DETAILED ACTION
Specification
Please enter the specification amendment received 2/9/26.
35 USC § 112
For all the claims, the Examiner construes “about” as an acceptable degree of error or variation for the quantity measured given the nature or precision of the measurement” consistent with applicant’s specification, page 10, lines 19-22.
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 and 23 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 now claims (emphasis added):
…the color concentrate comprising a second pigment and a plurality of reflective particles, the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate…
The claim is indefinite because the amount of “reflective particles” is predicated upon itself. Restated, the “color concentrate” comprises “pigment” and “reflective particles”. However, the specific amount of “reflective particles” is then defined based on the amount of “color concentrate” which, as claimed, is the combination of pigment and reflective particles. So, in essence, you have an percentage of the reflective particles predicated upon and defined by its own percentage.
Claims 17-20 and 24 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 17 now claims (emphasis added):
…the color concentrate comprising a second pigment and a plurality of reflective particles, the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate…
The claim is indefinite because the amount of “reflective particles” is predicated upon itself. Restated, the “color concentrate” comprises “pigment” and “reflective particles”. However, the specific amount of “reflective particles” is then defined based on the amount of “color concentrate” which, as claimed, is the combination of pigment and reflective particles. So, in essence, you have an percentage of the reflective particles predicated upon and defined by its own percentage.
Claims 21, 22, and 25 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 21 now claims (emphasis added):
…the color concentrate comprising a plurality of reflective particles, the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the first formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate…
The claim is indefinite because the amount of “reflective particles” is predicated upon itself. Restated, the “color concentrate” comprises “reflective particles”. However, the specific amount of “reflective particles” is then defined based on the amount of “color concentrate” which, as claimed, is the amount of reflective particles. So, in essence, you have an percentage of reflective particles predicated upon and defined by its own percentage. Claim 21 is even more indefinite than claims 1 and 17 because the entire “color concentrate” can be the “reflective particles” (i.e. a pigment is not required as in claims 1 and 17).
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 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-8, 17-22, 24, and 25, are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (herein “Sullivan”; US Pub. No. 2012/0129631 A1) in view of Morgan et al. (herein “Morgan”; US Pub. No. 2004/0176184 A1).
Regarding claim 1, Sullivan discloses a golf ball (Fig. 1), comprising: a subassembly formed from a first formulation comprising a first pigment (par. [0078]; noting this is obvious as “the underlying intermediate cover layer is colored”) having a first color appearance defined by a first set of CIELAB coordinates as* and bs* for a plurality of incident angles (pars. [0077]-[0078]; noting as per par. [0078], “the underlying intermediate cover layer is colored”, see Fig. 2, item 16b, and as per par. [0077], the color may be “orange”, and noting as* under a CIELAB measures color on a red-green axis, so orange would give a positive as*, and bs* under a CIELAB measures color on a yellow-blue axis, so orange would give a positive bs* as “orange” is composed of red and yellow); wherein as* for each incident angle within the plurality differs from any other incident angle with the plurality by less than 2 (noting this is obvious, see citation above, noting the whole subassembly would be orange using just the “pigment”, so the same as* value would be present, regardless of incident angle), and wherein bs* for each incident angle differs from another incident angle within the plurality by less than 2 (noting this is obvious, see citation above, noting the whole subassembly would be orange using a just a “pigment”, so the same bs* value would be present, regardless of incident angle; restated it is obvious from the disclosure that the subassembly can be made without any color-shifting effects); and a layer (Fig. 2, item 16c) disposed on the subassembly formed from a second formulation (pars. [0078], [0080], and [0083], and Fig. 2, item 16c; specifically see par. [0080] stating “As light reflect off the platelet surfaces in different layers, this creates a pearly luster effect. A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added), wherein the second formulation comprises a color concentrate and a base polymer (par. [0078] and [0083], and see par. [0051] for polyurethane base material), the color concentrate comprising a second pigment and a plurality of reflective particles (par. [0083] making obvious a second pigment, and par. [0078] making obvious light reflective particles) wherein the golf ball has a second color appearance defined by a second set of CIELAB coordinates ao* and bo* for the plurality of incident angles in an area of measurement (see citations above; noting some inherent ao* and bo* would be present for an orange intermediate layer covered with an outer cover layer that is a “substantially transparent polymeric matric lightly colored or tinted” as per par. [0083]). It is noted that Sullivan does not specifically disclose that the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate. However, Morgan discloses an almost identical colored golf ball wherein the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation (par. [0053]; noting 0.5 to 6% fluorescent pigment which is part of the “color concentrate” making obvious the claimed range) and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight (par. [0047]; noting 0.1 to 10 parts makes obvious the claimed range). Furthermore, it is noted that Morgan does not specifically state that the total amount of particles is based on the amount of “color concentrate”. However, Morgan does disclose some percentage weight for the particles and explicitly goes on to state that the actual amount of reflective particles can be found through routine “experimentation” based on a pleasing reflective appearance (par. [0047]) and the amount of color pigment can also be found based on desired brightness (par. [0053]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sullivan to make the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight as taught and suggested by Morgan because doing so would be combining prior art elements (a golf ball having an outer cover with some color and reflective particles, and an outer cover with an exact range for color and the amount of reflective particles) according to known methods (using the ranges taught for the amount of color and the reflective particles) to yield predictable results (the continued ability to have a golf ball with an outer cover and some color and reflective particles, the amount of color and reflective particles used in an amount known to work in the art). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact amount of reflective particles and the exact amount of coloring pigment used in the outer cover to create the total “color concentrate” could be found through routine experimentation in order to optimize the “desired [reflective] effect” and “brightness desired” (see Morgan: pars. [0047] and [0053]). It is noted that the combined Sullivan and Morgan do not specifically disclose wherein ao* for at least two incident angles within the plurality are different from each other by at least about 2, or wherein b,* for at least two incident angles within the plurality are different from each other by at least about 2 (emphasis added; noting only one of these is required given the “or” language). However, the Sullivan clearly discloses that the intermediate cover can be colored (par. [0078]; see par. [0077]; specifically stating that it can also be “multi-colored”), the outer cover can be “substantially transparent” and tinted with a color (par. [0083]), and finally that the cover can have reflective particles (par. [0080]). In addition, Morgan actually discloses a very similar golf ball to Sullivan (pars. [0042]-[0047]). This is the exact same structure as disclosed by applicant. That is, applicant’s specification discloses that the intermediate cover/layer can be colored (page 25, lines 25-26), the outer cover/layer can be “substantially transparent” (page 21, lines 8-17) and tinted with a color (page 13, lines 2-9), and finally that the outer cover/layer can have reflective particles (page 13, lines 20-29). This is the structure used to create the color-shifting effect. As such, the Examiner notes that based on the similar structure disclosed in the combined Sullivan and Morgan, although the claimed color difference may be not inherent, it is functionally possible given the similar structure (emphasis added). Restated, even if the claimed difference is not inherent, a POSA would understand that the amount of coloring in the intermediate layer, coloring in the outer layer, and particles used in the outer layer could be varied by routine optimization in order to functionally produce the desired overall color of the golf ball (see Sullivan: pars. [0077]-[0079] and par. [0084] discussing why these parameters would be optimized). In the alternative, the Examiner notes that the exact color difference when viewed at two different incident angles is purely aesthetics and actually does not even denote a difference in structure (i.e. the structure is technically the same, only the viewing angle is different). That is, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Here, Sullivan specifically discloses that the use of particles in top cover/layer can change the appearance based on the viewing (i.e. incident) angle (par. [0080]). As such, the only limitation not specifically met by the prior art Sullivan is that the actual difference in ao* and bo* of “at least about 2”. However, this value of the difference in color does not provide any mechanical function to the golf ball itself and technically does not require a different structure to obtain the difference (i.e. the structure is the same, only the viewing angle is different). As such, the actual difference in color is purely aesthetics.
Regarding claim 2, it is noted that claim 2 does not impart any actual structure to the product of claim 1 (emphasis added). Claim 2 simply claims the angle of incident used for the measurement. Consistent with the above rejection of claim 1, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles within the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 3, it is noted that claim 3 does not impart any actual structure to the product of claim 1 (emphasis added). Claim 3 simply claims that the difference in color for both ao* and bo* must be “at least about 2” (emphasis added). Consistent with the above rejection of claim 1, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles in the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 4, it is noted that claim 4 does not impart any actual structure to the product of claim 1 (emphasis added). Claim 4 simply claims that the difference in color for both ao* and bo* must be “at least about 3” (emphasis added). Consistent with the above rejection of claim 1, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles in the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 5, it is noted that claim 5 does not impart any actual structure to the product of claim 1 (emphasis added). Claim 5 simply claims that the difference in color for both ao* and bo* must be “at least about 5” (emphasis added). Consistent with the above rejection of claim 1, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles in the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 6, the combined Sullivan and Morgan disclose that reflective particulates comprises interference particulates, nanostructures, microstructures, or combinations thereof (Sullivan: par. [0080]; noting particles that “partially reflect and partially transmit” light makes obvious “interference particulates” or Morgan: par. [0047]; noting the disclosed range reads on “microstructures” as per claim 7 below).
Regarding claims 7, 24, and 25, the combined Sullivan and Morgan disclose that microstructures having an average diameter of about 50 µm to about 150 µm (Morgan: par. [0047]; listing a particle size of 0.1 to 1.0 mm, or 100 to 1000 µm; the disclosed range making obvious the claimed range).
Regarding claim 8, the combined Sullivan and Morgan disclose that the base polymer comprises a material selected from the group consisting of polyurethanes, polyureas, and hybrids, copolymers, and blends thereof (Sullivan: par. [0051]; noting “polyurethane”).
Regarding claim 17, Sullivan discloses a golf ball (Fig. 1), comprising: a subassembly formed from a first formulation comprising a first pigment (par. [0078]; noting this is obvious as “the underlying intermediate cover layer is colored”) having a first color appearance defined by a first set of CIELAB coordinates as* and bs* (pars. [0077]-[0078]; noting as per par. [0078], “the underlying intermediate cover layer is colored”, see Fig. 2, item 16b, and as per par. [0077], the color may be “orange”, and noting as* under a CIELAB measures color on a red-green axis, so orange would give a positive as*, and bs* under a CIELAB measures color on a yellow-blue axis, so orange would give a positive bs* as “orange” is composed of red and yellow); and a layer (Fig. 2, item 16c) disposed on the subassembly formed from a second formulation (pars. [0078], [0080], and [0083], and Fig. 2, item 16c; specifically see par. [0080] stating “As light reflect off the platelet surfaces in different layers, this creates a pearly luster effect. A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added), wherein the second formulation comprises a color concentrate and a base polymer (par. [0078] and [0083], and see par. [0051] for polyurethane base material), the color concentrate comprising a second pigment and a plurality of reflective particles (par. [0083] making obvious a second pigment, and par. [0078] making obvious light reflective particles), and wherein the first pigment is different from the second pigment (par. [0078]; noting this obvious as the first pigment can be orange, and par. [0083]; noting the second pigment can be yellow), wherein the golf ball has a second color appearance characterized by CIELAB coordinates ao1* and bo1* at a first area of measurement and first angle of incidence and a third color appearance in the area of measurement and at a second angle of incidence characterized by CIELAB coordinates ao2* and bo2*, and wherein the first, second, and third color appearances differ from each other (par. [0080]; noting this would appear to be obvious based on the fact that Sullivan: par. [0080] states that “A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added). It is noted that Sullivan does not specifically disclose the plurality of particles comprising microstructures having an average diameter greater than about 50 µm, wherein the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate. However, Morgan discloses an almost identical colored golf ball wherein the plurality of particles comprising microstructures having an average diameter greater than about 50 µm (par. [0047]; listing a particle size of 0.1 to 1.0 mm, or 100 to 1000 µm; the disclosed range making obvious the claimed range), the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation (par. [0053]; noting 0.5 to 6% fluorescent pigment which is a part of the “color concentrate”) and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight (par. [0047]; noting 0.1 to 10 parts makes obvious the claimed). Furthermore, it is noted that Morgan does not specifically state that the total amount of particles is based on the amount of “color concentrate”. However, Morgan does disclose some percentage weight for the particles and explicitly goes on to state that the actual amount of reflective particles can be found through routine “experimentation” based on a pleasing reflective appearance (par. [0047]) and the amount of color pigment can also be found based on desired brightness (par. [0053]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sullivan to make the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight as taught and suggested by Morgan because doing so would be combining prior art elements (a golf ball having an outer cover with some color and reflective particles, and an outer cover with an exact range for color and the amount of reflective particles and particle size) according to known methods (using the ranges taught for the amount of color and the reflective particles) to yield predictable results (the continued ability to have a golf ball with an outer cover and some color and reflective particles, the amount of color and reflective particles and the particle size used in an amount known to work in the art). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact amount of reflective particles and the exact amount of coloring pigment used in the outer cover to create the total “color concentrate” could be found through routine experimentation in order to optimize the “desired [reflective] effect” and “brightness desired” (see Morgan: pars. [0047] and [0053]). In the alternative, regarding the color-shift effect based on different angle of incidence, the Examiner takes a multi-prong approach in the rejection of this limitation. That is, the Sullivan clearly discloses that the intermediate cover can be colored (par. [0078]; see par. [0077]; specifically stating that it can also be “multi-colored”), the outer cover can be “substantially transparent” and tinted with a color (par. [0083]), and finally that the cover can have reflective particles (par. [0080]). In addition, Morgan actually discloses a very similar golf ball to Sullivan (pars. [0042]-[0047]). This is the exact same structure as disclosed by applicant. That is, applicant’s specification discloses that the intermediate cover/layer can be colored (page 25, lines 25-26), the outer cover/layer can be “substantially transparent” (page 21, lines 8-17) and tinted with a color (page 13, lines 2-9), and finally that the outer cover/layer can have reflective particles (page 13, lines 20-29). This is the structure used to create the color-shifting effect. As such, the Examiner notes that based on the similar structure disclosed in the combined Sullivan and Morgan, although the color difference may be not inherent, it is functionally possible given the similar structure (emphasis added). Restated, even if the claimed color difference is not inherent, a POSA would understand that the amount of coloring in the intermediate layer, coloring in the outer layer, and particles used in the outer layer could be varied by routine optimization in order to functionally produce the desired overall color of the golf ball (see Sullivan: pars. [0077]-[0079] and par. [0084] discussing why these parameters would be optimized). In the alternative, the Examiner notes that the exact color difference when viewed at two different incident angles is purely aesthetics and actually does not even denote a difference in structure (i.e. the structure is technically the same, only the viewing angle is different). That is, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Here, Sullivan specifically discloses that the use of particles in top cover/layer can change the appearance based on the viewing (i.e. incident) angle (par. [0080]). As such, and color shifting effect would be purely aesthetic and would not produce a mechanical function for the golf ball.
Regarding claims 18 and 19, it is noted that claims 18 and 19 do not impart any actual structure to the product of claim 17 (emphasis added). Claims 18 and 19 simply claim the angle of incident used for the measurement and the resulting difference in the color measurement. Consistent with the above rejection of claim 17, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles within the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 20, it is noted that claim 20 does not impart any actual structure to the product of claim 17 (emphasis added). Claim 20 simply claims that a fourth color appearance is present at a third angle of incidence; the fourth color different than the second and third. Consistent with the above rejection of claim 17, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles in the outer cover, or merely a difference in color measurement that is purely aesthetic.
Regarding claim 21, Sullivan discloses a golf ball (Fig. 1), comprising: a subassembly formed from a first formulation comprising a first pigment (par. [0078]; noting this is obvious as “the underlying intermediate cover layer is colored”) having a first color appearance defined by a first set of CIELAB coordinates ac* and bc* (pars. [0077]-[0078]; noting as per par. [0078], “the underlying intermediate cover layer is colored”, see Fig. 2, item 16b, and as per par. [0077], the color may be “orange”, and noting as* under a CIELAB measures color on a red-green axis, so orange would give a positive as*, and bs* under a CIELAB measures color on a yellow-blue axis, so orange would give a positive bs* as “orange” is composed of red and yellow); and a layer (Fig. 2, item 16c) disposed on the subassembly formed from a second formulation (pars. [0078], [0080], and [0083], and Fig. 2, item 16c; specifically see par. [0080] stating “As light reflect off the platelet surfaces in different layers, this creates a pearly luster effect. A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added), wherein the second formulation comprises a color concentrate and a base polymer (par. [0078] and [0083], and see par. [0051] for polyurethane base material), the color concentrate comprising a plurality of reflective particles (par. [0083] making obvious a second pigment, and par. [0078] making obvious light reflective particles), wherein the golf ball has a plurality of color appearances at a plurality of incident angles ranging from -15 degrees to 110 degrees (par. [0080]; noting this would appear to be obvious based on the fact that Sullivan: par. [0080] states that “A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added), each defined by a second set of CIELAB coordinates aoѲ* and boѲ* for a single incident angle Ѳ and within a first area of measurement and a third set of CIELAB coordinates ao1* and bo1* outside of the first area of measurement (par. [0080]; again noting this would appear to be obvious based on the fact that Sullivan: par. [0080] states that “A person looking at the composition will see different reflections and scattering of light depending upon their view angle”; emphasis added; see also specifically par. [0077]; noting the intermediate cover layer may be “multi-colored”). It is noted that Sullivan does not specifically disclose that the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight of the color concentrate. However, Morgan discloses an almost identical colored golf ball wherein the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation (par. [0053]; noting 0.5 to 6% fluorescent pigment which is a part of the “color concentrate”) and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight (par. [0047]; noting 0.1 to 10 parts makes obvious the claimed). Furthermore, it is noted that Morgan does not specifically state that the total amount of particles is based on the amount of “color concentrate”. However, Morgan does disclose some percentage weight for the particles and explicitly goes on to state that the actual amount of reflective particles can be found through routine “experimentation” based on a pleasing reflective appearance (par. [0047]) and the amount of color pigment can also be found based on desired brightness (par. [0053]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sullivan to make the color concentrate is present in an amount of about 1 to about 7 percent by weight of the total weight of the second formulation and the plurality of reflective particulates are present in an amount of about 2 to about 6 percent by weight of the total weight as taught and suggested by Morgan because doing so would be combining prior art elements (a golf ball having an outer cover with some color and reflective particles, and an outer cover with an exact range for color and the amount of reflective particles) according to known methods (using the ranges taught for the amount of color and the reflective particles) to yield predictable results (the continued ability to have a golf ball with an outer cover and some color and reflective particles, the amount of color and reflective particles used in an amount known to work in the art). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact amount of reflective particles and the exact amount of coloring pigment used in the outer cover to create the total “color concentrate” could be found through routine experimentation in order to optimize the “desired [reflective] effect” and “brightness desired” (see Morgan: pars. [0047] and [0053]). It is also noted that the combined Sullivan and Morgan do not specifically disclose that aoѲ* differs for each incident angle Ѳ by 2 or more using the using the equation √ ((a0Ѳ1*—a0Ѳ2*)”), with aoѲ1* representing ao* at a first incident angle and aoѲ2* representing ao* at a second incident angle, wherein boѲ* differs for each incident angle by 2 or more using the using the equation √ ((b0Ѳ1*—b0Ѳ2*)”), with boѲ1* representing bo* at a first incident angle and boѲ2* representing bo* at a second incident angle, wherein ao1* differs from any aoѲ* by at least 5, and wherein bo1* differs from any boѲ* by at least 5. However, the Examiner takes a multi-prong approach in the rejection of this limitation. First, Sullivan clearly discloses that the intermediate cover can be colored (par. [0078]; see par. [0077]; specifically stating that it can also be “multi-colored”), the outer cover can be “substantially transparent” and tinted with a color (par. [0083]), and finally that the cover can have reflective particles (par. [0080]). In addition, Morgan actually discloses a very similar golf ball to Sullivan (pars. [0042]-[0047]). This is the exact same structure as disclosed by applicant. That is, applicant’s specification discloses that the intermediate cover/layer can be colored (page 25, lines 25-26), the outer cover/layer can be “substantially transparent” (page 21, lines 8-17) and tinted with a color (page 13, lines 2-9), and finally that the outer cover/layer can have reflective particles (page 13, lines 20-29). This is the structure used to create the color-shifting effect. As such, the Examiner notes that based on the similar structure disclosed in the combined Sullivan and Morgan, although the difference may be not inherent, it is functionally possible given the similar structure (emphasis added). Restated, even if the claimed difference is not inherent, a POSA would understand that the amount of coloring in the intermediate layer, coloring in the outer layer, and particles used in the outer layer could be varied by routine optimization in order to functionally produce the desired overall color of the golf ball (see Sullivan: pars. [0077]-[0079] and par. [0084] discussing why these parameters would be optimized). In the alternative, the Examiner notes that the exact color difference when viewed at different incident angles is purely aesthetics. That is, it has been held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Here, Sullivan specifically discloses that the use of particles in top cover/layer can change the appearance based on the viewing (i.e. incident) angle (par. [0080]). As such, the only limitation not specifically met by the prior art Sullivan is that the actual difference in angular color shift of 2 for aoѲ* and boѲ* and 5 for a/bo1 and a/boѲ*. However, these values of the difference in angular color shift do not provide any mechanical function to the golf all itself and the exact structure has not changed (only the viewing angle). As such, the actual differences in angular color shift are purely aesthetics.
Regarding claim 22, it is noted that claim 22 does not impart any actual structure to the product of claim 21 (emphasis added). Claim 22 simply claims the angle of incident used for the measurement. Consistent with the above rejection of claim 21, the limitation is at least functionally possible given the combined Sullivan and Morgan structure, obvious given the optimization of colors and particles in the outer cover, or merely a difference in color measurement that is purely aesthetic.
Claims 9 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (herein “Sullivan”; US Pub. No. 2012/0129631 A1) in view of Morgan et al. (herein “Morgan”; US Pub. No. 2004/0176184 A1) and in further view of Hayashi et al. (herein “Hayashi”; US Pub. No. 2021/0162268 A1).
Regarding claim 9, it is noted that the combined Sullivan and Morgan do not specifically discloses that the base polymer comprises an ionomer material. However, Sullivan discloses that the inner cover can be made from ionomer (par. [0043]) and making the outer cover from polyurethane (par. [0051]). In addition, Hayashi discloses the ability to use a transparent or translucent cover (par. [0077]) wherein ionomer may be used instead of polyurethane (par. [0036]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sullivan and Morgan to use an ionomer resin material for the cover as taught by Hayashi because doing so would be a simple substitution of one element (an ionomer) for another (a polyurethane) to obtain predictable results (the continued ability to use a transparent or translucent cover material, the cover material being ionomer).
Regarding claim 23, the combined Sullivan and Morgan disclose that the layer is an outer cover of the golf ball (Sullivan: pars. [0078] and [0083]). It is noted that the combined Sullivan and Morgan do not specifically disclose that the base polymer comprises an ionomer material. However, Sullivan discloses that the inner cover can be made from ionomer (par. [0043]) and making the outer cover from polyurethane (par. [0051]). In addition, Hayashi discloses the ability to use a transparent or translucent cover (par. [0077]) wherein ionomer may be used instead of polyurethane (par. [0036]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Sullivan and Morgan to use an ionomer resin material for the cover as taught by Hayashi because doing so would be a simple substitution of one element (an ionomer) for another (a polyurethane) to obtain predictable results (the continued ability to use a transparent or translucent cover material, the cover material being ionomer).
Response to Arguments
Applicant's arguments filed 2/9/26 have been fully considered but they are not generally persuasive.
112 Rejections
The previous 112(b) rejections have been overcome by way of amendment. However, a new 112(b) rejection is also given based on how applicant claims the percentages of ingredients; specifically, the amount of reflective particles.
103 Rejection
The Examiner now brings Morgan in to cure the deficiencies of Sullivan with regards to the amended claims. Applicant argues that Sullivan teaches that the outer cover should be “substantially clear”, but then acknowledges that Sullivan also teaches that the outer cover can have pigment and reflective particles (see Remarks, page 10). Respectfully submitted, this in no way amounts to a “teaching away from adding pigments or reflective particles” because Sullivan specifically teaches the addition of pigment and reflective particles as specifically cited to by applicant.
Interestingly enough, applicant goes on to argue that Sullivan would never add amounts of “pigments or reflective particles…to meaningfully scatter light at an angle” (emphasis added). The Examiner has two responses to this argument. First, applicant is now specifically claiming in claims 1, 17, and 21 that the amount of “color concentrate” (which includes the pigment and reflective particles) can be as low as 1% of the total weight of the cover. The Examiner hardly sees this as a “meaningful” amount as argued by applicant. In fact, an argument can be made that although Sullivan is silent on specific ranges of ingredients, the overall effect in the Sullivan disclosure is the same as applicant’s claimed invention. Second, Sullivan specifically states in par. [0080] that “As light reflect off the platelet surfaces in different layers, this creates a pearly luster effect. A person looking at the composition will see different reflections and scattering of light depending upon their view angle”. As such, Sullivan itself specifically rebuts applicant’s argument that the amounts are not “meaningful” because the amount of particles at least scatters light to create “different reflections”.
Again, on page 11, applicant argues that that Sullivan uses a “relatively small” amount of pigment and filler additions. Once again, the Examiner notes that current claims 1, 17, and 21 allow for the color concentrate to be as low as 1%. The Examiner construes that amount as “relatively small” and thus completely consistent with the disclosure in Sullivan.
On page 11, applicant goes on to argue the Examiner’s use of In re Seid and aesthetic choice. To be absolutely clear, the difference in color created by the viewing angle, the limitation for which In re Seid is used to reject, is not based on a change in structure. It is based on a change of viewing angle. Restated, the structure of the golf ball does not change to obtain these differences in color, the viewing angle merely changes and the structure of the golf ball is static. Respectfully submitted, this is the epitome of pure aesthetics because the structure does not change in any way to meet the claimed limitation. In addition, the Examiner has never taken the position that actual ingredients and structures are not given patentably weight (see page 11, applicant arguing the structure creates the effect, but the structure is made obvious by the combined Sullivan and Morgan). The Examiner attempted to relate this position during the previous interview. In addition, if applicant’s position is that the actual structure itself creates the color shifting effect (see Remarks, page 11, specifically arguing this point on the record), and the combined Sullivan and Morgan make obvious the structure, then the color shift effect is an obvious result based on the similar structure in the prior art (a position the Examiner takes in the rejection 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 MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached on (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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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
3/9/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711