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 .
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.
Claims 1 and 7-10 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. Limitations of Claims 1 and 13, providing that the absolute difference between both first and second aerodynamic coefficients of first and second dimple patterns may be limited to no more than 0.005 is not adequately supported by the description given in the specification. Likewise, the limitations providing that the absolute difference between both first and second aerodynamic force angles of first and second dimple patterns may differ by no more than 0.5 degrees is not adequately described in the specification. The inventive golf ball includes hemispheres having rotationally symmetric dimple patterns which are not identical. A person of ordinary skill in the art would not apprehend the configuration of an appropriate dimple pattern to achieve the claimed ranges for differences in first and second aerodynamic coefficients and first and second aerodynamic force angles.
Claims 1 and 7-10 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The examiner finds that while the level of skill in the art is relatively well advanced, the area of employing different dimple patterns on first and second hemispheres of a ball, while maintaining a limited difference in aerodynamic characteristics is limited. The number of dimensional parameters that may be varied in providing differing patterns is great. The examiner finds that extensive experimentation would be required to determine pairs of dimple patterns to satisfy the claimed range limitations.
Response to Arguments
Applicant's arguments filed 5 August 2025 have been fully considered but they are not persuasive. In response to applicant’s arguments asserting that the drawings, particularly Figure 22 and the written specification establish possession of the invention and that a person of ordinary skill in the art would be able to make and use the invention, the examiner maintains the position that the specification provides an example of a ball having first and second hemispheres populated by a specified catalog of dimples, wherein each first hemisphere dimple has a circular plan shape and a catenary profile shape and each second hemisphere dimple has a circular plan shape and a spherical profile shape. Claim 1 associates these characteristics with a majority of dimples in each hemisphere, leaving the claim scope open to a substantial number of dimples not having the noted characteristics. Further, the disclosure of a particular example providing a specific catalog of dimples which allow the ball to exhibit the parameters associated with the aerodynamic coefficient magnitude and aerodynamic force angle does not establish that the applicant was aware of the extent to which the dimple population may be altered to maintain conformity with the claimed ranges of aerodynamic parameters.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th 1330, 1337, 2021 USPQ2d 893 (Fed. Cir. 2021) ( "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted).").[AltContent: rect]
A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014) (Claims directed to a functionally defined genus of antibodies were not supported by a disclosure that "only describe[d] one type of structurally similar antibodies" that "are not representative of the full variety or scope of the genus."). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615; Noelle v. Lederman, 355 F.3d 1343, 1350, 69 USPQ2d 1508, 1514 (Fed. Cir. 2004) (Fed. Cir. 2004), MPEP 2163, II, 3, (a) (ii).
The examiner maintains the position that the claim scope is not fully enabled by the written description and drawings. The level of skill in the relevant art is well advanced; however, the present invention appears to cover a substantial number of varied dimple arrangements satisfying the structural limitations of the claims. A determination as to whether a particular golf ball design is within the claim scope would require selecting a dimple design and pattern for each hemisphere and testing each hemisphere by preparing a ball having the design over the whole ball in order to calculate the claimed parameters and performing the necessary calculations. The degree of required experimentation would be extensive. A person of ordinary skill in the art would not be able to make and use the invention to its full extent.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 1 April 2026