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 § 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) 1-6, 8-13, 15, 17, 18, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. U.S. Patent Application No. 2021/0002459, in view of Nagakura et al., U.S. Patent Application No. 2021/0299522. As to Claim 1, Hayashi teaches a golf ball comprising a spherical constituent member (core) formed from a rubber composition, paragraph 0141. The rubber composition may contain a rubber component (base rubber) containing a natural rubber, a co-crosslinking agent, a crosslinking initiator, and an organic sulfur compound, paragraphs 0016, 0026, 098, and 0183, noting hemispheres. The surface hardness of the spherical constituent member may be 75 Shore C or more, paragraph 0144. A hardness difference between surface and center may be 16 Shore C or more, see Table 1, ball # 8. Hayashi does not disclose the constituent member hardness at a 75% point of the radius. Nagakura teaches a similar golf ball comprising a spherical core formed from a similar rubber composition, paragraphs 0015 and 0091. Nagakura teaches that core surface hardness may be 80 Shore C, hardness at a point 75% of the radius may be 72.8 Shore C, and hardness at 50% of core radius may be 71.4 Shore C (70 or more and 80 or less). for a hardness difference between surface hardness and a hardness at a point at 75% of the radius may be 3 or more and 10 or less, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi with a hardness at the core surface, at 75% of core radius, and at 50% of core radius, as taught by Nagakura, to provide a hardness difference within the claimed range, to provide Hayashi with a known substitute core hardness profile. As to Claim 2, Nagakura teaches that a hardness difference between the surface hardness and a hardness at a 50% point of the radius may be 8 or more in Shore C, see Table 2, ball # 11. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi, as modified, with a 50% point of the radius hardness as taught by Nagakura, together with the disclosed surface hardness, to provide a difference within the claimed range, to provide Hayashi, as modified, with a known substitute core hardness profile. As to Claim 3, Hayashi teaches that the golf ball may have a diameter ranging from 40 to 45 mm and a compression deformation amount of 2.5 or more and 4.0 mm or less when a load, as claimed is applied, paragraph 0165. As to Claim 4, Hayashi teaches that the rubber component may include a blend of natural rubber and synthetic rubber with synthetic rubber being present in an amount of at least 60 mass %, paragraphs 0026 and 0027, suggesting that natural rubber may be present in an amount ranging from 10 to 50 mass % (up to 40 mass %). It would have been obvious to one of ordinary skill in the art before the effective filing date to compose the rubber composition with natural rubber content in an amount ranging from 10 to 50 mass %, as suggested. As to Claim 5, Hayashi teaches that the rubber composition may contain an organic sulfur compound of thiophenols, paragraph 0099. As to Claim 6, Hayashi teaches that the rubber composition may further contain an organic sulfur compound of thiazoles, paragraph 0099. As to Claim 8, Hayashi teaches that two or more organic sulfur compounds may be used in combination, paragraph 0106, and that the compounds to be used include thiophenols and thiazoles, paragraph 0099, suggesting that compounds having different characteristics may be blended, establishing that the ratio of the compounds is a result effective variable. Hayashi, as modified discloses a combination of thiophenols and thiazoles but Hayashi, as modified, does not disclose a range for the mass ratio. It would have been obvious to one of ordinary skill in the art before the effective filing date to blend the thiophenols and thiazoles in a mass ratio ranging from 0.1 to 2.0 since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. As to Claim 9, Hayashi teaches that surface hardness may range from 75 to 90 Shore C, see Table 1, ball # 8. As to Claim 10, Nagakura teaches that hardness at 75% of core radius may range from 70 to 85 Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi, as modified, with a 75% radius hardness within the claimed range, as taught by Nagakura, to provide Hayashi, as modified with a known substitute core hardness profile. As to Claim 11, Hayashi teaches a hardness difference between core surface and center ranging from 16 to 30, see Table 1, ball #8. As to Claim 12, Hayashi teaches core center hardness ranging from 55 to 75 Shore C, see Table 1, ball # 8. As to Claim 13, Nagakura teaches a hardness difference between the core surface and a 50% radius point ranges from 8 to 20 Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi, as modified, with a hardness difference between the surface and 50% radius point, as claimed and as taught by Nagakura, to provide Hayashi, as modified, with a known substitute core hardness profile. As to Claim 15, Nagakura teaches an example ball having a hardness difference of 1.4 Shore C between 75% and 50% radius points and surface to center hardness difference of 22 Shore C. Nagakura teaches that surface to center hardness difference may be as great as 30 Shore C, paragraph 0112, suggesting a greater span of difference between radius points, from which it follows that the difference between a 75% radius point and a 50% radius point may range from 3 to 15 Shore C. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi, as modified, with a hardness difference between a 75% radius point and a 50% radius point within the claimed range, as taught and suggested by Nagakura, to provide Hayashi, as modified, with a known core hardness profile. As to Claim 17, Hayashi teaches that the rubber component may further contain a synthetic rubber, paragraph 0026, noting polybutadiene rubber. As to Claim 18, Hayashi teaches that the synthetic rubber may have Mooney viscosity (ML 1+4 (100 degrees C)) ranging from 40 to 70, paragraph 0030. As to Claim 21, Hayashi, as modified by Nagakura, is applied as in Claim 1. Further, Nagakura teaches that hardness and a 50% point of the radius may be 65 or more and 80 or less, and that hardness at a 75% point of the radius may be 72.8 Shore C, in a ball having surface to center hardness difference of 22 Shore C, see Table 2, ball # 11. Nagakura teaches that surface to center hardness difference may be as great as 30 Shore C, paragraph 0112, suggesting a greater hardness at a 75% radius point. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Hayashi, as modified, with hardness at 50% and 75% radius points as taught and suggested by Nagakura, to provide Hayashi, as modified, with a known substitute core hardness profile.
Claim(s) 7, 16, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi, as modified by Nagakura, as applied to claim 1 above, and further in view of Llort et al., U.S. Patent No. 4,971,329. Hayashi, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 7, Hayashi, as modified, does not disclose that the golf ball may be a one-piece ball composed of the spherical member. Llort teaches a spherical component formed from a rubber composition containing natural rubber, which may serve as a one-piece golf ball, Col. 3, ln. 34-44 and see Table 1. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide a one-piece golf ball composed of the spherical constituent member, as taught by Llort, to provide Hayashi, as modified, with one-piece ball comparable with a ball formed of a core and cover, to yield the predictable result of a simpler playable ball. As to Claim 16, Llort teaches that the rubber composition may comprise natural rubber as discussed above. Hayashi, as modified, does not specify that the selected natural rubber may have a Mooney viscosity (ML 1+4 (100 degrees C)) ranging from 30 to 80. It would have been obvious to one of ordinary skill in the art before the effective filing date to select a natural rubber having a Mooney viscosity within the claimed range, 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 Claim 19, Hayashi, as modified by Nagakura and Llort, is applied as in Claims 1, 5, 6, and 7, with the same obviousness rationales being found applicable. As to Claim 20, Hayashi is applied as in Claim 4, with the same obviousness rationale being found applicable. Hayashi, together with cited case law is applied as in Claim 8.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 7, 10, 15, and 17 of co-pending Application No. 18/439,160 in view of Nagakura et al., U.S. Patent Application No. 2021/0299522. Claims 1 and 2 of the co-pending application disclose the limitations of Claim 1, except for providing that the constituent may be spherical and except for disclosing the claimed hardness ranges for the constituent. Nagakura teaches a spherical core, paragraph 0134, a hardness difference between surface hardness and 75% radius point hardness of 3 or more and 10 or less in Shore C, and a hardness difference between surface hardness and center hardness of 16 or more in Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. Regarding Claim 2, Nagakura teaches a hardness difference between surface hardness and 50% radius point hardness of 8 or more in Shore C, see Table ball #2. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. Claim 11 of the co-pending application discloses the limitations of Claim 3. Claim 7 or the co-pending application discloses the limitations of Claim 4. Claim 4 of the co-pending application discloses the limitations of Claims 5 and 6. Claim 10 of the co-pending application discloses the limitations of Claim 7. Claim 5 of the co-pending application discloses the limitations of Claim 8. Regarding Claim 9, Nagakura teaches that surface hardness may range from 75 to 90 Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. With regard to Claim 10, Nagakura teaches that hardness at 75% of core radius may range from 70 to 85 Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. Regarding Claims 11 and 12, Nagakura teaches a surface to center hardness difference ranging from 16 to 30 Shore C and center hardness ranging from 55 to 75 Shore C, see Table 2, ball #11. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. With regard to Claims 13and 15, Nagakura teaches the claimed hardness profile features as set forth above. It would have been obvious to one of ordinary skill in the art before he effective filing date to provide the hardness profile features as claimed to provide a known substitute hardness profile. Claim 6 of the co-pending application discloses the limitations of Claim 16. Claim 7 of the co-pending application discloses the limitations of Claim 17. With regard to Claim 18, Nagakura teaches that a synthetic rubber component may have Mooney viscosity ranging from 40 to 70, paragraph 0021. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the claimed viscosity range for the synthetic rubber to yield the predictable result of facilitating the manufacturing process. Claims 4, 10, 12, and 17 of the co-pending application disclose the limitations of Claim 19. Claims 15 and 17 of the co-pending application disclose the limitations of Claim 20.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted 15 December 2025 have been considered but are moot in view of the new ground of rejection.
In response to applicant’s argument that example golf balls 1-6 presented in the specification are closer to the inventive balls which exhibit advantageous compression, deformation, resilience, and/or spin rate, the examiner maintains the position that Hayashi, in view of Nagakura, teaches a golf ball close to the inventive ball. The examiner notes that example balls in the specification have similar formulas except that the embodiments of the present invention (7-11) include generally greater amounts of crosslinking initiator, which tends produce a harder surface and greater difference between the surface and the center. The examiner notes that Nagakura teaches that the core formulation may include up to 5.0 parts of crosslinking initiator indicating that it would have been obvious to try a formula that would lead to the inventive ball.
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 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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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 5 January 2026