fig. 3, items 14; noting some diameter is inherent). In the alternative, assuming arguendo that applicant is trying to claim “perceived as straight linear when viewed from above”, Pelz discloses other lines that are “perceived as straight linear when viewed from above” (Fig. 3, items 12 and 10; see Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982 (Fed. Cir. 2009), the Court stating that combining side-by-side embodiments does not take a leap of inventiveness). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Lutz to use first and second markings that are circular and positioned around a reference point, wherein the second reference position is on an opposite pole of the golf ball from the first reference position, printing a first centerline marking, wherein the first centerline marking is located at a centerline plane of the golf ball between the first circular marking and the second circular marking, wherein the first circular marking and the second circular marking have a diameter as taught and suggested by Pelz because doing so would be use of a known technique (using polar rings on opposite sides of the golf ball with some inherent diameter, and equator markings positioned between the two polar rings) to improve a similar method (a method of marking golf balls that utilizes creating a specific orientation of the ball prior to a first stamp, and creating a second specific orientation prior to a second stamp, and creating a third specific orientation prior to a third stamp) in the same way (using polar rings stamped with some inherent diameter on opposite sides of the golf ball, the ball aligned to the pole prior to the first stamped ring, and then rotated 180 to the second pole prior to stamping the same polar ring on the opposite pole, and then rotating the ball 90 degrees to stamp equator markings). In the alternative, it would have been obvious to a person of ordinary skill in the art to make the circles appear as straight linear when view from above because doing so would not take a leap of inventiveness. It is also noted that the combined Lutz and Pelz do not specifically disclose that the diameter is at least 30 mm. However, regarding the specifics of the printed matter (i.e. the specific diameter used), it has been held that no patentable weight is given to printed matter absent a functional relationship between the printed matter and the substrate. See In re Gulack, 703 F.2d 1381, 217 USPQ 401 (Fed. Cir. 1983)(see applicant’s spec, par. [0039], giving no criticality to the exact diameter). Restated, there is not functional relationship between the exact size of the printed matter and the substrate because there is no criticality for the exact size. Assuming arguendo that there is a functional relationship, the Examiner refers applicant to Harrison, US Pub. No. 2007/0004524 A1, Fig. 2, evidencing rings that are present at address and in locations consistent with applicant’s drawings (i.e. making obvious the size limitation). Finally, it is noted that the combined Lutz and Pelz do not specifically disclose that the marks are compensating for a curvature of the golf ball as determined by a least one processor. However, Katsuhiro discloses that marks are compensating for a curvature of the product as determined by a least one processor (col. 11, lines 19-47). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Lutz and Pelz to make the marks compensating for a curvature of the golf ball as determined by a least one processor as taught and suggested by Katsuhiro because doing so would be use of a known technique (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object onto which a marking is placed) to improve a similar product (a golf ball with curves having markings placed on it) in the same way (adjusting, by computer/processor, the dimensions on a flat printing plate to account for the curvature of an object in the form of a golf ball onto which a marking is placed).
Regarding claim 28, the combined Lutz and Pelz disclose that the first centerline marking extends parallel to the centerline of the golf ball (Pelz: Fig. 1, items 10 and 12; noting the “centerline” would be the equator).
Claims 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Lutz (US Pub. No. 2005/0132909 A1) in view of Pelz (US Pub. No. 2006/02993113 A1) in view of Katsuhiro et al. (herein “Katsuhiro”; US Pat. No. 5,282,306) and in further view of Hettinger et al. (herein “Hettinger”; US Pat. No. D471,608 S).
Regarding claims 31, and 33, it is noted that the combined Lutz, Pelz, and Katsuhiro do not specifically disclose the first circular marking surrounds a third printed marking comprising at least one of lettering or numbers and the second circular marking surrounds a fourth printed marking comprising at least one of lettering or numbers. However, Hettinger discloses a golf ball wherein a first circular that marking surrounds a third printed marking comprising at least one of lettering or numbers (Fig. 2; noting both letters and a number). In addition, regarding placing that printed matter on the other side (i.e. within the second circular marking), In addition, it has been held that the duplication of parts is not given patentable weight unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Lutz, Pelz, and Katsuhiro to use a first circular marking surrounds a third printed marking comprising at least one of lettering or numbers as taught by Hettinger because doing so would be combining prior art elements (a golf ball having rings on opposite poles, and a golf ball having rings on opposite poles with letters and a number in the middle) according to known methods (a substitution of the letters and number into the rings) to yield predicable results (a golf ball having rings on opposite poles with letters and a number in the middle, the letters and numbers conveying information to the user). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing to use the number and letters on the opposite side (i.e. within the opposite ring) because doing so would not provide new and unexpected results: that is, the information on the second and opposite side would provide information to the user much like the information on the first side.
Regarding claims 32, and 34, the combined Lutz, Pelz, Katsuhiro, and Hettinger disclose that transferring the first ink press from the pad to the golf ball includes transferring both the first circular marking and the third printed marking (Lutz: par. [0027] noting this is obvious as “one or more indicia, logo, or production print can be printed on the surface of the ball” making obvious that one or more can be printed at one time; emphasis added).
Response to Arguments
Applicant's arguments filed 9/22/25 have been fully considered but they are not persuasive.
103 Rejection
On page 11 of the Remarks, applicant argues that Katsuhiro does not disclose that “the marks are compensated for a curvature of the product as determined by at least one processor” (see page 11). Applicant then goes on to argue the compensation is not specifically for a “golf ball”. The Examiner does not find the argument compelling. The primary reference Lutz and secondary reference Pelz already makes obvious the use of marks on golf balls. The tertiary reference Katsuhiro discloses the process of altering a mark created on a flat surface based on a distortion caused by placement on a curved surface (albeit “annular” as opposed to spherical as argued by applicant). The ability to apply this teaching to any curved surface, including that of a golf ball, is obvious (see the motivational statement for the introduction of Katsuhiro, the Examiner actually using “as taught and suggested” on purpose; emphasis added). Restated, applicant is arguing Katsuhiro is isolation instead of what the reference would teach one of ordinary skill in the art.
On page 12 of the Remarks, applicant further argues that none of the references disclose “such that the first circular marking and the second circular marking are perceived as linear when viewed from above”. It should be noted that the Examiner is unclear on the record what applicant means or considers as “linear”. It would appear applicant is arguing that the rings appear “straight linear” (i.e. straight lines), but based on the lack of explanation in the arguments, it is completely unclear. As such, for the rejection on the merits, the Examiner interprets the language under the broadest reasonable interpretation.
On page 12 of the Remarks, applicant argues that the circles in Pelz are “not perceptible to the golfer when positioned to putt”. This is unequivocally rebutted by Pelz: Fig. 3. Restated, Pelz: Fig. 3 can be utilized as a top view and the figure clearly shows circles 14 visible in the top view. In addition, the Examiner does not import any definition as to what is considered “linear” (again, noting the Examiner takes the broadest reasonable interpretation). As per https://byjus.com/maths/curved-line/, a line may be curved. As such, broadly speaking, Pelz: Fig. 4 reads on the current amendments as it shows a curved line. Restated, for the record, the Examiner assumes applicant is attempting to claim and argue that the rings appear “straight linear”, but the Examiner does not import “straight” into the limitation of “linear”.
On page 13 of the Remarks, applicant argues the Examiner use of In re Gulack with regards to the actual diameter size of the rings. Applicant argues, in a somewhat convoluted way, that the exact diameter size provides a functional relationship to the golf ball because the Pelz invention discloses “polar o-rings” that are “essentially invisible to a golf when positioned to putt”. First, however, applicant should be using citations from their own specification to support a position of a functional relationship between the exact diameter size of the ring and the substrate of the golf ball (emphasis added). In addition and respectfully submitted, the Examiner also fails to see how support for this functional relationship can be found when there is no criticality for the exact diameter size within the specification. Second, Pelz: Fig. 4 clearly shows that items 14 are visible at address when a user is positioned above the ball. This directly rebuts applicant’s argument that the rings are “essentially invisible”. Third, the Examiner utilizes Harrison: Fig. 2, to evidence that rings consistent with applicant’s invention, are well-known in the art, and thus the exact minimum diameter size is obvious as the Harrison rings are present on the shoulder. Fourth, Pelz: Fig. 3 itself shows alternate rings that would be obviously over 30 mm in diameter (i.e. they are adjacent the equator of a 42.67 mm standard ball), and the rings also appear as straight linear when viewed from the top (see Fig. 3).
On page 14 of the Remarks, applicant argues that (emphasis added):
As discussed above, Applicant respectfully submits that the recitations of “such that the
first circular marking and the second circular marking are perceived as linear when viewed from above” and “wherein the first circular marking and the second circular marking have a diameter of at least 30 mm” are clearly used to create a new and unobvious functional relationship (e.g., act as visible alignment aid to user).
As such, based on the above and in the event of appeal, the Examiner gives the following analysis for the Board’s consideration. Applicant has admitted on the record that the benefit from the rings are to “aid to the user”. As such, this assertion negates that the rings have a functional relationship to the substrate as the rings assist the user, not the substate. Alternatively, the rings can be considered pure aesthetics because they do not provide a “mechanical function” to the golf ball itself, but only “aid” the user in alignment (as admitted on the record by applicant; See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947); i.e. the only mechanical function provided, if one is provided, is to the user and not to the product or substrate itself).
On page 14 of the Remarks, applicant notes that previous reference “Barrett” was “not relied upon as a basis for any rejection and accordingly does not need to be addressed”. Barrett has now been replaced by Harrison, but to argue that Barrett (or Harrison) is not the basis for any rejection and it does not need to be addressed is illogical. Previous reference Barrett (now Harrison) was/is used to show that the printed matter (i.e. the exact diameter size) is obvious to a POSA. Confusingly, applicant further argues that “Barrett is a design patent and as such cannot disclose any functionality, including acting as a visible alignment aid” (emphasis added). This position by applicant on the record would seem to reiterate that markings on any golf ball are pure aesthetics. Restated, applicant appears to take the position that markings on a golf ball can only be considered functionally related to the golf ball if a written specification says so (emphasis added). The Examiner does not take the selective approach as argued by applicant. In generally, either the markings are functionally related to the golf ball, or they are not, regardless of whether there is a written disclosure. However, assuming arguendo that applicant is correct, Harrison now makes this argument moot as Harrison is accompanied by a written description concerning the alignment rings. Furthermore, assuming arguendo that applicant is correct, applicant’s own written description gives no functionality to the rings being over 30 mm, the line weight, or the line format. So, consistent with applicant’s view on markings having functional support via a written description, the limitation of “at least 30 mm”, the line weight, and the line format carries has no functional relationship with substrate because so specific functional relationship is stated in the written specification.
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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
9/30/25
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711