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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed On August 26, 2026 has been entered.
The present action introduces new grounds of rejection based on newly applied prior art. Accordingly, this first Office action following the request for continued examination is non- final. see MPEP 5 706.07(h)(VIII).
Status of Claims
Claims 1-11 and 13-21 are pending in the application. Claim 12 is canceled. Claims 1, 7, 8, 11, 13, 17, 18, and 21 were amended in the submission filed August 26, 2026.
Information Disclosure Statement
The information disclosure statement filed April 17, 2023 has been considered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The application claims foreign priority under 35 U.S.C. and 37 CFR 1.55 to Japanese Application No. 2022-070942, filed April 22, 2022. For purposes of the rejections below, April 22, 2022 is treated as the earliest possible effective filing date of the claimed subject matter.
Response to Amendment
The amendment filed August 26, 2026 has been entered. Claims 1 and 13 were amended to require that the acrylonitrile-butadiene based rubber include an acrylonitrile-butadiene rubber having a Mooney viscosity MVNBR (MLI+4 (100
°
C
)) ranging from 30 to 80 and a hydrogenated acrylonitrile-butadiene rubber having a Mooney viscosity MVHNBR (MLI+4 (100
°
C
)) ranging from 20 to 70, with a difference (MVNBR-MVHNBR) ranging from 6 to 30. Claims 7 and 17 were amended to narrow the difference to 6 to 17. Claims 8 and 18 were amended to depend from claims 1 and 13, respectively, and to recite an acrylonitrile-butadiene rubber amount from 10 mass % to 90 mass %. Claims 11 and 21 were amended to recite an acrylonitrile-butadiene rubber amount from 30 mass % to 70 mass %.
The amendments materially change the factual basis of the obviousness inquiry. The prior rejection relying on Sheridan for the disputed Mooney-viscosity and cure-torque teachings is not maintained. The new grounds below rely on prior-art disclosures directed to an actual HNBR/NBR blend having overlapping component Mooney-viscosity ranges and to established nitrile-rubber cure characterization. Arguments directed only to the factual basis of the superseded Sheridan rejection do not require a detailed response; objective evidence and other arguments that remain material to the new grounds are separately considered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 4, 7-9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mikura et al. (US 20160136492 A1, "Mikura") in view of Zhuohua et al. (CN 114350040 A, "Zhuohua"), and further in view of Guerin et al. (US 20050101736 A1, "Guerin") and Okuda et al. (WO 2015080114 A1, "Okuda").
Regarding claim 1, Mikura teaches a golf club grip comprising a cylindrical portion having a cylindrical inner layer and a cylindrical outer layer provided outside the cylindrical inner layer. Mikura states that the grip "comprises a cylindrical portion composed of a cylindrical inner layer and a cylindrical outer layer covering the inner layer" and that the cylindrical inner layer may be a porous rubber layer ([0011]; see also [0005], [0043]). The outer layer therefore covers, and is provided outside, the inner layer.
Mikura further teaches that the porous inner rubber layer is formed from an inner layer rubber composition containing a base rubber and a crosslinking agent. Mikura expressly identifies both acrylonitrile-butadiene rubber (NBR) and hydrogenated acrylonitrile-butadiene rubber (HNBR) among the suitable inner-layer base rubbers: "Examples of the base rubber include ... acrylonitrile-butadiene rubber (NBR), hydrogenated acrylonitrile- butadiene rubber (HNBR), [and] carboxyl-modified acrylonitrile-butadiene rubber (XNBR) … “ ([0038]). Mikura further teaches conventional sulfur crosslinking, vulcanization accelerators, vulcanization activators, reinforcing materials, and conventional mixing and kneading of the inner-layer composition ([00391-[0041]).
Mikura therefore teaches the claimed golf-grip structure and an inner-layer rubber composition using the same nitrile-rubber material family. Mikura does not expressly teach that the inner-layer base rubber includes an NBR/HNBR blend having the specific component Mooney-viscosity ranges and MVNBR-MVHNBR difference recited in claim 1. Mikura also does not expressly disclose a maximum torque of 0.5
N
∙
m
to 1.2
N
∙
m
measured at 165
°
C
and an amplitude angle of one degree.
Zhuohua teaches the missing NBR/HNBR blend and component-property ranges. Zhuohua states that "an HNBR/NBR blended rubber material is prepared" from "10-50 parts of Hydrogenated Nitrile Butadiene Rubber (HNBR)" and "90-50 parts of Nitrile Butadiene Rubber (NBR)," with the two rubbers totaling 100 parts by mass (Description, "Disclosure of Invention"; see also claim 1). Zhuohua further states that "[t]he hydrogenated nitrile rubber contains ... 54-68M of Mooney viscosity" and that "[t]he acrylonitrile-butadiene rubber has the Mooney viscosity of 65 +/- 5.0M," i.e., 60-70M (Description, "Disclosure of Invention"). These prior-art ranges lie wholly within claim I's NBR range of 30-80 and HNBR range of 20-70.
Zhuohua also supplies an express reason for using the blend. It teaches that the HNBR/NBR blend can be mechanically mixed to obtain a uniformly dispersed composition and provides excellent physical and mechanical properties, grease resistance, low-temperature resistance, aging resistance, and ozone resistance. Zhuohua further states that, compared with NBR products, the blend provides improved aging, oil, and low-temperature resistance, while compared with pure HNBR it provides lower cost and improved vulcanization manufacturability (Description, "Disclosure of Invention" and "beneficial effects"). Table 2 provides working compositions having HNBR/NBR ratios of 10/90, 20/80, 30/70, 40/60, and 50/50 (Table 2).
The Mikura/Zhuohua combination does not expressly teach the claimed maximum-torque range at the specified 165
°
C
and one-degree test condition. Guerin and Okuda teach established nitrile-rubber cure characterization that addresses this remaining difference.
Guerin teaches nitrile-rubber cure characterization using "MDR Cure Properties (160
°
C
., 1
°
arc, 1.7 Hz, 60 minutes)" and reports a maximum torque of 7.88
d
N
∙
m
for Example 2 ([0038]-[0040], Table 2). The value 7.88
d
N
∙
m
equals 0.788
N
∙
m
and lies within claim 1's 0.5-1.2
N
∙
m
interval. Guerin further states that the torque change "gives an indication of the crosslinking density" ([0041]). Guerin also teaches that conventional HNBR and other rubbers may be blended and that the amount can be determined by preliminary experiments ([0031]).
Okuda independently establishes 165
°
C
as a conventional NBR cure-characterization temperature. Okuda teaches NBR Mooney viscosity of 20-80, preferably 25-70, and identifies working NBR grades at 45, 35, and 27 ML(1+4) 100
°
C
. In the examples, Okuda measures "ML (minimum torque), MH (maximum torque), tc(10), tc(50) and tc(90)" at 165
°
C
according to JIS K 6300-2 die vulcanization test A. Okuda further evaluates compression set and explains that its NBR formulations are designed to resist scorch, vulcanize in a short time, and provide good compression set. Thus, Okuda confirms that cure-system selection and MH testing at the claimed temperature were conventional aspects of NBR formulation.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to form Mikura's nitrile-rubber inner layer using Zhuohua's NBR/HNBR blend and to apply the established nitrile-rubber cure-formulation and curemeter techniques taught by Guerin and Okuda. Mikura supplies the base product: a molded sporting-goods grip having a vulcanizable inner layer for which NBR and HNBR are expressly identified as suitable base rubbers. Zhuohua supplies a comparable nitrile-rubber product improved in the same way now claimed-by blending NBR and HNBR-and expressly teaches that the blend is homogeneous, vulcanizable, and provides predictable tradeoffs in aging resistance, oil resistance, low-temperature performance, manufacturability, and cost. Both Mikura and Zhuohua use conventional rubber mixing and vulcanization, so a rubber formulator could have applied Zhuohua's known blending technique to Mikura's inner layer with a reasonable expectation of obtaining a moldable and vulcanizable layer. Zhuohua's NBR range of 60-70 and HNBR range of 54-68 lie within claim 1's respective component ranges, and expressly encompassed grade selections produce positive MVNBR-MVHNBR differences from 6 through 16; thus, the component ranges and ordinary selections from them satisfy the claimed ranges and relationship. The remaining cure-torque limitation concerns the same vulcanizable nitrile-rubber material. Guerin teaches a one-degree MDR technique and an in-range maximum torque of 0.788 N·m, while Okuda teaches measuring NBR maximum torque at 165 ℃ and adjusting a nitrile-rubber cure system for cure speed, processability, and cured-rubber performance. A person formulating Mikura's modified nitrile inner layer would logically consult such nitrile-rubber cure literature and could have applied those known formulation and measurement techniques to control and characterize the cure state, with a predictable result and reasonable expectation of success. The blend modification therefore fits the known-technique-to-improve-a-similar-product rationale of MPEP § 2143(I)(C), and the cure-formulation/measurement modification fits the known- technique-applied-to-a-known-product rationale of MPEP § 2143(I)(D). The overlapping component Mooney ranges additionally support the ordinary selection of component grades within the taught ranges. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417, 82 USPQ2d 1385, 1396 (2007); MPEP §§ 2141.01(a), 2143(I)(C), 2143(I)(D), and 2144.05(I).
Regarding claim 2, Mikura further teaches that "[t]he cylindrical inner layer is a porous rubber layer or a porous resin layer" and explains that the pores reduce apparent density and weight ([0011], [0034]). Mikura therefore directly teaches the additional porous-layer limitation.
Regarding claim 4, Mikura teaches that the cylindrical inner layer is preferably a foamed layer formed from an inner-layer composition containing microballoons ([0035]). Mikura states that the porous inner layer may be formed by the same methods used for the outer layer, including balloon foaming ([0034]), and expressly explains the balloon-foaming process: "microballoons are allowed to be contained in the rubber composition, and then be expanded by heating to perform foaming" ([0029]). Accordingly, Mikura directly teaches an inner-layer rubber composition containing microballoons and a porous inner layer obtained by heating the composition to foam the microballoons.
Regarding claim 7, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 1 includes NBR having a Mooney viscosity of 60-70M and HNBR having a Mooney viscosity of 54-68M. Component selections expressly encompassed by those ranges include MVNBR- MVHNBR differences from 6 through 16. Those selections fall within claim 7's narrower 6-17 range and directly satisfy the additional limitation.
Regarding claim 8, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 1 expressly teaches 90-50 parts NBR in a 100-part HNBR/NBR rubber component, and Table 2 provides examples containing 50, 60, 70, 80, and 90 parts NBR (Description, "Disclosure of Invention"; Table 2). These NBR proportions fall within claim 8's 10 mass% to 90 mass% range and directly satisfy the additional limitation.
Regarding claim 9, Mikura states that "[t]he cylindrical outer layer is formed from an outer layer rubber composition containing an acrylonitrile-butadiene based rubber as a base rubber" ([0012]). Mikura further states that "[e]xamples of the acrylonitrile-butadiene based rubber include" NBR, XNBR, HNBR, and HXNBR ([0013]). Thus, Mikura directly teaches the carboxyl-modified NBR, HNBR, and carboxyl-modified HNBR alternatives recited in claim 9.
Regarding claim 11, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 1 establishes a 100-part HNBR/NBR rubber component, and Table 2 expressly provides compositions containing 50, 60, and 70 parts NBR. Those values fall within claim 11's 30- 70 mass% range and directly satisfy the additional limitation.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 2, and further in view of Inoue et al. (US 20170182386 A1, "Inoue").
Regarding claim 3, Regarding claim 3, Mikura teaches the porous cylindrical inner layer relied upon for claim 2 but does not expressly teach a density from 0.20
g
/
c
m
3
to 0.60
g
/
c
m
3
.
Inoue teaches the same structural component in a golf-club grip. Inoue explains that a porous cylindrical inner layer reduces grip weight and expressly teaches that the density of the porous inner layer is preferably "0.20
g
/
c
m
3
or more" and "0.50
g
/
c
m
3
or less" ([0080]), Inoue further explains that at least 0.20
g
/
c
m
3
prevents excessive deformation and produces a stronger hitting feeling, while at most 0.50
g
/
c
m
3
increases the weight-reduction effect ([0080]). Inoue also teaches molding a multilayer golf-club grip from inner- and outer-layer rubber compositions ([0082]). Inoue's 0.20-0.50
g
/
c
m
3
range lies entirely within claim 3's 0.20-0.60
g
/
c
m
3
range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to form the already-porous inner layer of the Mikura-based grip at a density within Inoue's expressly taught range. Inoue is added because the base combination does not supply the claimed density limitation. Under KSR and MPEP § 2143(I)(C) the base grip and Inoue's grip contain the same porous cylindrical inner-layer structure, Inoue teaches density control as the known technique for balancing deformation resistance against weight reduction and applying that density selection to the base grip would require only conventional control of foaming and would predictably produce the tradeoff Inoue describes. The range facts independently reinforce the modification: In re Peterson held that even an overlap may support obviousness; here Inoue's entire preferred 0.20-0.50
g
/
c
m
3
interval is contained inside claim 3's 0.20-0.60
g
/
c
m
3
range, presenting a stronger range-overlap fact pattern than a merely touching or slightly overlapping range. Accordingly, selecting a density within the claimed range would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(C); MPEP § 2144.05(I).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 1, and further in view of Oyama et al. (JP 2000325514 A, "Oyama").
Regarding claim 5, Mikura's inner-layer disclosure does not expressly teach that the cylindrical inner layer has an elongation at break of 730% or less.
Oyama is directed to a golf-club grip and expressly teaches a grip base having an elongation at break "400% or more and less than 570%" and defines elongation at break using a JIS rubber tensile test (Summary of the Invention, third aspect; definition of "elongation at break"). Oyama further teaches a multilayer grip base comprising a radially inner layer and a surface layer disposed outside the inner layer (Summary of the Invention, fourth aspect) and teaches that the low-elongation grip material may be a rubber such as NBR and may be foamed for weight reduction (Preferred Embodiments). Oyama explains that controlling the lower elongation provides a firm grip feeling and adequate shaft-installation workability. The disclosed 400% to less than 570% interval is below claim 5's 730% ceiling.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to select the elongation of the Mikura-based rubber inner layer within Oyama's known golf-grip range. Oyama is added because the base combination does not supply the claimed elongation limitation. The fact pattern satisfies MPEP § 2143(I)(C): Mikura supplies the base multilayer grip; Oyama supplies the known golf-grip material technique of controlling the elongation of the grip base, including a radially inner layer, to balance shaft-installation workability and firm grip behavior; and a skilled rubber formulator could apply that known material-property selection to Mikura's rubber inner layer using ordinary formulation methods with the same predictable mechanical effect. In re Peterson also fits the numerical facts because Oyama's 400% to less than 570% range is wholly within the claimed set of values at or below 730%, rather than merely approaching the claimed boundary. Accordingly, the claimed elongation limitation would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(C); MPEP § 2144.05(I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 1, and further in view of Sugimoto (US 20070212137 A1).
Regarding claim 6, the Mikura/Zhuohua/Guerin/Okuda combination does not expressly teach that the cylindrical inner layer has a swollen ratio of 200% or less in a toluene swollen test.
Sugimoto teaches thermosetting elastomer compositions containing NBR and HNBR and expressly states that the listed rubbers may be used singly or "by mixing two or more of them with each other" ([0046]). Sugimoto teaches a volume swell of 85-160% ([0044]) and defines the measurement as toluene swelling at 40
°
C
for 24 hours according to JIS K 6258 ([0045]). Sugimoto additionally teaches NBR or HNBR as preferred rubber A in a two-rubber mixture ([0047]-[0050]) and explains that thermosetting-elastomer properties may be altered by changing the rubber-component, filler, and crosslinking-agent proportions ([0063]). The expressly taught swelling values are below claim 6's 200% ceiling.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to formulate the NBR/HNBR inner layer of the base grip to exhibit a toluene swollen ratio within Sugimoto's known range. Sugimoto is added because the base combination does not supply the claimed solvent-swelling limitation. Although Sugimoto concerns a cleaning blade rather than a golf grip, it is reasonably pertinent under MPEP § 2141.01(a): claim 6 defines the golf-grip layer by a property of a crosslinked NBR/HNBR elastomer, and Sugimoto addresses the same NBR/HNBR material class, the same toluene-swelling measurement, and the effect of crosslinking/formulation on those material properties. Under KSR and MPEP § 2143(I)(D), the base NBR/HNBR layer is a known crosslinked nitrile product ready for material-property adjustment; Sugimoto supplies an established formulation technique yielding 85-160% toluene swell; and applying that technique would predictably control swelling without changing the function of the grip structure. In re Peterson further supports the numerical selection because Sugimoto's disclosed values all satisfy the claimed maximum of 200%. Accordingly, the claimed swelling limitation would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(D); MPEP § 2141.01(a); MPEP § 2144.05(I).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 1, and further in view of Oyama and Sugimoto.
Regarding claim 10, the base combination supplies the claimed NBR/HNBR inner layer and the cure-torque teaching. Guerin Example 2 reports 7.88
d
N
∙
m
, i.e., 0.788
N
∙
m
, at a one- degree MDR condition ([0040], Table 2), which falls within claim 10's narrower 0.5-1.1
N
∙
m
interval, while Okuda independently establishes MH maximum-torque measurement of NBR at 165
°
C
. The base combination does not expressly teach the recited elongation-at-break and toluene-swelling ranges together with that layer.
Oyama teaches a multilayer golf-club grip whose grip base has an elongation at break of 400% to less than 570%, with the grip base capable of including a radially inner layer, as discussed above for claim 5. This lies within claim 10's 300-730% range. Sugimoto teaches NBR/HNBR thermosetting elastomer compositions having toluene volume swell of 85-160%, with the measurement performed in toluene according to JIS K 6258 ([0044]- [0050]); the 100-160% portion lies within claim 10's 100-200% interval.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Oyama's known golf-grip elongation target and Sugimoto's known nitrile-elastomer swelling target to the NBR/HNBR inner layer of the base combination. Oyama and Sugimoto are added because the four-reference base combination does not supply the claimed elongation and solvent-swelling limitations. The facts satisfy KSR's predictable-combination and known-technique rationales: Oyama's elongation selection retains its ordinary function of providing suitable golf-grip mechanical behavior, Sugimoto's crosslinking/formulation selection retains its ordinary function of controlling solvent swell in NBR/HNBR elastomer, and nothing in the references indicates that those material-property targets are mutually exclusive. A skilled rubber compounder could therefore combine the known formulation targets using conventional compounding and crosslinking with a reasonable expectation that each property would perform its established function. The numerical relationships also align with In re Peterson because Oyama's 400% to less than 570% elongation range is wholly inside the claimed 300-730% interval and Sugimoto's 100-160% swelling values are wholly inside the claimed 100-200% interval. Accordingly, the claim as a whole would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(A), (C)-(D); MPEP § 2144.05(I).
Claims 13, 14, 17-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, and further in view of Guerin and Okuda.
Regarding claim 13, Mikura expressly teaches a golf club comprising the claimed shaft- head-grip arrangement. Mikura states: "The golf club comprises a shaft, a head provided on one end of the shaft, and a grip provided on another end of the shaft, wherein the grip is the above-described grip for sporting goods" ([0059]). The referenced grip has a cylindrical portion composed of a cylindrical inner layer and a cylindrical outer layer covering the inner layer ([0011], [0043]).
Mikura further teaches that the porous inner rubber layer is formed from an inner-layer rubber composition containing a base rubber and crosslinking agent and expressly lists both NBR and HNBR as suitable inner-layer base rubbers ([0038]). Mikura also teaches conventional sulfur crosslinking, vulcanization accelerators, activators, reinforcement, and mixing for the inner-layer composition ([0039]-[0041]). Mikura therefore teaches the golf-club structure and the nitrile-rubber inner-layer material family, but it does not expressly teach the claimed NBR/HNBR component Mooney ranges, MVNBR-MVHNBR difference, or 0.5-1.2
N
∙
m
maximum torque measured at 165
°
C
and one-degree amplitude.
Zhuohua teaches an HNBR/NBR blend containing 10-50 parts HNBR and 90-50 parts NBR, total 100 parts, and preferably 10-30 parts HNBR and 70-60 parts NBR (Disclosure of Invention). Zhuohua teaches HNBR having "54-68M of Mooney viscosity" and NBR having "65
±
5.0M" Mooney viscosity, i.e., 60-70M. These component ranges lie within claim 13's NBR 30-80 and HNBR 20-70 ranges. They also encompass component pairings producing MVNBR-MVHNBR values from at least 6 through 16, including
60
-
54
=
6
and
70
-
54
=
16
, which satisfy claim 13's 6-30 requirement. Zhuohua further teaches simple mechanical blending to obtain a uniformly dispersed homogeneous HNBR/NBR composition with stated physical, aging, ozone, low-temperature, cost, and vulcanization-process benefits and provides working 10/90 through 50/50 HNBR/NBR examples.
Guerin teaches one-degree MDR cure characterization of a nitrile-rubber composite at 160
°
C
and reports a maximum torque of 7.88
d
N
∙
m
, or 0.788
N
∙
m
, for Example 2 ([0040], Table 2), within claim 13's 0.5-1.2
N
∙
m
interval. Guerin also relates cure torque to crosslinking density ([0041]) and recognizes blending conventional HNBR with other rubbers ([0031]). Okuda teaches NBR compositions having Mooney viscosities within the claimed region and expressly measures ML and MH maximum torque at 165
°
C
according to JIS K 6300-2 die vulcanization test A. Okuda further evaluates compression set and explains that its cure formulation is selected to resist scorch, cure rapidly, and provide acceptable molded-rubber properties.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to form the inner layer of Mikura's golf-club grip using Zhuohua's NBR/HNBR blend and to apply the established nitrile-rubber cure-formulation and curemeter techniques taught by Guerin and Okuda. Mikura supplies the base golf club and grip, including a vulcanizable inner layer for which NBR and HNBR are expressly identified as suitable base rubbers. Zhuohua supplies a comparable nitrile-rubber product improved by blending those same rubbers and teaches predictable benefits in material performance, manufacturability, and cost; both references use conventional mixing and vulcanization, so applying that blend technique to Mikura's grip would have been within ordinary skill and would have been expected to produce a homogeneous, moldable, vulcanizable inner layer. Zhuohua's NBR range of 60-70 and HNBR range of 54-68 lie within claim 13's component ranges, and expressly encompassed grade selections produce positive MVNBR-MVHNBR differences from 6 through 16, satisfying the claimed 6-30 relationship. The remaining cure-torque limitation concerns that same nitrile-rubber layer. Guerin supplies a known one-degree MDR technique and an in-range maximum torque of 0.788 N·m, and Okuda supplies maximum-torque measurement at the claimed 165 ℃ temperature for NBR together with ordinary cure-system adjustment. A person formulating the claimed grip layer would logically consult such nitrile-rubber cure literature and could have applied those known techniques with predictable results and a reasonable expectation of success. The Zhuohua modification fits MPEP § 2143(I)(C), while the Guerin/Okuda cure modification fits MPEP § 2143(I)(D); the overlapping component Mooney ranges further support selection of grades within the disclosed ranges. See KSR, 550 U.S. at 417; MPEP §§ 2141.01(a), 2143(I)(C), 2143(I)(D), and 2144.05(I).
Regarding claim 14, Mikura states that "[t]he cylindrical inner layer is a porous rubber layer or a porous resin layer" and explains that forming fine pores produces a smaller apparent density and lighter weight ([0034]). This directly teaches the additional porous-layer limitation.
Regarding claim 17, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 13 includes NBR having a Mooney viscosity of 60-70M and HNBR having a Mooney viscosity of 54-68M. Component selections expressly encompassed by those ranges include MVNBR-MVHNBR differences from 6 through 16, which fall within claim 17 's 6-17 range. Those selections directly satisfy claim 17 's narrower dependent-claim relationship.
Regarding claim 18, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 13 expressly teaches 90-50 parts NBR in a 100-part HNBR/NBR rubber component, and Table 2 provides working examples containing 50, 60, 70, 80, and 90 parts NBR (Description, "Disclosure of Invention"; Table 2). These values fall within claim 18's 10-90 mass% range and directly satisfy the additional limitation.
Regarding claim 19, Mikura states that "[t]he cylindrical outer layer is formed from an outer layer rubber composition containing an acrylonitrile-butadiene based rubber as a base rubber" ([0012]) and that "[e]xamples of the acrylonitrile-butadiene based rubber include" NBR, XNBR, HNBR, and HXNBR ([0013]). This directly teaches the carboxyl-modified NBR, HNBR, and carboxyl-modified HNBR alternatives recited in claim 19.
Regarding claim 21, the same Zhuohua NBR/HNBR blend teaching relied upon for claim 13 establishes a 100-part HNBR/NBR rubber component, and Table 2 provides working compositions containing 50, 60, and 70 parts NBR. Those values fall within claim 21's 30- 70 mass% range and directly satisfy the narrower limitation.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 13, and further in view of Oyama.
Regarding claim 15, the claim 13 combination does not expressly teach that the cylindrical inner layer has an elongation at break of 730% or less.
Oyama teaches a golf-club grip whose grip base has an elongation at break of "400% or more and less than 570%" and expressly teaches a multilayer grip base having a radially inner layer and an outer surface layer (Summary of the Invention, third and fourth aspects). Oyama further teaches that the low-elongation material may be NBR and may be foamed for weight reduction (Preferred Embodiments). The disclosed elongation values satisfy claim 15's 730% ceiling.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Oyama's known elongation selection to the rubber inner layer of the claim 13 golf-club grip. Oyama is added because the claim 13 base combination does not supply claim 15's further elongation limitation. Oyama and Mikura address the same golf-grip product class, and Oyama teaches controlling elongation of the grip base, including a radially inner layer, to preserve shaft-installation workability and a firm gripping response. Applying that known material-property selection to the existing rubber inner layer would have been within ordinary formulation skill and would predictably provide the same mechanical tradeoff, satisfying MPEP § 2143(I)(C). The numerical facts also fit In re Peterson because Oyama's 400% to less than 570% interval is entirely within the set of values permitted by claim 15. Accordingly, claim 15 would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(C); MPEP § 2144.05(I).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to claim 13, and further in view of Sugimoto.
Regarding claim 16, Regarding claim 16, the claim 13 combination does not expressly teach that the cylindrical inner layer has a swollen ratio of 200% or less in a toluene swollen test.
Sugimoto teaches a thermosetting elastomer composition having "a volume swell of 85 to 160%" ([0044]) and defines the property using "toluene swelling at 40 °C. for 24 hours in accordance with JIS K 6258" ([0045]). Sugimoto identifies NBR and HNBR among suitable rubber components and states that the listed rubbers may be used singly or as mixtures of two or more ([0046]); for two-rubber mixtures, Sugimoto teaches 50-90 parts of one rubber and 10-50 parts of the other ([0047]) and identifies NBR or HNBR as preferred rubber A ([0050]). The taught toluene volume-swell range is below claim 16's 200% ceiling.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to formulate the NBR/HNBR inner layer of the claim 13 golf-club grip to exhibit a toluene swollen ratio within Sugimoto's known range. Sugimoto is added because the claim 13 base combination does not supply claim 16's added solvent-swelling limitation. Sugimoto is pertinent despite its cleaning-blade end use because the legal question is the crosslinked NBR/HNBR material property expressly claimed, and Sugimoto addresses that same elastomer class, the same toluene-swelling characteristic, and conventional formulation variables used to control it. Under KSR and MPEP § 2143(I)(D), the known NBR/HNBR grip layer is ready for routine material-property adjustment and Sugimoto supplies an established formulation technique yielding swell values below the claimed maximum; applying the technique would predictably control swelling while leaving the golf-club assembly unchanged. In re Peterson further supports the numerical selection because Sugimoto's 85-160% range is entirely below the claimed 200% ceiling. Accordingly, claim 16 would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(D); MPEP § 2141.01(a); MPEP § 2144.05(I).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Mikura in view of Zhuohua, Guerin, and Okuda as applied to independent claim 13, and further in view of Oyama and Sugimoto.
Regarding claim 20, the claim 13 combination supplies the NBR/HNBR golf-club grip and the cure-torque teachings. Guerin's Example 2 maximum torque is 7.88 dN·m, or 0.788 N·m, at a one-degree MDR condition ([0042], Table 2), which lies within claim 20's 0.5-1.1 N·m range, while Okuda teaches measuring NBR maximum torque at 165 ℃ (Examples, "(1) Vulcanization characteristics"). The applied combination does not expressly teach claim 20's elongation and toluene-swelling ranges for that inner layer.
Oyama teaches a golf-grip rubber material having an elongation at break of 400% or more and less than 570%, within claim 20's 300-730% range (Description, third aspect; definition of "elongation at break"). Sugimoto teaches a thermosetting nitrile-elastomer composition having a toluene volume swell of 85-160% ([0044]-[0046]), which overlaps claim 20's 100-200% range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date to apply Oyama's known golf-grip elongation target and Sugimoto's known NBR/HNBR swelling target to the claim 13 golf-club grip while using the cure formulation and characterization established above. Oyama and Sugimoto are additionally applied because the claim 13 base combination does not supply claim 20's elongation and solvent-swelling limitations. The facts satisfy KSR's predictable-combination and known-technique rationales: Oyama's elongation selection would continue to provide the mechanical behavior for which it is taught in a golf grip, Sugimoto's crosslinking/formulation selection would continue to control solvent swelling in NBR/HNBR elastomer, and the references disclose no technical incompatibility between those independent material targets. A skilled rubber compounder could therefore combine the known targets using conventional formulation and crosslinking with a reasonable expectation that each would retain its ordinary function. The numerical facts also closely parallel the range principle in In re Peterson because Oyama's 400% to less than 570% range is wholly inside claim 20's 300-730% interval and Sugimoto's 100-160% values are wholly inside claim 20's 100-200% interval. Accordingly, claim 20 as a whole would have been obvious. See KSR; In re Peterson, 315 F.3d at 1330; MPEP § 2143(I)(A), (C)-(D); MPEP § 2144.05(I).
Response to Applicant's Arguments
Applicant's arguments, see pages 7-12 of the Remarks, filed August 26, 2026, with respect to the rejection(s) of claims 1-11 and 13-21 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zhuohua, Guerin, Okuda, Inoue, Oyama, and Sugimoto as set forth above.
The prior-art-specific arguments directed to Sheridan's asserted Mooney-viscosity and torque teachings, and to the prior use of Applicant's own disclosure to supply the missing NBR/HNBR relationship or alleged routine achievability of the torque range, are not addressed further because the Sheridan-based rejection has been withdrawn. Sheridan is not relied upon in any rejection in this action, and Applicant's specification is not used as evidence of what the prior art taught. The new grounds instead rely on Zhuohua for an actual NBR/HNBR blend and component Mooney-viscosity ranges and on Guerin and Okuda for independent cure-torque evidence.
Applicant's arguments concerning Mikura's disclosure, hindsight, alleged teaching away, the asserted criticality of the torque range, and unexpected collapsing/weather-resistance results remain relevant and are addressed below.
Applicant's arguments filed August 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that Mikura merely lists many possible rubbers and therefore provides no reason, absent hindsight, to select the claimed NBR/HNBR combination. The present rejection does not infer the claimed blend from Mikura's list alone. Mikura supplies the golf- grip structure and establishes NBR and HNBR as suitable inner-layer base rubbers, while Zhuohua expressly teaches blending NBR and HNBR, supplies working blend ratios, supplies overlapping component Mooney ranges, and states concrete reasons for the blend, including homogeneous dispersion, aging and ozone resistance, low-temperature performance, lower cost, and improved vulcanization manufacturability. Thus, the reason for the modification is found in the prior art itself rather than reconstructed from Applicant's disclosure. This fact pattern is consistent with KSR because a known NBR/HNBR blend technique is being applied to a similar known nitrile-rubber product for the same material benefits, and the record supplies the factual findings required by MPEP § 2143(I)(C).
Applicant further relies on Tables 2, 3-1, and 3-2 as evidence that the claimed positive Mooney-viscosity difference unexpectedly improves collapsing resistance and weather resistance. The evidence has been considered, but the comparisons do not isolate MVNBR-MVHNBR as the only changed formulation variable. Compositions e-g, relied upon as negative-difference blends, use NBR-1 having 18% acrylonitrile and Mooney viscosity 33. Compositions h-k, relied upon as positive-difference blends, instead use NBR-2 having 26% acrylonitrile and Mooney viscosity 56 or NBR-3 having 34% acrylonitrile and Mooney viscosity 45. Accordingly, NBR identity and acrylonitrile content change at the same time as the relative Mooney-viscosity relationship. The evidence therefore does not establish that the claimed viscosity difference, rather than the other changed material variables, caused the asserted improvement.
The pure-HNBR and pure-NBR controls likewise do not directly compare the claimed compositions with the closest NBR/HNBR blend art now applied. Zhuohua is itself an NBR/HNBR blend reference having component Mooney-viscosity ranges that overlap the claimed component ranges. MPEP § 716.02(e) requires the asserted advantage to be evaluated against the closest prior art. In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980), illustrates that comparative evidence must permit a meaningful comparison with the pertinent prior-art subject matter; here the pure-rubber controls do not isolate what is asserted to distinguish over the newly applied NBR/HNBR blend.
The asserted results also are not shown to be commensurate with the full breadth of the claims. Independent claims 1 and 13 cover NBR Mooney viscosities from 30 to 80, HNBR Mooney viscosities from 20 to 70, positive differences from 6 to 30, and broad blend proportions, while the specification tests only a few particular commercial grades and ratios. The fact pattern is analogous to In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980), where testing at selected temperatures did not establish unexpected results across a substantially broader claimed temperature scope. Here, results obtained from particular MV33/MV39, MV45/MV39, and MV56/MV39 grade combinations do not by themselves establish the asserted effect across the full 30-80 NBR, 20-70 HNBR, and 6-30 difference ranges. Claims 7 and 17 narrow the difference to 6-17 and claims 11 and 21 narrow NBR proportion to 30-70 mass%; the evidence for those narrower claims has been given corresponding weight. Even there, however, the comparisons remain confounded by changes in NBR grade/acrylonitrile content and do not demonstrate the asserted effect throughout the narrower ranges relative to Zhuohua's close blend disclosure. See MPEP § 716.02(d).
Applicant also argues that the lower boundary of the maximum-torque range is critical. The specification data do not isolate maximum torque as the cause of the asserted performance. Grip Nos. 7 and 8 have maximum torque values of 0.588 and 0.532 N·m, respectively, which fall inside the claimed torque range, yet both receive the lowest collapsing-resistance evaluation. Conversely, Grip No. 5 has a torque of 0.390 N·m below the claimed lower bound but receives the highest collapsing-resistance evaluation while failing weather resistance. Those results show that torque alone does not track the asserted overall performance and therefore do not establish a critical performance transition at 0.5 N·m. The present rejection additionally does not rely on an unsupported assertion that torque is inherently a result-effective variable: Guerin supplies an actual in-range nitrile-rubber maximum torque and expressly links cure torque to crosslink density, while Okuda supplies NBR MH measurement at 165 ℃ and conventional cure-system adjustment.
Applicant's teaching-away contention is also not persuasive under the newly applied art. Applicant's own comparative results are not a prior-art teaching away. The relevant prior art, Zhuohua, affirmatively directs the skilled artisan to blend NBR and HNBR, provides successful blend examples, and identifies performance, cost, and vulcanization-process benefits. A teaching away requires prior art that criticizes, discredits, or otherwise discourages the proposed route; Zhuohua instead encourages that route. See MPEP § 2143.01(V).
When the Graham evidence is considered as a whole, including the objective evidence, the
evidence of record does not outweigh the prima facie case established by the new prior-art
combinations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure as follows:
Sheridan, The Vanderbilt Rubber Handbook, 14th ed. (2010), remains pertinent to general nitrile-rubber compounding and rheological characterization but is not relied upon in the present grounds of rejection.
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ANDREW JAMES ELLIOTT
Examiner
Art Unit 3711
/ANDREW JAMES ELLIOTT/Examiner, Art Unit 3711 /EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711
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