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 .
Response to Amendment
Applicant’s amendment to the claims filed July 29, 2026 has been entered. Claims 1-7 are currently amended. Claims 8 and 9 are new. Claims 1-9 are pending and under examination.
Claim Objections
Claim 1 is objected to because of the following informalities: in claim 1, “ZDA nanoparticle agglomerate to become secondary particle” should be - - ZDA nanoparticles agglomerate to become secondary particles - -. Appropriate correction is required.
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 1-3 and 5-9 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. Claim 1 recites the core includes grafted polymers in which ZDA nanoparticles agglomerate to become secondary particles and further the secondary particles are connected mutually such that a network structure is formed. The recitation contains subject matter which was not described in the specification in such a way as to demonstrate possession of the claimed invention. Paragraph [0009] of the published application appears to disclose that this agglomeration and network formation occurs when the rubber is a butadiene rubber. However, the claim is not limited to butadiene rubber and it is not clear from the specification that such a agglomeration and network structure is formed with any or all rubbers. Further, see the section 112b rejection below regarding the unclear scope of “BR” in claim 1. This rejection may be overcome by pointing to the location in the specification where support for limitation may be found. Claim 4 is not rejected because the base rubber in claim 4 is polybutadiene (i.e. butadiene rubber).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “BR-ZDA”. The limiting effect of the recitation is unclear. While “ZDA” is understood to be referring back to zinc diacrylate, it is not clear to what “BR” is necessarily referring. The recitation “BR” lacks antecedent basis in the claims. It is not clear whether it is referring back to the “base rubber”, which also could be abbreviated as “BR” or whether it is referencing the butadiene rubber set forth in paragraph [0009] of the published application or whether something else is intended. Appropriate correction and clarification are required. Claims 2-9 are rejected as dependent claims.
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.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over McDermott et al. (US 2023/0398413; filed June 14, 2022).
Regarding claims 1-3, McDermott et al. teach a core for a golf ball which is a product molded under heat (Abstract; paragraphs [0007], [0009], [0011] and [0042]) from a rubber composition comprising: (a) a base rubber, (b) a co-crosslinking agent which is an α,β-unsaturated carboxylic acid or a metal salt thereof or both, (c) an organic peroxide, and (d) water (Abstract; paragraphs [0007], [0008], [0010], [0011], [0012], [0038], [0039], and [0043]-[0047], zinc diacrylate, for example, reads on the claimed co-crosslinking agent), wherein component (d) is included in an amount that overlaps the claimed amount of from 0.1 to 10 parts by weight per 100 parts by weight of component (a) in claim 1 and 0.1 to 5 parts in claim 3 (paragraphs [0011], [0012], [0043]-[0047], Examples 1, 5, 6; claim 14) and components (b) and (c) are included in relative amounts such that E, defined by the formula E = molar amount of component (b)/molar amount of active oxygens in component (c), has a value that overlaps the claimed range of 93 or more, as set forth in claim 1, or 100 or more, as set forth in claim 2 (paragraphs [0010] and [0041] disclosing amounts of peroxide as low as 0.05 and 0.1 phr; paragraphs [0038] and [0039] disclosing the co-crosslinker can be used in amounts up to 50 phr. For example, values as low as about 80x or 100x or more of the amount of the disclosed co-crosslinker, such as zinc acrylate, relative to the amount of disclosed peroxide on a mass basis would include values within the claimed molar range. At the top of the range disclosed by McDermott there can be a 1000x the amount of co-crosslinker relative to the peroxide on a mass basis). Overlapping ranges are prima facie obvious.
As to the limitation in claim 1 that the core includes grafted polymers of BR-ZDA in which ZDA nanoparticles agglomerate to become secondary particles and further the secondary particles are connected mutually such that a network structure is formed, paragraph [0009] of the published application sets forth that this agglomeration and formation occurs at least when the claimed composition is molded into a core for a golf ball. Since McDermott renders the claimed composition prima facie obvious and also teaches molding the composition under heat to form a core for a golf ball, it follows that the same claimed effects and physical properties will be present in the golf ball core taught and suggested by McDermott. The same compositions/materials processed in the same manner will have the same properties.
As to claims 5 and 6, McDermott et al. teach the sulfur or organosulfur as claimed (paragraph [0048])
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over McDermott et al. (US 2023/0398413), as applied to claims 1-3 and 5-6 above, and further in view of either one of Shindo et al. (US 2020/0001143) or Shindo (US 2021/0354005).
As to claim 4, McDermott et al. teach and suggest the rubber composition as set forth above. McDermott et al. teach the base rubber is polybutadiene (paragraphs [0007], [0009]), but do not explicitly disclose the synthesis is with a rare earth metal. However, each of Shindo et al. ‘143 (paragraph [0033]) and Shindo ‘005 (paragraph [0033]) disclose that polybutadiene suitable for the same/similar rubber application can be synthesized with a rare earth metal.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McDermott et al. and either one of the secondary references and to have synthesized the polybutadiene of McDermott et al. with a rare earth metal catalyst, as suggested by either one of the secondary references, for the purpose, as suggested by the references, of synthesizing a rubber that is suitable for use in a desired application (e.g. golf ball). It is noted that the rejection accepts the implied premise that there is a structural difference/physical property difference that results in the rubber based upon the selected catalyst and that claim 4 further limits claim 1. As such, the recitation provides a limit on the applicable polybutadienes. If that is not the case, it is noted that the secondary references would not be necessary since McDermott discloses polybutadiene and the structure and properties would be understood to be the same.
As to claim 7, McDermott et al. teach and suggest the rubber composition as set forth above. McDermott et al. do not explicitly teach a hindered phenol or benzimidazole as claimed. However, each of Shindo et al. ‘143 (paragraphs [0011]-[0020] and [0046]-[0054]) and Shindo ‘005 (paragraph [0080]) disclose that a hindered phenol or benzimidazole as claimed may be utilized.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McDermott et al. and either one of the secondary references and to have utilized a hindered phenol or benzimidazole as claimed in the rubber of McDermott et al., as suggested by either one of the secondary references, for the purpose, as suggested by the references, of providing additional desired properties to the rubber (e.g. antioxidant) and the final golf ball (e.g. spin rate, durability)
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over McDermott et al. (US 2023/0398413), as applied to claims 1-3 and 5-6 above, and further in view of either one of Shindo et al. (US 2021/0379450) or Shindo (US 2021/0355300).
As to claims 8 and 9, McDermott et al. teach and suggest the rubber composition as set forth above. McDermott et al. do not explicitly disclose the organosulfur compound is an alkylphenol disulfide polymer such as amylphenol disulfide. However, each of Shindo et al. ‘450 (paragraphs [0017]-[0019] and [0118]) and Shindo ‘300 (Abstract; paragraphs [0001], [0008], [0048] and [0049]) disclose that organosulfur compound is an alkylphenol disulfide polymer such as amylphenol disulfide
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McDermott et al. and either one of the secondary references and to have utilized an alkylphenol disulfide polymer such as amylphenol disulfide as the organosulfur compound in the core of McDermott et al., as suggested by either one of the secondary references, for the purpose, as
by the references, of effectively synthesizing a rubber core and golf ball having desired final product properties and that utilizes an art recognized suitable organosulfur compound.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shindo et al. (US 2020/0001143).
Regarding claims 1-3, Shindo et al. teach a core for a golf ball which is a product molded under heat from a rubber composition (Abstract; paragraphs [0002], [0008], [0010], [0055], [0073] comprising: (a) a base rubber, (b) a co-crosslinking agent which is an α,β-unsaturated carboxylic acid or a metal salt thereof or both, (c) an organic peroxide, and (d) water (Abstract; paragraphs [0022]-[0027] and [0036], zinc acrylate, for example, reads on the claimed co-crosslinking agent), wherein component (d) is included in an amount that overlaps the claimed amount of from 0.1 to 10 parts by weight per 100 parts by weight of component (a) in claim 1 and 0.1 to 5 parts in claim 3 (paragraph [0045]) and components (b) and (c) are included in relative amounts such that E, defined by the formula E = molar amount of component (b)/molar amount of active oxygens in component (c), has a value that overlaps the claimed range of 93 or more, as set forth in claim 1, or 100 or more, as set forth in claim 2 (paragraphs [0037] – up to 60 pbw co-crosslinking agent, such as zinc acrylate; paragraph [0040] – as low as 0.1 part by weight peroxide; using the disclosed values for each of the materials as set forth in paragraphs [0037] and [0040] yields relative amounts/ratio that overlaps the claimed range). Overlapping ranges are prima facie obvious.
As to claim 4, Shindo et al. teach disclose the synthesis of polybutadiene with a rare earth metal (paragraphs [0028] and [0043]).
As to claims 5 and 6, Shindo et al. disclose a sulfur or organosulfur as claimed (paragraphs [0050]-[0052]).
As to claim 7, Shindo et al. teach a hindered phenol or benzimidazole as claimed (paragraphs [0011]-[0020] and [0046]-[0054]).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Shindo et al. (US 2020/0001143), as applied to claims 1-7 above, and further in view of either one of Shindo et al. (US 2021/0379450) or Shindo (US 2021/0355300).
As to claims 8 and 9, Shindo et al. ‘143 et al. teach and suggest the rubber composition as set forth above. Shindo et al. ‘143 do not explicitly disclose the organosulfur compound is an alkylphenol disulfide polymer such as amylphenol disulfide. However, each of Shindo et al.‘450 (paragraphs [0017]-[0019] and [0118]) and Shindo ‘300 (Abstract; paragraphs [0001], [0008], [0048] and [0049]) disclose that organosulfur compound is an alkylphenol disulfide polymer such as amylphenol disulfide
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Shindo et al. ‘143 and either one of the secondary references and to have utilized an alkylphenol disulfide polymer such as amylphenol disulfide as the organosulfur compound in the core of Shindo et al. ‘143, as suggested by either one of the secondary references, for the purpose, as
by the references, of effectively synthesizing a rubber core and golf ball having desired final product properties and that utilizes an art recognized suitable organosulfur compound.
Response to Arguments
Applicant’s arguments filed July 29, 2026 have been fully considered, but they are not persuasive.
Applicant argues that each of McDermott and Shindo ‘143 do not disclose the now claimed grafted polymers of BR-ZDA in which ZDA nanoparticles agglomerate to become secondary particles that are connected mutually such that a network structure is formed. This argument is not persuasive.
As to the argued limitation, paragraph [0009] of the published application sets forth that this agglomeration and network formation occurs when the claimed composition is molded into a core for a golf ball. Since each of McDermott and Shindo ‘143 render the claimed composition prima facie obvious and also teach molding the composition under heat to form a core for a golf ball, it follows that the same claimed effects and physical properties will be present in the golf ball cores taught and suggested by each of McDermott and Shindo ‘143. When the same compositions are processed in the same manner, they will have the same properties. Therefore, while applicant may have recognized another property that is present in the molded core, this is not a sufficient basis for patentability. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues that the references are silent in teaching that the durability of golf balls to impact can be improved even when foreign matter has mixed into the core. This argument is not persuasive. As set forth above, the applied prior art renders the claimed core prima facie obvious. It follows that the same claimed effects and physical properties associated with the core are found (e.g. at least in the overlapping portion of the range E) in the core of the prior art.
To the extent applicant may be intending to assert new or unexpected results, it is noted that it is not clear in the specification (e.g. Tables 1 and 3; Figures 1 and 2) that such an assertion is commensurate in scope with the claims. For example, the durability index for comparative example 1 is given as 100. This comparative example has an E value of 41.1. Inventive example 5 has a durability index of 120 with an E value of 169.2. With the widely varying E values, compressive deformation, spin rates, and durability of the inventive and comparative examples, it is not clear that an E value of 93 or more is commensurate in scope with what could be reasonably understood to be new or unexpected results. Further, the highest disclosed E value is limited to 570.3 and it is not clear whether any new or unexpected results continue to exist at higher values. It is further noted that a significant portion of the corresponding E values disclosed by each of McDermott and Shindo ‘143 overlap the claimed E range of 93 or more. This further supports the prima case of obviousness.
Absent sufficient evidence or persuasive arguments, it is submitted that the claims will need to be further amended to overcome the section 112a, 112b and 103 rejections set forth above.
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 Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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