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 .
Status of Claims and Application
This non-final action on the merits is in response to the request for continued examination received by the office on 20 January 2026. Claims 1-20 are pending. Claims 1, 15, and 20 are amended. No claims are added or cancelled.
Response to Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original disclosure does not support the newly added limitation to all independent claims that the foamed casing layer expands to surround the entirety of the core body. The specification as originally filed teaches that the ends of the protuberances are not covered by the foamed casing material (See all figures, but particularly Fig. 6).
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 6, 7, 9-13, & 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2016/0375313 to Binette et al. (‘313 hereafter) in view of U.S. Patent 7,074,137 to Sullivan et al. (‘137 hereafter).
Regarding claim 1, ‘313 teaches method of forming a golf ball sub-assembly, the method comprising: (i) providing a core body comprising a plurality of protrusions that project from an outer surface of the core body (paragraph 0033); (ii) applying a casing material to an interior surface of at least one first casting mold (paragraph 0029); (iii) plunging the core body into the at least one first casting mold including the casing material such that at least a subset of the plurality of protrusions contacts the interior surface of the at least one first casting mold to center the core body relative to the at least one first casting mold (paragraph 0029); and(iv) curing the casing material such that the foamed casing material fills a void defined between the core body and the at least one first casting mold, and the casing material forms a casing layer that surrounds an entirety of the core body to form a golf ball sub-assembly, wherein the casing material is a polyurethane (paragraph 0029). ‘313 does not teach a foaming polyurethane.
In the same field of endeavor and incorporated by reference by ‘313 (see paragraph 0050), ‘137 teaches that it is known to make golf balls with foamed cores or interlayers and that polyurethane is a suitable material for such (C10L65-C11L22) for the benefit of controlling the moment of inertia of the golf ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 with those of ‘137 for the benefit of forming golf balls with controlled moments of inertia.
Regarding claim 6, ‘313 teaches the method wherein the core body has a non-spherical profile (paragraph 0033).
Regarding claim 7, ‘313 teaches the method wherein the core body has a symmetrical profile (Fig 8 items 38).
Regarding claim 9, ‘313 teaches the method wherein the outer surface of the core body has a primary outer diameter of 1.460 inches – 1.590 inches (paragraph 0083 – “a single core having a diameter of from about 1.20 in. to about 1.65 in.”).
Regarding claim 10, ‘313 teaches the method wherein the core body has a secondary outer diameter in regions of the plurality of protrusions, and the secondary outer diameter is 1.510 inches – 1.640 inches (paragraph 0083 – taking the single core diameter and adding 2 times the cover thickness disclosed as being the height of the prior art centering protuberances).
Regarding claims 11 and 12, ‘313 in view of ‘137 does not disclose the claimed protuberance percentage. It would have been obvious to one possessed of ordinary skill to select a protuberance coverage percentage from within the claimed range since it has been held that the optimization of prior art through routine experimentation involves only ordinary skill in the art. The ‘313 reference disclose that a self-centering ball core should have “. . . multiple protrusions (at least 3) for ensuring the centering of the precursor during casting. . . .” This statement would tend to suggest to the ordinary artisan that more protuberances may be necessary to hold the core stationary within the mold.
Regarding claim 13, ‘313 does not disclose the claimed time. The prior art process is generally described in at paragraph 0029 as well as fig. 3. As described, the prior art mold is filled with casting material in the step immediately before the placement of the prior art core bodies. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to minimize the time between these two steps for the benefit of increasing overall throughput and therefore the profitability of the method.
Regarding claim 15, ‘313 teaches A method of forming a golf ball sub-assembly, the method comprising: (i) forming a plurality of protrusions on a core body such that the plurality of protrusions project from an outer surface of the core body (0033); (ii) depositing a casing material on an interior surface of at least one first casting mold (paragraph 0029); (iii) plunging the core body into the at least one first casting mold including the casing material such that at least a subset of the plurality of protrusions contacts the interior surface of the at least one first casting mold to center the core body relative to the at least one first casting mold, wherein the foamed casing material is a polyurethane (paragraphs 0029 and 0033); (iv) engaging the at least one first casting mold with at least one second casting mold to form a molding assembly that defines a void between the core body, the at least one first casting mold, and the at least one second casting mold (paragraph 0029); and(v) curing the foamed casing material such that the foamed casing material expands and fills the void to form a casing layer that surrounds an entirety of the core body to form a golf ball sub-assembly (0029). 313 does not teach a foaming polyurethane.
In the same field of endeavor and incorporated by reference by ‘313 (see paragraph 0050), ‘137 teaches that it is known to make golf balls with foamed cores or interlayers and that polyurethane is a suitable material for such (C10L65-C11L22) for the benefit of controlling the moment of inertia of the golf ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 with those of ‘137 for the benefit of forming golf balls with controlled moments of inertia.
Regarding claims 16, ‘313 in view of ‘137 does not disclose the claimed protuberance percentage. It would have been obvious to one possessed of ordinary skill to select a protuberance coverage percentage from within the claimed range since it has been held that the optimization of prior art through routine experimentation involves only ordinary skill in the art. The ‘313 reference disclose that a self-centering ball core should have “. . . multiple protrusions (at least 3) for ensuring the centering of the precursor during casting. . . .” This statement would tend to suggest to the ordinary artisan that more protuberances may be necessary to hold the core stationary within the mold.
Claim(s) 2, 3 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘313 in view of ‘137 as applied to claim 1 or 15 above, and further in view of CN 1820034 to Jiang et al. (‘034 hereafter).
Regarding claim 2, ‘313 in view of ‘137 does not teach an adhesion promoter. In the related art of molding, ‘034 teaches the method further comprising applying an adhesion promoting treatment to the core body prior to step (iii) (pg 74 paragraph 6) for the benefit of promoting the bonding of layers. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘034 for the benefit of forming a durable golf ball.
Regarding claim 3, ‘313 in view of ‘137 does not teach a silane. In the related art of molding, ‘034 teaches the method wherein the adhesion promoting treatment comprises applying a silane solution to the core body (pg 74 paragraph 6) for the benefit of promoting the bonding of layers. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘034 for the benefit of forming a durable golf ball.
Regarding claim 18, ‘313 in view of ‘137 does not teach a silane. In the related art of molding, ‘034 teaches the method wherein the adhesion promoting treatment comprises applying a silane solution to the core body (pg 74 paragraph 6) for the benefit of promoting the bonding of layers. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘034 for the benefit of forming a durable golf ball.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable ‘313 in view of ‘137 as applied to claim 1 above, and further in view of U.S. Patent 9,283,440 to Ishii et al. (‘440 hereafter).
Regarding claim 4, ‘313 in view of ‘137, while teaching casting foamed material and assembling two mold halves(see above), the art combination does not teach the claimed process order. In the related art of golf ball molding, ‘440 teaches the method further comprising engaging the at least one first mold with at least one second mold to partially define the void prior to step (iv) (Figs 16C and 16D), wherein the material is configured to also fill portions of the void defined between the core body and the at least one second casting mold (Figs 16C and 16D items 164, 168, 170 and 168) for the benefit of forming a multilayer spherical ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘440 for the benefit of forming a spherical ball with a foamed layer.
Regarding claim 5, ‘313 in view of ‘137 teaches casting of foamed material. However, the prior art combination does not teach filling a second casting mold. In the art of forming golf balls, ‘440 teaches the method according further comprising applying the casing material to an interior surface of at least one second casting mold prior to engaging the at least one first casting mold with the at least one second casting mold (Figs 16C and 16D items 164, 168, 170 and 168) for the benefit of forming a multilayer spherical ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘440 for the benefit of forming a spherical ball with a foamed layer.
Claim(s) 8 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘313 in view of ‘137 as applied to claims 1 or 15 above, and further in view of U.S. Patent 6,398,667 to Lemons et al. (‘667 hereafter).
Regarding claims 8 and 19, ‘313 in view of ‘137 teaches a foamable precursor in a liquid state which would be capable of interpenetrating a lattice shaped core. This art combination does not teach a lattice shaped core. In the same field of endeavor, ‘667 teaches a method wherein the core body has a lattice profile (Fig. 5) for the benefit of improving the spin characteristic of the ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teachings of ‘313 in view of ‘137 with those of ‘667 for the benefit of forming a ball with improved spin characteristics.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘313 in view of ‘137 as applied to claim 1 above, and further in view of U.S. Patent 6,964,626 to Wu et al. (‘626 hereafter).
Regarding claim 14, ‘313 in view of ‘137 teaches foamed polyurethane where the foam expands during step (iv). ‘313 in view of ‘137 does not teach the viscosity. In the related art of molding, ‘626 teaches the method according wherein the casing material is a polyurethane having a viscosity of 5,000 cp – 50,000 cp when the core body is plunged in step (iii) (TABLE 1, Examples 1-5), for the benefit of forming a durable and resilient object. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 in view of ‘137 with that of ‘626 for the benefit of forming a durable and resilient golf ball.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘313 in view of ‘137 as applied to claim 15 above, and further in view of ‘626.
Regarding claim 17, ‘313 in view of ‘137 does not disclose the claimed time. The prior art process is generally described in a passage spanning from column (paragraph 0029). As described, the prior art mold is filled with casting material in the step immediately before the placement of the prior art core bodies. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to minimize the time between these two steps for the benefit of increasing overall throughput and therefore the profitability of the method. ‘313 in view of ‘137 does not teach the claimed material or viscosity. In the related art of molding, ‘626 teaches the method according wherein the casing material is a polyurethane having a viscosity of 5,000 cp – 50,000 cp when the core body is plunged in step (iii) (TABLE 1, Examples 1-5), for the benefit of forming a durable and resilient object. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 in view of ‘137 with that of ‘626 for the benefit of forming a durable and resilient golf ball.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over ‘313 in view of ‘137 in view of ‘626.
Regarding claim 20, ‘313 teaches method of forming a golf ball sub-assembly, the method comprising: (i) providing a core body comprising a plurality of protrusions that project from an outer surface of the core body (paragraph 0033); (ii) applying a casing material to an interior surface of at least one first casting mold (paragraph 0029); (iii) plunging the core body into the at least one first casting mold including the casing material such that at least a subset of the plurality of protrusions contacts the interior surface of the at least one first casting mold to center the core body relative to the at least one first casting mold (paragraph 0029); and(iv) curing the casing material such that the foamed casing material fills a void defined between the core body and the at least one first casting mold, and the casing material forms a casing layer that surrounds an entirety of the core body to form a golf ball sub-assembly, wherein the casing material is a polyurethane (paragraph 0029). ‘313 does not teach a foaming polyurethane, process time or material viscosity claimed.
In the same field of endeavor and incorporated by reference by ‘313 (see paragraph 0050), ‘137 teaches that it is known to make golf balls with foamed cores or interlayers and that polyurethane is a suitable material for such (C10L65-C11L22) for the benefit of controlling the moment of inertia of the golf ball. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 with those of ‘137 for the benefit of forming golf balls with controlled moments of inertia. ‘313 in view of ‘137 does not tach claimed process time or material viscosity.
Regarding process time, the prior art process is generally described in a passage spanning from paragraph 0029. As described, the prior art mold is filled with casting material in the step immediately before the placement of the prior art core bodies. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to minimize the time between these two steps for the benefit of increasing overall throughput and therefore the profitability of the method. ‘313 in view of ‘137 the claimed material or viscosity.
In the related art of molding, ‘626 teaches the method according wherein the casing material is a polyurethane having a viscosity of 5,000 cp – 50,000 cp when the core body is plunged in step (iii) (TABLE 1, Examples 1-5), for the benefit of forming a durable and resilient object. It would have been obvious to one possessed of ordinary skill in the art at the time of effective filing to combine the teaching of ‘313 in view of ‘137 with that of ‘626 for the benefit of forming a durable and resilient golf ball.
Response to Arguments
In support of the patentability of the instant application, applicant has advanced several arguments. They are:
The ‘258 reference is directed to forming medical sponges not golf balls as instantly claimed and cannot be modified to teach the claim as amended.
The ‘626 reference is directed to forming automotive timing and serpentine belts and not golf balls, and is therefore non-analogous art.
Regarding argument (a), applicant’s arguments with respect to the applicability of the ‘258 have been considered but are moot because the new ground of rejection does not rely on the reference applied.
Regarding argument (b), the examiner agrees that the ‘626 reference is directed to the formation of automotive belts and not golf balls. As stated previously, examiner is not persuaded that the formation of a different object is sufficient to render the ‘626 reference non-analogous prior art. Specifically and as stated previously, the ‘626 reference teaches that its polyurethane compositions are suitable for applications in hot and cold environments where the article formed is subjected to repeated dynamic loading conditions. Examiner again notes that the game of golf is played in many different climactic zones (from inside the arctic circle to the equator and from below sea level to above 10,000 feet) and involves primarily the repeated, vigorous striking of the ball with a club. One possessed of ordinary skill at the time of effective filing would have perceived the applicability of the ‘626 reference to the formation of golf ball sub-assemblies. Applicant has asserted that there are, presumably irreconcilable, fundamental differences between automotive belts and golf balls, but has not properly proven that these alleged, and in fact, unstated differences would cause one possessed of ordinary skill to forego the teachings of the ‘626 reference.
Conclusion
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 John P Robitaille whose telephone number is (571)270-7006. The examiner can normally be reached Monday-Friday 8:30AM-6:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached on (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JPR/Examiner, Art Unit 1743
/GALEN H HAUTH/Supervisory Patent Examiner, Art Unit 1743