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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 4, 8, 9, 12, 14 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al (2020/0376347). Claim 1, Hayashi discloses a golf ball comprising a constituent member, wherein at least a part of the constituent member is formed of a cured product of a rubber composition comprising (a) a base rubber containing a natural rubber and/or synthetic rubber, (b) a co-crosslinking agent containing methacrylic acid and/or a metal salt thereof, (c) a crosslinking initiator [0035, 0043, 0050]. The rubber composition further contains an organic sulfur compound [0117]. The rubber composition contains the organic sulfur compound in an amount ranging from 0.1 part by mass to 5 parts by mass with respect to 100 parts by mass of (a) the base rubber [0126]. The amount of natural rubber us from 10 mass % to 40 mass % of the base rubber (synthetic is 60 to 90%) [0044]. Claim 4, the organic sulfur compound contains a compound of thiophenols and/or a metal salt thereof and a compound of thiazoles and/or a metal salt thereof [0118]. Claim 8, the synthetic rubber is a high-cis polybutadiene rubber [0043]. Claim 9, the co-crosslinking agent consists of methacrylic acid and/or the metal salt thereof [0050]. Claim 12, Hayashi discloses a one-piece golf ball having a golf ball body, wherein the golf ball body is formed from a rubber composition comprising (a) a base rubber containing a natural rubber, (b) a co-crosslinking agent containing methacrylic acid and/or a metal salt thereof, (c) a crosslinking initiator, and an organic sulfur compound [0035, 0043, 0050, 0133]. The rubber composition contains the organic sulfur compound in an amount ranging from 0.1 part by mass to 5 parts by mass with respect to 100 parts by mass of (a) the base rubber [0126]. The amount of natural rubber us from 10 mass % to 40 mass % of the base rubber (synthetic is 60 to 90%) [0044]. Claim 14, the organic sulfur compound contains a compound of thiophenols and/or a metal salt thereof and a compound of thiazoles and/or a metal salt thereof [0118]. Claim 18, the one-piece golf ball has a diameter ranging from 40 mm to 45 mm and a compression deformation amount ranging from 2.0 mm to 6.0 mm when applying a load from an initial load of 98 N to a final load of 1275 N to the one-piece golf ball [0140-0141].
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.
Claim(s) 5, 15, 21, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (2020/0376347). Claims 5 and 15, Hayashi discloses the composition includes two or more organic sulfur compounds such as thiophenols and thiazoles in the amount from 0.1 part by mass to 5 parts by mass with respect to 100 parts by mass of (a) the base rubber [0126]. Hayashi does not disclose the amount of the compounds separately. However, varying the amount is within the capabilities of one skilled in the arts. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Claims 21 and 23, Hayashi discloses (b) a co-crosslinking agent containing methacrylic acid and/or a metal salt thereof and two or more organic sulfur compounds such as thiophenols and thiazoles in the amount from 0.1 part by mass to 5 parts by mass with respect to 100 parts by mass of (a) the base rubber [0126]. Hayashi does not disclose the amount of the compounds separately. However, varying the amount is within the capabilities of one skilled in the arts. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 6 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (2020/0376347) in view of Cadorniga et al. (6,884,181). Hayashi discloses the composition includes a natural rubber but does not provide the Mooney viscosity. Cadorniga teaches a rubber composition comprising a synthetic rubber and a natural rubber such as CV60, which has a Mooney viscosity of 60 (table 1). One of ordinary skill in the art would have modified the rubber for optimum results.
Claim(s) 19-20, 22, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (2020/0376347) in view of Matsuyama et al. (2013/0005508). Hayashi discloses the composition includes two or more organic sulfur compounds such as thiophenols and thiazoles, but does not disclose thiophenols substituted with a halogen group or 2-mercaptobenzothiazole. Matsuyama teaches thiophenols substituted with a halogen group or 2-mercaptobenzothiazole [0107, 0118]. One of ordinary skill in the art would substitute the organic sulfur compounds as an obvious design choice.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive. Applicant argues that while Hayashi broadly discloses the possible option of employing the combination of a synthetic rubber to 10 to 80 mass % of natural rubber the possibility is not preferred. The argument is not persuasive because Hayashi makes clear the rubber composition includes a natural and/or synthetic rubber [0043]. The synthetic rubber (polybutadiene) is present in the amount of 60 to 90 mass % or based on the base rubber [0044]. The remainder is inherently natural rubber.
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 RAEANN GORDEN whose telephone number is (571)272-4409. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Eugene Kim can be reached at 571-272-4463. 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.
/RAEANN GORDEN/Primary Examiner, Art Unit 3711
January 5, 2026