DETAILED ACTION
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: claim 21 now claims “wherein the ratio of d/p is 3, the number of injection runners on the proximal portion is 6, and the number of the injecting runners on the distal portion is 18”. While par. [0037]-[0038] may provide a range that may support the values, applicant essentially picks these values under hindsight within the disclosed range. The Examiner believes that this creates both 112(a) and 112(b) issues. However, assuming arguendo that it does not, the actual values need to be added to the specification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “wherein the ratio of d/p is 3, the number of injection runners on the proximal portion is 6, and the number of the injecting runners on the distal portion is 18” of claim 21 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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 21 is 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. Claim 21 now claims “wherein the ratio of d/p is 3, the number of injection runners on the proximal portion is 6, and the number of the injecting runners on the distal portion is 18”. The problem with the limitation is that the exact values are never listed in the original specification. That is, the value of “3”, “6”, and 18” are never actually listed in the specification. Applicant appears to take these values from the broader ranges given in pars. [0037]-[0038] of applicant’s spec. However, the “discrete values or data points” are never actually listed in the specification.
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.
Claims 1-5, 15, 16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Wiegmans (US Pub. No. 2013/0334737 A1) in view of Lavallee et al. (herein “Lavallee”; US Pat. No. 5,122,046) and in further view of Yamaguchi (US Pat. No. 5,824,258).
Regarding claim 1, Wiegmans discloses an injection mold for a golf ball (title), comprising: a first mold half and a second mold half (Fig. 1 and par. [0075]; noting an “upper and lower mould plate”), wherein each of the mold halves has a parting line surface and at least one inner surface that is recessed into the parting line surface (Fig. 1); when the parting line surface of the first mold half is mated with the parting line surface of the second mold half (Fig. 1; noting this is what is shown; “mated” together), the inner surface of the first mold half and the inner surface of the second mold half are coupled to form a spherical cavity (Fig. 1); and a runner system comprising a primary runner (Fig. 4a, item 26, reproduced below), an annular runner (Fig. 4a, item 10, reproduced below, i.e. the “ring shaped runner”), and at least one injecting runner (Fig. 4a, collectively items 21, reproduced below) wherein a plastic material flows through the primary runner into the annular runner (Fig. 4b, represented as item 26), and the annular runner is formed on the parting line surface of the first mold half and/or the parting line surface of the second mold half (Fig. 1, 4b, and par. [0075]), and the annular runner surrounds the spherical cavity (Figs. 1 and 4b); the at least one injecting runner formed on the parting line surface of the first mold half and/or the parting line surface of the second mold half (Figs. 1 and 4b and par.[0075]; noting this would be obvious), and the at least one injecting runner connects between the annular runner and the spherical cavity (Fig. 4b and par. [0075]); an area of a connecting site between the at least one injecting runner and the spherical cavity is defined as a cross-sectional area of the at least one injecting runner (Fig. 4b; noting some area would be inherent); wherein, a phantom coronal plane is defined to pass through the injection mold to divide the first mold half and the second mold half into a proximal portion and a distal portion (Fig. 4a below; noting the “phantom coronal plane” is imaginary and merely a reference plane, and as such inherent or obvious); the proximal portion comprises the primary runner and a part of the at least one injecting runner (Fig. 4a, reproduced below), and the distal portion comprises the other part of the at least one injecting runner (Fig. 4a, reproduced below); wherein the runner system comprises a plurality of injecting runners (Fig. 4a below), and a number of the injecting runners in the proximal portion is smaller than a number of the injecting runners in the distal portion (Fig. 4a below; noting two runners in the proximal, and four in the distal); wherein a total number of the injecting runners on the proximal portion and the distal portion is in a range of 6 to 30 (Fig. 4a below); and wherein the number of the injecting runners in the proximal portion is in a range of 2 to 10 (Fig. 4a below), and the number of the injecting runners in the distal portion is in a range of 4 to 20 (Fig. 4a below). It is noted that Wiegmans does not specifically disclose wherein a sum of the cross-sectional area of the at least one injecting runner in the proximal portion is p, and a sum of the cross-sectional area of the at least one injecting runner in the distal portion is d; a ratio of d/p is greater than 1. However, Wiegmans discloses an injection mold wherein the number of gates on the proximal portion is two, the number of gates on the distal portion is four, and the gates would inherently have some cross-sectional area at the connection site (Fig. 4a below). In addition, Lavallee discloses a similar injection mold for a golf ball wherein the cross-sectional area of the injecting runner, defined as an area of a connecting site between the at least one injecting runner and the spherical cavity is defined as a cross-sectional area of the at least one injecting runner, is the same for all the injecting runners (Figs. 1, 3, and 4 and col. 2, lines 66-68; noting it is preferred that all eight gates are 0.030 inches in diameter). Finally, by applying the teachings of Lavallee of using the same gate cross-sectional areas for all the injecting runners, the ratio would be d/p = 2 (p = (2 x π*(0.030”/2)2) and d = (4 x π*(0.030”/2)2), or 4/2 = 2, which is greater than 1 as required by the claim). Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Wiegmans to use the same gate cross-sectional area on each injection runner as taught by Lavallee so that a sum of the cross-sectional area of the at least one injecting runner in the proximal portion is p, and a sum of the cross-sectional area of the at least one injecting runner in the distal portion is d; a ratio of d/p is greater than 1 because doing so would be combining prior art elements (an injection mold for golf balls having less injection runners on the proximal side than on the distal side and an injection mold for golf balls that uses a constant cross-section for all the injection runners) according to known methods (a substitution of the constant cross-section runners) to yield predictable results (an injection mold for golf balls having less injection runners on the proximal side than on the distal side with the injection runners all having the same cross-sectional size, the cross-section size of the injection runners known to work in the golf ball injection molding art). Finally, it is noted that the combined Wiegmans and Lavelle do not specifically disclose that the total number of injection runners is at least 9, and the number of injection runners in the proximal portion is at least 4, and that the total number injection runners in the distal portion is at least 5. However, Yamaguchi discloses an injection mold wherein the total number of injection runners is at least 9, and the number of injection runners in the proximal portion is at least 4, and the total number of injection runners in the distal portion is at least 5 (Fig. 1B; noting 12 total injection runners, and at least 5 on the proximal and distal side; noting two runners lie on the dividing line and are not included). In the alternative, regarding the total number of injection gates (and thus inherently the number of proximal and distal sides), 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, par. [0038]; noting applicant gives no criticality for the lesser claimed range of 9 to 30 within the disclosed range of 6 to 40 for the total number of injection runners, and noting applicant gives no criticality for the lesser claimed range of 4 to 10 within the disclosed range of 2 to 12 injecting gates on the proximal side; and applicant gives no criticality for the lesser claimed range of 5 to 20 within the disclosed range of 4 to 28 injection gates on the proximal side). In addition, to support the Examiner’s assertion that total number of gates (and thus the number of gates on the proximal and distal side) 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 Yamaguchi which specifically states that the number of gates used is a result-effective variable based on the thickness/gage of the cover, the arrangement of the dimples, and the type of molding resin used for the cover (col. 4, lines 8-18). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Wiegmans and Lavelle to use at least 9 total injecting gates with at least 4 on the proximal side, and at least 5 on the distal side as taught by Yamaguchi because doing so would be combining prior art elements (an injection mold that has six total gates, two on the proximal side and four on the distal side and an injection mold that has twelve total gates, at least five gates on the proximal and distal side) according to known methods (substituting the minimum number of gates) to obtain predictable results (using at least twelve total gates including at least five gates on the distal and proximal side). In the alternative, it would have been obvious to a person of ordinary skill in the art at the time of filing that the total number of gates (and thus the number of gates on the distal and proximal side) could be found through routine experimentation based on the desired cover thickness, the dimple pattern, and the type of material used during injection.
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Regarding claim 2, the combined Wiegmans, Lavallee, and Yamaguchi disclose a phantom sagittal plane is defined to pass through the injection mold, and the phantom sagittal plane divides the first mold half and the second mold half into a first half portion and a second half portion (Wiegmans: Fig. 4a above; noting a phantom sagittal plane is imaginary and thus obvious or inherent); a sum of the cross-sectional area of injecting runners in the first half portion is equal to a sum of the cross-sectional area of the runners in the second half portion (Wiegmans: Fig. 4a above; noting 3 and 3 injection runners as the cross-sectional area would the same as per Lavallee: col. 2, lines 66-68), wherein the phantom sagittal plane is perpendicular to the phantom coronal plane (Wiegmans: Fig. 4a above).
Regarding claim 3, the combined Wiegmans, Lavallee, and Yamaguchi disclose that the primary runner has an injecting section, and an extending direction of the injecting section is defined to pass through the center of the spherical cavity; the phantom coronal plane is perpendicular to the extending direction of the injecting section (Wiegmans: Fig. 4a above; noting “the extending direction of the injection section” is along the phantom sagittal plane, which is perpendicular to the phantom coronal plane).
Regarding claim 4, the combined Wiegmans, Lavallee, and Yamaguchi disclose that the phantom coronal plane passes through the center of the spherical cavity (Wiegmans: Fig. 4a above; noting this is obvious or inherent at the “phantom coronal plane” is imaginary can be made to pass through any desired point).
Regarding claim 5, the combined Wiegmans, Lavallee, and Yamaguchi disclose that a cross-sectional area of each of the injecting runners in the proximal portion is equal to a cross-sectional area of each of the injecting runners in the distal portion (Lavallee: Figs. 1, 3, and 4 and col. 2, lines 66-68; noting it is preferred that all eight gates are 0.030 inches in diameter).
Regarding claim 15, the combined Wiegmans, Lavallee, and Yamaguchi disclose golf ball, comprising a core and a cover that covers the core, wherein the golf ball is characterized in that the cover is manufactured by using the injection mold as claimed in claim 1 (Wiegmans: pars. [0067]-[0068]).
Regarding claim 16, the combined Wiegmans, Lavallee, and Yamaguchi disclose that disclose that an outer surface of the cover has a plurality of dimples (Wiegmans: Fig. 4a; noting this is obvious) a thickness of the cover is in a range of 0.5 mm to 2.0 mm (Yamaguchi: col. 4, lines 8-18; noting 1.8 mm anticipates the claimed range).
Regarding claim 21, it is noted that the combined Wiegmans, Lavallee, and Yamaguchi do not specifically disclose that the ratio of d/p is 3, the number of the injecting runners on the proximal portion is 6, and the number of the injecting runners on the distal portion is 18. However, consistent with the above rejection of clam 1, the total number of injection gates and thus the number of gates in the proximal and distal portions is considered a result effective variable by Yamaguchi. In addition, under applicant’s pars. [0037]-[0038], there is no criticality for the exact number of gates in each proximal and distal portion, the total number of gates, or that the exact ratio of d/p is 3. Furthermore, the exact ratio of proximal to distal runners (i.e. the exact ratio of d/p) can also be considered a result effective variable under Wiegmans because it dictates the amount of “unbalance” created by the injection molding system (par. [0075]). As such, a POSA would recognize that the entirely of the claim involves result effective variables that can be optimized based on a desired output or input characteristics.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wiegmans (US Pub. No. 2013/0334737 A1) in view of Lavallee et al. (herein “Lavallee”; US Pat. No. 5,122,046) in view of Yamaguchi (US Pat. No. 5,824,258) and in further view of Kim et al. (herein “Kim”; US Pub. No. 2011/0130216 A1).
Regarding claim 17, it is noted that the combined Wiegmans, Lavallee, and Yamaguchi do not specifically disclose that at least one intermediate layer that is located between the core and the cover, wherein a thickness of the at least one intermediate layer is in a range of 0.8 mm to 11.35 mm. However, Kim discloses a golf ball wherein the at least one intermediate layer that is located between the core and the cover (Fig. 1, item 14 and pars. [0056] and [0071]; noting a mantle), wherein a thickness of the at least one intermediate layer is in a range of 0.8 mm to 11.35 mm (par. [0056]; noting a range of 0.025 to 0.045 inches or 0.635 to 1.143 mm makes obvious the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Wiegmans, Lavallee, and Yamaguchi to use an intermediate layer for the golf ball consistent with the above thickness as taught by Kim because doing so would be combining prior art elements (a golf ball made using an unbalanced injection mold and a golf ball made having an intermediate layer) according to known methods (using the golf ball having the intermediate layer as the subassembly in the unbalanced injection mold system) to obtain predictable results (creating a golf ball using an unbalanced injection mold system, the golf ball having an intermediate layer and thickness known to work in golf balls).
Regarding claim 18, the combined Wiegmans, Lavallee, Yamaguchi, and Kim disclose that the at least one intermediate layer is manufactured by the injection mold as claimed in claim 1 (Kim: pars. [0056] and [0071] making obvious that the injection molding process can be applied to a cover or mantle/intermediate layer, and Wiegmans: Fig. 4a and par. [0069] disclosing injection molding of a cover; emphasis added).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Wiegmans (US Pub. No. 2013/0334737 A1) in view of Lavallee et al. (herein “Lavallee”; US Pat. No. 5,122,046) in view of Yamaguchi (US Pat. No. 5,824,258) and in further view of Watanabe (US Pub. No. 2020/0368949 A1 A1).
Regarding claim 20, it is noted that the combined Wiegmans, Lavallee, and Yamaguchi do not specifically disclose that a compression deformation of the golf ball is in a range of 2.2 mm to 4.5 mm, the compression deformation of the golf ball is a difference between a deformation amount of the golf ball when the golf ball is subjected to compressive forces of 10 kg and a deformation amount of the golf ball when the golf ball is subjected to compressive forces of 130 kg. However, Wiegmans discloses a ball that would inherently have some 10-130 kfg compression (Fig. 1 and pars. [0067]-[0068]). In addition, Watanabe discloses a golf ball having a 10-130 kfg compression in the range of 2.2 to 4.5 mm (par. [0107] and Table 5, disclosing a value of 2.3 mm for ball deflection/compression; the disclosed value anticipating the claimed range). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Wiegmans, Lavallee, and Yamaguchi to a make the ball have a 10-130 kfg compression deformation in a range of 2.2 mm to 4.5 mm as taught by Watanabe because doing so would be combining prior art elements (a golf ball having some inherent 10-130 kfg compression, and a golf ball having a 10-130 kfg compression of 2.3 mm) according to known methods (a substitution of the compression value) to yield predictable results (making the golf ball having a compression value of 2.3 mm on a 10-130 kfg compression test, the 2.3 mm value known to work for golf balls).
Response to Arguments
Applicant's arguments filed 10/2/25 have been fully considered but they are not generally persuasive.
Specification and Drawing Objections
The previous specification and drawing objections are removed. However, new ones are created by way of the amendments.
103 Rejection
Turning to the amendments, the Examiner notes that applicant has now amended the claims to dictate the number of gates in the proximal portion, the distal portion, and the total number. However, as explained above in the rejection, applicant lacks any criticality for the exact number of gages being 9 to 30 for total number of gates, 4 to 10 gates for the proximal portion, and 5 to 20 gates for the distal portion. Restated, par. [0038] of applicant’s specification states that total number of gates can be from 6 to 40, the proximal portion can have 2 to 12, and the distal portion can have 4 to 28 (bold emphasis added). To be clear, Wiegmans discloses in Fig. 4a above that there are 6 total injecting gates with 2 in the proximal portion, and 4 in the distal portion (bold emphasis, again added). As such, Wiegmans actually reads on applicant’s broader disclosed range. Applicant appears to merely select values from a narrower range in an attempt to overcome the Wiegmans’ reference, but this narrower disclosed range has no criticality.
Couple that lack of criticality with the newly introduce tertiary reference Yamaguchi that teaches that the total number of gates (and thus the number of proximal and distal gates) is a result effect variable, and the Examiner deems the limitation obvious. Restated, looking at both the lack of criticality and the evidence that the total number of gates is a result effective variable, a preponderance of the evidence deems the limitation obvious.
Applicant argues that (see Remarks, page 3; emphasis added):
The improvements and advantages provided by Applicant’s claimed injection mold and
golf ball produced thereby over Wiegman [sic] and/or Lavallee as well as other prior art further support non-obviousness. Deploying the recited total number of 9 to 30 injecting runners based on the ratio of d/p is greater than 1 wherein the injecting runners on the proximal portion range from 4 to 10, and the distal portion from 5 to 20 is critical to enabling even injection of the plastic material into the mold cavities and containing the amount of sprue to more efficaciously distribute and deposit the injected plastic material. See, e.g., paragraph [0039].
With all due respect, there is no “criticality” for the exact range of 9 to 30, 4 to 10, and 5 to 20 as argued by applicant. The disclosure of criticality in par. [0039] as cited by applicant refers to and includes the broader ranges as disclosed in par. [0038] directly above it in the specification. Restated, there is no specific “criticality” for the narrower disclosed and claimed range over the broader disclosed range. In addition, assuming arguendo that there was a showing of criticality by applicant for the narrower range, a showing of criticality does not overcome a rejection based on In re Aller (noting In re Aller is used in MPEP 2144.05, but “criticality” is referred to as it pertains to case law as discussed in MPEP 2144.04).
Finally, on page 3 to 4 of the Remarks, applicant argues the criticality of using less than thirty (30) total runners/gates. However, the tertiary reference Yamaguchi makes obvious using “preferably ten to sixteen gates” which makes moot the argument (see col. 4, lines 8-18); even assuming arguendo that optimization does not apply. Applicant’s argument of “criticality” of at most thirty (30) total runners/gates is also inconsistent with the broader range of up to 40 runner/gates as disclosed in their own specification, par. [0038].
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
10/15/25
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711