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 Objections
Claims 16 and 17 are objected to because of the following informalities: In line 1 of each of the claims, the compound, “adamantine” lacks a proper antecedent basis. The examiner suggests that adamantane has been misspelled Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jordan et al., U.S. Patent Application No. 2004/0029651, in view of Royal Society of Chemistry, RSC Advances, F. Zou et al. (hereinafter Zou). As to Claims 1 and 4, Jordan teaches a golf ball comprising a core (12) and a cover layer (14) surrounding the core, the cover layer being an outermost layer of the golf ball, paragraph 0021. The cover layer may comprise a shape memory polymer, paragraphs 0041 and 0047. Jordan teaches that the shape memory material may include shape memory polymers, but Jordan does not specify the specific material. Zou teaches that shape memory polymers may comprise polyurethane, section 1, second paragraph. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jordan with a polyurethane component for the shape memory polymer, as taught by Zou, to provide Jordan with a known substitute material. The examiner finds that the cover layer of prior art possess the structural features of the claimed cover layer and is capable of performing in the same manner, namely by comprising a memorized permanent shape and being configured to change shapes and return to the permanent shape upon application of an external stimulus. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112 . As to Claim 5-7, Zou teaches that suitable shape memory polymers may be an adamantane-containing polyurethane synthesized by a chemical composition comprising, 1,3-adamantanediol, hexamethylene diisocyanate, and 1,4 butanediol, each constituent at about 0 – 10 mmol, see Table 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a shape memory polymer synthesized as claimed and as taught by Zou, to provide Jordan, as modified, with a known substitute shape memory material.
Claim(s) 10 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jordan, in view of Sullivan et al., U.S. Patent Application No. 2019/0118042, and Zou. As to Claims 10 and 14, Jordan is applied as in Claims 1 and 4. Jordan is silent as to the core comprising a shape memory polymer and a high acid ionomer. Sullivan teaches a golf ball comprising a core (32, 34, 36) and a cover layer (38), paragraph 0019. The core may comprise a composite material including a matrix and a filament, paragraphs 0066 and 0068. The matrix may comprise a shape memory polymer and an ionomer material, paragraph 00161. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Jordan with a shape memory material and an ionomer material comprising the core, as taught by Sullivan, to provide Jordan with a known substitute core material. Jordan, as modified, teaches that the shape memory material may include shape memory polymers, but Jordan, as modified, does not specify the specific material. Zou is applied as in Claims 1 and 4 with the same obviousness rationale being found applicable. Jordan, as modified, discloses the claimed invention except for providing that the selected ionomer material may have high acid content. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a high acid ionomer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960). As to Claims 15-17, Zou is applied as in Claims 5-7 with the same obviousness rationale being found applicable.
Response to Arguments
Applicant’s arguments submitted 8 January 2026 have been considered but are moot in view of the new ground of rejection.
Conclusion
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.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 26 January 2026