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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 June 2026 has been entered.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8 May 2026 has been entered.
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) 1-3, 5, 6, 8-10, 12, 13, 17, 18, 21, 22, 23, and 25 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 Kimura et al., U.S. Patent Application No. 2014/0100059. 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. 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. 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. Kimura teaches a similar golf ball comprising a spherical core formed from a similar rubber composition, paragraphs 0024 and 0025. Kimura teaches that core surface hardness may be 84 Shore C, and interpolating from hardness values presented, hardness at a point 75% of the radius may be approximately 77.7 Shore C, and hardness at 50% of core radius may be approximately 69 Shore C, 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 (6.3), see Table 3, ball #5. The hardness difference between the 75% point and the 50% point may range from 4 to 15 (8.7). 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 at the core surface, at 75% of core radius, and at 50% of core radius, as taught by Kimura, to provide a hardness difference within the claimed range, to provide Hayashi with a known substitute core hardness profile. Kimura teaches that the core hardness profile is critical, paragraph 0050, establishing that the hardness values at interim points in the core radius is a result effective variable. Kimura teaches that hardness at the 50% point may be approximately 69 Shore C, see Table 3, ball # 5, being slightly outside the claimed range or 70 to 80. 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% hardness value of 69 Shore C, as taught by Kimura, to provide Hayashi, as modified, with a suitable hardness value at the 50% point to yield the predictable result of closely matching the advantageous core hardness profile of Kimura. Hayashi, as modified, discloses the claimed invention except for setting the 50% point hardness value specifically within the claimed range. It would have been obvious to one of ordinary skill in the art before the effective filing date to set the 50% point hardness value within the claimed range, 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 2, Kimura 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 (15), see Table 3, ball # 5, as interpolated. 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 surface to 50% point of the radius hardness difference as taught by Kimura, 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 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, Kimura teaches that hardness at 75% of core radius may range from 70 to 85 Shore C (approximately 77.7), see Table 3, ball #5. 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 Kimura, to provide Hayashi, as modified with a known substitute core hardness profile. 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, Kimura teaches a hardness difference between the core surface and a 50% radius point ranges from 8 to 20 Shore C (15), see Table 3, ball #5. 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 Kimura, to provide Hayashi, as modified, with a known substitute core hardness profile. As to Claim 17, Hayashi teaches that the rubber component may further contain a synthetic rubber, paragraph 0026, noting polybutadiene rubber. Hayashi does not disclose the use of two synthetic rubbers having a difference in Mooney viscosity of 5 or more and 20 or less. Kimura teaches that a core formulation may combine BR01 (Mooney viscosity 45) with BR730 (Mooney viscosity 55), providing a difference of 5 or more and 20 or less (10), see Table 1, ball #2. 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 selection of synthetic rubber materials as taught by Kimura, to provide Hayashi, as modified, with a known substitute pair of synthetic rubber materials having a difference in Mooney viscosity within the claimed range. 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. Kimura teaches that two synthetic rubbers selected may be BR01 and BR730, as noted above providing each having a Mooney viscosity ranging from 40 to 70. The same obviousness rationale being found appliable. As to Claim 21, Hayashi, as modified by Kimura, is applied as in Claim 1. Further, Kimura teaches that hardness and a 50% point of the radius may be 65 or more and 80 or less (69), and that hardness at a 75% point of the radius may be 77.7 Shore C, in a ball having surface to center hardness difference of 25 Shore C, and a hardness difference between the 75% radius point and the 50% radius point may range from 4 to 15 (8.7) see Table 3, ball # 5, as interpolated from presented hardness point values. 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 values and particular radius percentage points, as taught by Kimura, to provide Hayashi, as modified, with a known substitute hardness profile. As to Claim 22, Hayashi teaches that the crosslinking agent may be methacrylic acid, paragraph 0035. As to Claim 23, Hayashi teaches that the organic sulfur compound may be selected from among a variety of materials, paragraphs 0099 – 0106. Suitable materials may include sulfenamides, including benzothiazole, paragraph 0104. Hayashi, as modified, does not specify 2-mercaptobenzothiazole (1,3 benzothiazole-2-thiol) . It would have been obvious to one of ordinary skill in the art before the effective filing date to select 2-mercaptobenzothiazole as the organic sulfur material 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 25, Hayashi, as modified by Kimura, together with cited case law is applied as in Claims 22, 23, and 24, with the same obviousness rationales being found applicable.
Claim(s) 7, 16, 19, 20, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi, as modified by Kimura, 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 Kimura 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, together with cited case law is applied as in Claim 8. As to Claim 24, Hayashi, as modified by Kimura, and Llort, is applied as in Claims 17, 22, and 23, with the same obviousness rationales being found applicable.
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 1-3, 5-10, 12, 13, and 16-22 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 Kimura et al., U.S. Patent Application No. 14/055,900. Claims 1, 2, and 7 of the co-pending application disclose the limitations of Claims 1 and 21, except for providing that the constituent may be spherical and except for disclosing the claimed hardness ranges for the constituent. Kimura teaches a spherical core, paragraph 0138, 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 3, ball #5, and as discussed 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. Regarding Claim 2, Kimura teaches a hardness difference between surface hardness and 50% radius point hardness of 8 or more in Shore C, see Table ball #5. 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 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, Kimura teaches that surface hardness may range from 75 to 90 Shore C, see Table 3, ball #5. 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, Kimura teaches that hardness at 75% of core radius may range from 70 to 85 Shore C, see Table 3, ball #5. 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 12, Kimura teaches center hardness ranging from 55 to 75 Shore C, see Table 3, ball #5. 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 13, Kimura 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, except for providing two rubber materials with a difference in Moony viscosity, as claimed. Kimura teaches that a core formulation may combine BR01 (Mooney viscosity 45) with BR730 (Mooney viscosity 55), providing a difference of 5 or more and 20 or less (10), see Table 1, ball #2. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide the disclosed rubber material, as a known substitute. With regard to Claim 18, Kimura teaches that a synthetic rubber component may have Mooney viscosities 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 rubbers 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. Claim 1 of the co-pending application discloses the limitations of Claim 22.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments submitted 22 June 2026 have been considered but are moot on account 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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 27 July 2026
Prosecution Insights