DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,2, and 5-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 1, line 27, the limitation providing that the first through third pad printed images combine to provide a continuous graphic that spans at least a portion of the golf ball’s surface area constitutes new matter which was not disclosed in the originally filed specification and cannot be added. The examiner notes that continuous graphics, as described in paragraph 58 of the specification span the entirety of the ball’s surface area rather than a portion of the surface.
Claims 15-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 15, line 27, the limitation providing that a dead zone may be located between six surface areas constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
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, 2, and 5-17 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. In Claim 1, line 27, the limitation of a continuous graphic provided by first through third images contradicts a previous limitation of first, second, and third images in first, second, and third areas. The scope of the claim is indefinite. The same applies to the last limitation of Claim 15, the scope of which claim is indefinite for the same reason.
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.
Claim(s) 1, 2, 5-9 and 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fox et al., U.S Patent Application No. 2021/0031076. As to Claim 1, Fox teaches a golf ball comprising a plurality of pad printed areas, including first, second, and third pad printed areas, paragraphs 0031 and 0136. The examiner finds that the inventive golf ball is the same or obvious from the golf ball of prior art in that first, second, and third pad printed areas may differ in the percentage of total surface area of the ball occupied by the inventive pad printed areas, with a dead zone located between the pad printed areas, so as to be outside the claimed ranges but having first, second, and third pad printed images occupying a portion of each area. "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), MPEP 2113 I. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first, second, and third surface areas to have an overlapping relationship as claimed, since it has been held that configuration of parts of an invention is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to configure the first, second, and third overlap areas to occupy between 1 and 5% of the total surface area of the ball, since it has been held that configuration of parts of an invention is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to configure the dead zone to occupy less than or equal to 0.5% of the total surface area of the ball, since it has been held that configuration of parts of an invention is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). Fox, as modified, discloses the claimed invention except for providing that the first, second, and third images may be arranged in combination as a continuous graphic spanning at least a portion of the ball surface. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the three images in combination as a continuous graphic, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 2, Fox teaches that the ball may comprise colored images on the surface on a golf ball which surface may be white, paragraphs 0035 and 0056, suggesting that the dead zone may have no ink applied. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide a dead zone with no ink applied as suggested. As to Claim 5, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to arrange a portion of the first pad printed image in the first overlap area and a portion of the second pad printed image in the first overlap area, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 86 USPQ 70 (CCPA 1950). As to Claim 6, Fox teaches that a pad printed image may comprise different first and second colors, paragraph 0047. Further, the examiner finds that coloration of the printed image is a matter of aesthetic preference such that the first and second different colors do not patentably distinguish the inventive ball from the ball of prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 III. As to Claim 7, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second colors in the first overlap area, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claim 8, the examiner finds that coloration of the printed image is a matter of aesthetic preference such that the first and second different colors do not patentably distinguish the inventive ball from the ball of prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 III. As to Claim 9, the examiner finds that the image and overlap and relationship of densities of ink of the first and second images produces particular perceived coloration of the ball and relates to ornamentation only. The reasoning supported by the cited case law applied in Claim 8 is equally applicable. As to Claim 12, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to configure one of the pad printed areas with a shape comprising a non-circular perimeter shape a printed arc length, and printed arc width, since it has been held that configuration of parts of an invention is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, supra. Further, the examiner finds that the maximum arc length and maximum arc width being between 34 and 47 mm and 28 and 40 mm respectively, contributes only to the aesthetic impression provided by ball surface coloration and does not serve to patentably distinguish the inventive golf ball. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 III. As to Claim 13, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to size the first, second, and third pad printed images so as to occupy at least 20% of the respective surface areas, since such a modification would have involved a mere change in size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955). As to Claim 14, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the first and second printed images to have at least 5% located in the first overlap area, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claim 15, Fox, together with cited case law is applied as in Claim 1, the same obviousness rationales being found applicable. The examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to provide additional duplicate fourth, fifth, and sixth pad printed areas, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Further, the examiner finds that a color for at least one of the six pad printed images being different from the color for a different one of the six pad printed images contributes only to the aesthetic impression provided by ball surface coloration and does not serve to patentably distinguish the inventive golf ball. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 III. The examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the dead zone between six pad printed areas, as claimed, since it has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, supra. As to Claim 16, Fox, together with cited case law is applied as in Claims 5 and 6, with the same obviousness rationales being found applicable. As to Claim 17, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date to configure the pad printed ball with eleven additional overlap areas, each comprising two of the respective six pad printed area overlapping such that at least a portion of the pad printed images for the two pad printed areas are located in the respective overlap area, since it has been held that configuration of parts of an invention is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that a particular claimed configuration was significant, In re Dailey, 149 USPQ 47 (CCPA 1966). Further the examiner finds that positioning of printed images contributes only to the ornamentation of the ball surface and is a matter of aesthetic preference such that overlapping areas of images does not patentably distinguish the inventive ball from the ball of prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2112.01 III.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fox, as applied in Claim 1, in view of Hogge et al., U.S. Patent Application No. 2024/0207691. Fox, as modified, substantially shows the claimed limitations, as discussed above. As to Claims 10 and 11, Fox, as modified, does not specify the diameter of the first pad printed area. Hogge teaches that a pad printed image (205A) may have a diameter of at least 30 mm, paragraph 0039. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Fox, as modified, with an image diameter of at least 30 mm, as taught by Hogge, to provide Fox, as modified, with a known substitute image size. The examiner notes that the first pad printed area may encompass a portion of the first image, suggesting that the image and the pad printed area may be of generally comparable size. It follows that a first pad printed area comprising a printed planar diameter between 28 and 37 mm (between 31 and 45 mm) is suggested. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Fox, as modified, with a printed planar diameter within the claimed range, as suggested. The examiner finds that the comparable size of the image according to the suggestion of prior art may be considered comparable when measured according to the claimed protocols of Claims 10 and 11 as to planar diameter and arc diameter.
Response to Arguments
Applicant’s arguments, see page 9, filed 20 February 2026, with respect to the rejection of Claims 10 and 11, under 35 USC §112(b) have been fully considered and are persuasive. The rejection noted above has been withdrawn. The examiner notes that the first pad printed area is understood to occupy an area of the ball surface of at least 15%, the first surface area being the area of the first pad printed area. As such, the limitation of Claim 1 providing that a first pad printed image occupying a portion of the first surface area is understood to mean a first pad printed image occupying a portion of the first pad printed area. The same applies to other pad printed areas.
Applicant's arguments filed 20 February 2026 have been fully considered but they are otherwise not persuasive.
In response to applicant’s argument that the prior art does not described or provided a reason to one skill in the art to control the overlap and dead zone percentages to achieve a continuous graphic, the examiner maintains the position that while a unique image formation may be achieved by employing the inventive technique, the result is an ornamental image, which does not serve to patentably distinguish the ball. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) (matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art), MPEP 2113 III. The advantage of a unique graphic without noticeable seams is also considered to be an ornamental feature, which does not patentably distinguish the inventive golf ball. The asserted criticality of the overlap and dead zone percentages are also considered part of a technique, which affects the ornamental appearance of the ball.
The patent examiner maintains the position that case law relating to the configuration and rearrangement of features and parts of an invention supports a finding of obviousness, in that the alterations affect the ornamental appearance of the ball and are obvious in regard to achieving a desirable decorative appearance.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (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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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 3 March 2026