DETAILED ACTION
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 § 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 1-9, and 17-25, 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) and in further view of Hogge et al. (herein “Hogge”; US Pat. No. 8,979,678 B2).
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 “red”, and noting as* under a CIELAB measures color on a red-green axis, so red would give a positive as* value and a bs* value close to zero under a CIELAB); 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 red 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 red 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), having a second color appearance defined by a second set of CIELAB coordinates ac* and bc* for the plurality of incident angles (par. [0083]; noting the outer cover, item 16c of Fig. 2 may be “lightly colored or tinted”, so a second color is inherent, but noting “blue” is specifically listed in par. [0083]); 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 third color appearance defined by a third set of CIELAB coordinates ao* and bo* for the plurality of incident angles in an area of measurement (pars. [0078]; noting it is clear from the disclosure that the entire ball can have a color appearance when it states “More particularly, in one version, the outer cover layer is substantially transparent and the underlying intermediate cover layer is colored so that the color is visible to a person looking at the exterior of the ball”; the exterior color inherently having CIELAB values), wherein, at any one incident angle, the second color appearance is different from both the first color appearance and the third color appearance (pars. [0077], [0078], and [0083]; noting this would appear obvious and/or “obvious to try” using the finite list of colors, the intermediate layer can be colored “red” as disclosed in par. [0077], the outer cover layer can be transparent “blue” as disclosed in par. [0083], and thus the overall color appears of the ball can be a combination of red and blue which is ”violet”), and wherein the layer disposed on the subassembly is an outermost cover layer of the golf ball (pars. [0078], [0083], and Fig. 2, item 16c). It is noted that Sullivan does not specifically disclose that the color concentrate is present in the second formulation 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 is present in the color concentrate 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 the second formulation 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 the color concentration in an amount of about 2 to about 6 percent by weight of the total weight of the second formulation (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” as opposed to the total of the second formulation. 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 of the second formulation 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, Sullivan clearly discloses that the intermediate cover can be colored (pars. [0077]-[0078]), 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” or the different values of CIELAB based on different viewing angles. 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 shifting effect 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 claimed difference in value/angle actually does not even denote a difference in structure (i.e. the structure is technically the same, only the viewing angle and measured value 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. Finally, assuming arguendo that Sullivan does not make obvious that the second color appearance is different from both the first color appearance and the third color appearance, Morgan also appears to make obvious the ability to make the inner cover and the outer cover from two different colors (par. [0044] and [0045]). In addition, Hogge specifically discloses a golf ball very similar to Sullivan and Morgan (see abstract) wherein the second color appearance is different from both the first color appearance and the third color appearance (col. 5, lines 22-40; noting the intermediate layer can be “red”, the cover can be “blue”, and the overall golf ball can be “violet”). 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 make the second color appearance is different from both the first color appearance and the third color appearance as taught by Hogge because doing so would be combining prior art elements (a golf ball that can have a color intermediate layer and a colored translucent outer cover and a golf ball that has a red intermediate layer and a translucent blue outer cover layer) according to known methods (using the specific colors in the former golf ball) to yield predictable results (the continued ability to use a colored intermediate layer, and a colored translucent cover, the intermediate layer and cover layer being different colors to provide a cascading effect of a third color to a user viewing the golf ball).
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, Morgan, and Hogge 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, Morgan, and Hogge 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 the combined Sullivan, Morgan, and Hogge 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, Morgan, and Hogge 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, Morgan, and Hogge 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, Morgan, and Hogge disclose that the plurality of reflective particulates comprise 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, Morgan, and Hogge 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 9, the combined Sullivan, Morgan, and Hogge disclose that the base polymer comprises an ionomer material (Hogge: col. 6, lines 39-41; specifically listing “ionomer resin”).
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 “red”, and noting as* under a CIELAB measures color on a red-green axis, so red would give a positive as* value and a bs* value close to zero under a CIELAB); 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), having a second color appearance defined by a second set of CIELAB coordinates ac* and bc* for the plurality of incident angles (par. [0083]; noting the outer cover, item 16c of Fig. 2 may be “lightly colored or tinted”, so a second color is inherent, but noting “blue” is specifically listed in par. [0083]); 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 red, and par. [0083]; noting the second pigment can be blue), wherein the golf ball has a third color appearance characterized by CIELAB coordinates ao1* and bo1* at a first area of measurement and first angle of incidence (pars. [0078]; noting it is clear from the disclosure that the entire ball can have a color appearance when it states “More particularly, in one version, the outer cover layer is substantially transparent and the underlying intermediate cover layer is colored so that the color is visible to a person looking at the exterior of the ball”; the exterior color inherently having CIELAB values, noting if a red intermediate layer was used, and a blue cover layer, the resulting golf ball would having a violet appearance). 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), wherein the color concentrate is present in the second formulation 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 the color concentration in an amount of about 2 to about 6 percent by weight of the total weight of the second formulation (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” as opposed to the total of the second formulation. 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 reflective particles have an average diameter greater than 50 µm and to use 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 second formulation 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]). It is noted that the combined Sullivan and Morgan do not specifically disclose the golf ball with a fourth color appearance in the area of measurement and at a second angle of incidence characterized by CIELAB coordinates ao2* and bo2*, and wherein, at any one incident angle, the second color appearance is different from the first color appearance, the third color appearance, and the fourth color appearance. However, Hogge specifically discloses a golf ball very similar to Sullivan and Morgan (abstract) wherein the second color appearance is different from both the first color appearance and the third color appearance (col. 5, lines 22-40; noting the intermediate layer can be “red”, the cover can be “blue”, and the overall golf ball can be “violet”). Regarding the fourth color appearance being different from the second, 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 to create the fourth color via the disclosed “color shifting effect”. 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, Morgan, and Hogge, 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). The Examiner also notes that the fourth color appearance, created by the reflective particles, would inherently have CIELAB coordinates ao2* and bo2* values that would be different in value in the color used at the intermediate layer. 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. 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 make the second color appearance is different from both the first, third, and fourth color appearance as taught and suggested by Hogge because doing so would be combining prior art elements (a golf ball that can have a color intermediate layer and a colored translucent outer cover and a golf ball that has a red intermediate layer and a translucent blue outer cover layer with reflective particles) according to known methods (using the specific colors in the former golf ball) to yield predictable results (the continued ability to use a colored intermediate layer, and a colored translucent cover, the intermediate layer and cover layer being different colors to provide a cascading effect of a third color to a user viewing the golf ball). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the fourth color appearance could be different than the second color appearance based on the inclusion of reflective particles in the outer golf ball layer.
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, Morgan, and Hogge 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, Morgan, and Hogge 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 “red”, and noting as* under a CIELAB measures color on a red-green axis, so red would give a positive as* value and a bs* value close to zero under a CIELAB); 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), having a second color appearance defined by a second set of CIELAB coordinates ac* and bc* for the plurality of incident angles (par. [0083]; noting the outer cover, item 16c of Fig. 2 may be “lightly colored or tinted”, so a second color is inherent, but noting “blue” is specifically listed in par. [0083]); 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”); wherein, at any one incident angle, the second color appearance is different from the first color appearance and the second color appearance is different from each of the plurality of color appearance of the golf ball (pars. [0077], [0078], and [0083]; noting this would appear obvious and/or “obvious to try” based on the finite list of colors, the intermediate layer can be colored “red” as disclosed in par. [0077], the outer cover layer can be transparent “blue” as disclosed in par. [0083], and thus the overall color appears of the ball can be a combination of red and blue which is ”violet” and noting in conjunction with par. [0080], the reflections and scattered light would be variations of violet when viewed at a different viewing angle). 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 the color concentrate 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 the second formulation 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 the color concentration in an amount of about 2 to about 6 percent by weight of the total weight of the second formulation (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” as opposed to the total of the second formulation 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 of the second formulation 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 or the difference a and b values in the CIELAB as created by the different viewing angles. 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). Second, 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. Finally, assuming arguendo that Sullivan does not make obvious that the second color appearance is different from the first color appearance and the second color appearance is different from each of the plurality of color appearances, Morgan also appears to make obvious the ability to make the inner cover and the outer cover from two different colors (par. [0044] and [0045]). In addition, Hogge specifically discloses a golf ball very similar to Sullivan and Morgan (see abstract) wherein the second color appearance is different from the overall ball color appearance (col. 5, lines 22-40; noting the intermediate layer can be “red”, the cover can be “blue”, and the overall golf ball can be “violet”). The outer cover in Hogge can also contain reflective particles (col. 4, lines 61-62). The use of reflective particles in the outer cover, would cause the outer ball color to change based on the viewing angle and create the disclosed “color shifting effect” (see Sullivan: par. [0080]). As change this color would be variations of “violet”, the overall color of the ball, this appearance would be different than the second color, i.e. red. 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 make the second color appearance different from the first color appearance and the second color appearance different from each of the plurality of color appearances as taught and suggested by Hogge because doing so would be combining prior art elements (a golf ball that can have a color intermediate layer and a colored translucent outer cover with reflective particles and a golf ball that has a red intermediate layer and a translucent blue outer cover layer with reflective particles) according to known methods (using the specific colors in the former golf ball) to yield predictable results (the continued ability to use a colored intermediate layer, and a colored translucent cover with reflective particles, the intermediate layer and cover layer being different colors to provide a cascading effect of a third color to a user viewing the golf ball, and the reflective particles creating an additional color when viewed at a different angle).
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, Morgan, and Hogge 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 23, the combined Sullivan, Morgan, and Hogge disclose that the layer is an outer cover of the golf ball (Sullivan: Fig. 2, item 16c and pars. [0078] and [0083]) and the base polymer comprises an ionomer material (Hogge: col. 6, lines 39-41).
Claim 26 is 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) in view of Hogge et al. (herein “Hogge”; US Pat. No. 8,979,678 B2) and in further view of Manami et al. (herein “Manami”; US Pub. No. 2007/0167254 A1).
Regarding claim 26, the combined Sullivan, Morgan, and Hogge disclose that the color concentrate further comprises colorant-coated nanostructures, colorant-infused nanostructures, colorant-coated microspheres (Sullivan: par. [0080]; noting “natural or synthetic mica platelets coated with iron oxide or titanium dioxide” make obvious this limitation), colorant-infused microspheres, colorant-plated pigment flakes, or a combination thereof (noting these are not needed as “or” is used). In the alternative, Sullivan clearly disclose the use of reflective “platelets” (par. [0080]). In addition, Morgan clearly discloses the use of reflective particles that includes the use of a flake (par. [0013]). Finally, Manami specifically discloses the use of a flake that is coated to titanium dioxide to create a what can be considered a “colorant-plated pigment flake” (pars. [0032]-[0034]; noting a glass flake coated with titanium dioxide). 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, Morgan, and Hogge to use colorant-plated pigment flakes as taught by Manami because doing so would be combining prior art elements (a golf ball with a cover that uses platelets or flakes to create a reflective look, and a golf ball with a cover that uses color-plated pigment flakes to create a reflective look) according to know methods (using the color-plated pigment flakes in the cover layer) to yield predictable results (the continued ability to use flake in the cover layer to create a reflective look, the flakes being a color-plated pigment flake).
Response to Arguments
Applicant's arguments filed 5/7/26 have been fully considered but they are not generally persuasive.
In the event of an appeal
The Examiner would like to put the following discussion into the record in the event of an appeal. In rejecting the claims, the Examiner attempts to give full weight to color limitations as it is the Examiner’s position that the prior art of record makes these limitations obvious. As such, the rejections above can be somewhat long-winded in their analysis. With that said, the Examiner does not believe that color, color differences, colors when viewed at an angle or at different angles, or any other “color” limitation is ultimately afforded patentable weight. This position is completely consistent with the holding in In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Restated, the color of the golf ball does not provide a mechanical function to the golf ball itself (emphasis added). Where applicant has claimed specific ingredients to achieve a color or color effect, the Examiner gives the structure of the ingredient patentable weight (emphasis added). But it is the Examiner’s position that simple color differences do not create patentable weight. As such, should the Board ultimately rule that the prior art does not meet the claim color limitations as specifically outlined above wherein weight is given to color limitations, the Examiner alternatively argues that the color limitations are not ultimately given patentable weight.
When analyzing the above at least independent claims, applicant has created lengthy and somewhat convoluted claims in an attempt to claim the golf ball. The Examiner urges the Board to understand that the majority of the independent claim language is directed toward color limitations. The actual structure that is claimed is minimal.
Sullivan (assignee’s own art) makes obvious the ability to use a colored intermediate layer, a colored translucent cover layer, and reflection particles in the outer cover layer (see citations above). Sullivan also makes obvious the ability to use different colors, although it appears to be silent on giving a specific example or embodiment wherein a color is specifically named for each layer. Morgan (also assignee’s own part) makes obvious the ability to include the pigment and reflective particles either in the claimed amount and/or based on routine optimization in the outer cover. The Examiner asserts that the disclosures of Sullivan and Morgan have similar and extensive overlapping subject matter. Finally, Hogge (also assignee’s own art) makes obvious a specific example wherein intermediate layer is red, the cover is translucent blue, and the overall color is violet. Hogge also makes obvious the ability to use reflective particles in the cover. The Examiner also asserts that the disclosures of Sullivan, Morgan, and Hogge all have similar and extensive overlapping subject matter. As such, the Examiner believes that all the limitations are obvious as outlined above and the obviousness to combine the references is straightforward.
Response to 103 Arguments
Applicant argues, on page 9 of the reply that, “Sullivan does not teach or suggest the claimed layer disposed on the subassembly formed from a second formulation having its own distinct color appearance”. The Examiner disagrees. Sullivan specifically discloses the use of a finite list of colors (pars. [0077] and [0083]). Nowhere does Sullivan state that the color of the cover layer needs to be the same as the intermediate layer. As such, it would have been obvious to a POSA that different colors could be used. In fact, the Examiner would argue it would be “obvious to try” different colors for each layer based on the finite list in an attempt to create “different coloring effects” (see Sullivan: par. [0084]). Nonetheless, should this argument not be compelling, Hogge is brought in to show that this is obvious and that the resulting overall color of the golf ball is a third color different and distinct from the first color (the intermediate layer) and the second color (the outer cover layer).
Applicant argues that “In Sullivan, the outer cover is intentionally formulated not to have its own color appearance” (see Remarks, page 9; emphasis original). This argument is directly rebutted by Sulivan: par. [0083] which specifically states, “In other instances, the substantially transparent polymeric matrix may be lightly colored or tinted” and Sullivan: par. [0078] that states, “in one version, the outer cover layer is substantially transparent and the underlying intermediate cover layer is colored” (emphasis added).
Applicant goes on to argue the term “highlight” as used in Sullivan and its apparent plain definition meaning in an attempt to argue that Sullivan uses this language to mean that the outer cover is the same color and the intermediate layer and/or the outer cover is colorless (see Remarks, pages 9-10). The Examiner does not find the argument compelling and does not limit the word “highlight” to mean that the two colors are exactly the same and/or the outer cover is colorless. For example, Sullivan specifically states in par. [0084] that “different colored cores…can be used to create different coloring effects”. As such, using the same color for the intermediate layer and the cover would not produce “different coloring effects”. Nonetheless, this argument is moot in light of the Hogge reference.
On page 10, applicant argues that “Morgan's cover formulation has no independent color appearance-it is unpigmented and clear. Para. [0044]”. This is factually incorrect. Morgan, par. [0045] states that, “The use of lightly colored or tinted outer layer makes possible color depth characteristics not previously possible” (emphasis added). This directly rebuts applicant’s argument.
Applicant argues that “In summary, both Sullivan and Morgan teach a golf ball structure in which the outer cover is not intended to have a standalone color identity” (Remarks, page 10; emphasis added). This is also factually incorrect given the above discussion, analysis, and specific citations.
Conclusion
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
9/8/26
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