DETAILED ACTION
Drawings
The drawings filed 1/12/26 are accepted.
Specification
The specification amendment filed 1/12/26 is accepted.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable Sullivan et al. (herein “Sullivan”; US Pat. No. 10,150,008 B1; as submitted in applicant’s IDS) in view of Yagley et al. (herein “Yagley”; US Pub. No. 2005/0037865 A1) and as evidenced by Sullivan et al. (herein “Sullivan ‘428”; US Pub. No. 2009/0124428 A1).
Regarding claim 1, Sullivan discloses a golf ball having a three-piece construction consisting of a rubber core of at least one layer (col. 23, lines 45-46) and intermediate layer (col. 3, lines 14-20) and an outermost layer encasing the intermediate layer (col. 3, lines 14-20), wherein the outermost cover is formed of a resin composition comprising: (I) a polyurethane or a polyurea, and (I) a (meth)acrylic block copolymer (col. 6, line 55 to col. 8, line 35). It is noted that Sullivan does not specifically disclose that the golf ball satisfies that the CS1 value calculated by formula (1) below CS1 = (CV50 – CV12)/38 (1) (wherein CV50 is the coefficient of restitution at an incident velocity of 50.0 m/s and CV12 is the coefficient of restitution at an incident velocity of 12.0 m/s) is -4.08x10-3 to -4.02 x10-3 . However, the golf ball in Sullivan would have some inherent COR at all of the claimed speeds (col. 11, lines 54-55 and col. 37, lines 6-8). In addition, Yagley disclose a similar three piece golf ball (Fig. 1 and par. [0059]) wherein the slope of the COR is fairly linear and is typically known by equation of the invented golf ball (see Fig. 2; noting an actual equation for COR is provided). Furthermore, as supplied in the NPL Examiner’s Calculations, based on the COR equation given in Yagley: Fig. 2, the COR at 50 m/s (i.e. 164 ft/s) and 12 m/s (39.37 ft/s) can be calculated (noting COR is simply outbound speed/inbound speed). Using those COR values into the above equation yields a value of CS1 = -0.0021 (see NPL Examiner’s Calculations for exact values). Furthermore, while the prior art value is not within the claimed range, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)(see applicant’s spec, par. [0010], applicant specifically stating that when the golf ball has CS1 value “larger than -4.08x10-3, the golf has an excellent controllability on approach shots and possess both a good scuff resistance and good moldability”; so the only criticality is that CS1 is greater than -4.08x10-3; which is met by the prior art). In addition, to support the Examiner’s assertion that COR is a result-effective variable (i.e. a variable which achieves a recognized result) and can be optimized or found though routine experimentation, the Examiner evidences Sullivan ‘428 which specifically states that COR is a result-effective variable and can be optimized by multiple factors (see pars. [0023]; stating “COR is affected by a number of factors including the composition of the core and the composition of the cover” and that COR is “related to initial velocity”; see par. [0024] disclosing the ability of a POSA to vary COR; see par. [0050] stating that cover hardness and thickness also dictates COR; see par. [0059] stating that core composition also dictates COR; see par. [0072] essentially stating that it is known to “control the COR” to a desired value). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Sullivan to use the COR equational relationship as taught by Yagley because doing so would be combining prior art elements (a three piece ball with some inherent COR relationship, and a three piece ball with a clearly defined COR relationship) according to known methods (using the COR relationship for the three piece ball) to yield predictable results (using a known COR relationship for a three piece ball, the COR relationship known to work for a three piece ball). In addition, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact COR value(s) could be found through routine experimentation in order to optimize the desired initial speed of the golf ball.
Regarding claim 2, the same logic using the graph of Yagley is applied to the claim. Restated, applicant claims the COR at 12 m/s or roughly 40 ft/s when the COR at 45 m/s or 147 ft/s is set to 1.0. As noted, Yagley discloses that the COR has known equational relationship (see Fig. 2, and also see Examiner’s NPL). As such, adjusting or shifting the linear slope up so that the COR at 45 m/s or 147 ft/s is 1.0 yields a COR at 12 m/s or 40 ft/s of approximately 1.08 (see annotated graph below based on Yagley’s Fig. 2 equation). Plugging in the COR value of 1.08 into the claimed equation of claim 2 yields a value of -0.00242 or -2.42 x10-3 which is greater than -5.23x10-3 or -0.00523 (the Examiner construes “larger than -5.23 x10-3” to be “greater than”; consistent with the values found in Table 3 for CS2 as compared to the comparative example). As such, the limitation is obvious over the prior art.
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Regarding claim 3, the combined Sullivan and Yagley disclose that the (meth)acrylic block copolymer serving as component (II) is included in an amount of less than 30 parts by weight per 100 parts by weight of component (I) (Sullivan: col. 7, lines 27-40; noting 5 to 25 wt% makes obvious and/or anticipates the claimed range).
Claims 4-10 are rejected under 35 U.S.C. 103 as being unpatentable Sullivan et al. (herein “Sullivan”; US Pat. No. 10,150,008 B1; as submitted in applicant’s IDS) in view of Yagley et al. (herein “Yagley”; US Pub. No. 2005/0037865 A1) as evidenced by Sullivan et al. (herein “Sullivan ‘428”; US Pub. No. 2009/0124428 A1) and in further view of Tarao (US Pub. No. 2013/0046060 A1).
Regarding claim 4, it is noted that the combined Sullivan and Yagley do not specifically disclose that component (II) has a melt flow rate (MFR), as measured at 230°C and under a load of 2.16 kgf (ISO 1133), which is 20 g/10 min or more. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has some melt flow rate at the above conditions. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]). As such, KURARITYTM LA2250 would inherently meet this claimed melt flow limitation (see applicant’s Table 2 giving the properties of LA2250, noting MFR is inherently 80). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the melt flow rate as claimed).
Regarding claim 5, it is noted that the combined Sullivan and Yagley do not specifically disclose that the block copolymer serving as component (II) includes two or more blocks as hard segments and one or more block as a soft segment. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has block segments. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]; noting the disclosure states that hard and soft segments are present, i.e. a plurality). As such, KURARITYTM LA2250 would inherently meet this hard and soft segment limitation (see applicant’s spec, par. [0087] discussing this). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the hard and soft segments as claimed).
Regarding claim 6, the combined Sullivan, Yagley, and Tarao disclose that the hard segments in the block copolymer serving as component (II) are composed primarily of methyl methacrylate units and the soft segment is composed primarily of n-butyl acrylate units or n-butyl acrylate/2-ethylhexyl acrylate units (Tarao: par. [0052]; noting KURARITYTM LA2250 is specifically listed as a suitable material for component in applicant’s specification, see par. [0087], applicant’s par. [0087] also discussing the hard and soft segments).
Regarding claim 7, it is noted that the combined Sullivan and Yagley do not specifically disclose that the content of methyl methacrylate units in the block copolymer serving as component (II) is from 20 to 50 wt%. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has some MMA content. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]; noting the disclosure states that hard and soft segments are present, i.e. a plurality). As such, KURARITYTM LA2250 would inherently meet this percentage of MMA in the copolymer (see applicant’s Table 2 giving the properties of LA2250, noting % of MMA is 40). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the amount of MMA in the copolymer as claimed).
Regarding claim 8, it is noted that the combined Sullivan and Yagley do not specifically disclose that component (II) has a tan ɠ temperature dependency such that each tan ɠ measured at 10°C intervals from -10°C to 30°C is 0.1 or more, the standard deviation of tan ɠ at five temperatures measured at 10°C intervals from -10°C to 30°C is 0.26 or less and the coefficient of variation CV1 (standard deviation/mean) is 0.5 or less. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has some tan ɠ temperature dependency. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]). As such, KURARITYTM LA2250 would inherently meet this claimed tan ɠ temperature dependency claimed limitations (see applicant’s Table 2 giving the properties of LA2250, giving explicit values for tan ɠ temperature dependency). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the tan ɠ temperature dependency limitations as claimed).
Regarding claim 9, it is noted that the combined Sullivan and Yagley do not specifically disclose that component (II) has a tan ɠ temperature dependence such that each tan ɠ measured at 10°C intervals from 0°C to 30°C is 0.1 or more, the standard deviation of tan ɠ at four temperatures measured at 10°C intervals from 0°C to 30°C is 0.2 or less and the coefficient of variation CV2 (standard deviation/mean) is 0.42 or less. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has some tan ɠ temperature dependency. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]). As such, KURARITYTM LA2250 would inherently meet this claimed tan ɠ temperature dependency claimed limitations (see applicant’s Table 2 giving the properties of LA2250, giving explicit values for tan ɠ temperature dependency). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the tan ɠ temperature dependency limitations as claimed).
Regarding claim 10, it is noted that the combined Sullivan and Yagley do not specifically disclose that component (II) has a solubility parameter (SP) of 9 or more. However, Sullivan specifically disclose that component II can be a MMA-n-butyl acrylate-styrene (col. 3, line 4) that inherently has some solubility parameter. In addition, Tarao discloses a specific type of MMA-n-butyl acrylate-styrene that may be KURARITYTM LA2250 (par. [0052]). KURARITYTM LA2250 is specifically listed as a suitable material for component II in applicant’s specification (see par. [0087]). As such, KURARITYTM LA2250 would inherently meet this claimed solubility parameter (see applicant’s spec, par. [0145], stating that LA2250 has a solubility parameter of 9 or more). 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 Yagley to use KURARITYTM LA2250 as taught by Tarao because doing so would be a simple substitution of one element (MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250) for another (generic MMA-n-butyl acrylate-styrene) to obtain predictable results (using MMA-n-butyl acrylate-styrene in the specific form of KURARITYTM LA2250, the specific form inherently meeting the solubility parameter as claimed).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable Sullivan et al. (herein “Sullivan”; US Pat. No. 10,150,008 B1; as submitted in applicant’s IDS) in view of Yagley et al. (herein “Yagley”; US Pub. No. 2005/0037865 A1) as evidenced by Sullivan et al. (herein “Sullivan”; US Pub. No. 2009/0124428 A1) and in further view of Nagasawa et al. (herein “Nagasawa”; US Pub. No. 2015/0375050 A1).
Regarding claim 11, the combined Sullivan and Yagley disclose that the resin composition further comprises (III) a thermoplastic polyester elastomer (Sullivan: col. 19, line 61 to col. 20, line 20; noting specifically listing HytrelTM). It is noted that the combine Sullivan and Yagley do not specifically disclose that the component III having a Shore D hardness of from 20 to 50 and a rebound resilience, as measured according to JIS-K 6255, of from 50 to 80%. However, Nagasawa discloses a specific type of HytrelTM 4001 that has a Shore D hardness of from 20 to 50 (par. [0093]; noting 40 Shore D anticipates the range) and a rebound resilience, as measured according to JIS-K 6255, of from 50 to 80% (par. [0093]; noting 63% anticipates the range). 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 Yagley to use HytrelTM 401 as taught by Nagasawa because doing so would be a simple substitution of one element (a thermoplastic polyester elastomer in the form of HytrelTM 4001) for another (a generic thermoplastic polyester elastomer in the form of HytrelTM) to obtain predictable results (using a thermoplastic polyester elastomer in the form of HytrelTM 4001, the specific form of HytrelTM having a 40 Shore D and a resilience of 63% and known to work in golf ball cover formulations).
Response to Arguments
Applicant's arguments filed 1/12/26 have been fully considered but they are not generally persuasive.
112 Rejection
The previous 112 rejections have been overcome by amendment.
103 Rejection
Applicant previously took issue with the Examiner’s use of Halko because applicant argued that example Ball No. 1 of Halko was directed towards a ball with windings (i.e. a “wound golf ball”). The Examiner believes that “windings” still read on the claimed “intermediate layer”. However, the Examiner has replaced Halko with Yagley. Yagley clearly discloses a golf ball with a solid intermediate layer (i.e. no windings; noting on page 10 of the Remarks, applicant argues a “three-piece solid construction”, but noting “solid” is never claimed, and “windings” would still be considered a “solid” material). Nonetheless, all arguments directed at Halko are now moot.
Applicant now uses an upper limit for CS1 in claim 1 (i.e. a value of -4.02x10-3). However, the problem with this with regards to patentability is twofold. First, the evidenced Sullivan ‘428 (now added) clearly makes obvious that not only can COR values be dialed in by a POSA, but also specifically discloses how to change that COR value. Furthermore, as Yagley: Fig. 1 and Halko (page 4) evidence that COR is essentially linear across all inbound speeds, a POSA would understand that optimizing COR for a given inbound speed would produce a known and predictable linear relationship at other speeds. Second, the Examiner sees no criticality for this now claimed upper limit. Par. [0010] of applicant’s specification states that when the golf ball has CS1 value “larger than -4.08x10-3, the golf has an excellent controllability on approach shots and possess both a good scuff resistance and good moldability”. As such, according to applicant’s own specification, all that is really required is that the prior art show a value “larger than -4.08x10-3”; which the prior art shows even if the value is not within the claimed range.
No other arguments are advanced.
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, Eugene Kim can be reached on (571)272-4463. 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
2/4/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711