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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
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, 3-9, is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al., U.S. Patent Application No. 2020/0023240, in view of Watanabe et al., U.S. Patent Application No. 2019/0255392. As to Claim 1, Watanabe, ‘240, teaches a muti-piece solid golf ball, paragraph 0026. The ball may comprise a core (1), an intermediate layer (2), and a cover (3), paragraph 0026. A large number of dimples may be formed on the outer surface of the cover, paragraph 0026 and see Figures 1 and 2. The core may be formed of a rubber composition, paragraph 0027. The intermediate layer and the cover may both be formed of a resin composition, paragraphs 0069 and 0078. Watanabe, ‘240, teaches that ball surface hardness may be less than surface hardness of the intermediate layer encased sphere (Shore D), see Table 4 and paragraph 0145. A value obtained by subtracting a center hardness of the entire core from a surface hardness of the entire core may be at least 25 Shore C, see Table 4, Example 1. Watanabe, ‘240, teaches that the volume occupancy ration of the dimples may be from 0.81% to 0.85%, paragraph 0102. Watanabe, ‘240, teaches a single layer core instead of a two-layer core, noting a core having a diameter of 37.7 mm, see Table 4. Watanabe, ‘392, teaches a similar golf ball comprising a two-layer entire core having an inner layer core (1a) and an outer layer core (1b), paragraph 0028 and see Figure 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the core as a two-layer construct comprising inner and outer layers, as taught by Watanabe, ‘392, to provide Watanabe, ‘240, with separate core parts to yield the predictable result of facilitating the process of customizing the core formulation. The examiner finds that the golf ball of prior art possesses the structural features of the inventive ball and is capable of performing in the same manner, namely by exhibiting ratios of lift to drag at a Reynolds number of 218,000 and spin rate of 2800 rpm and at a Reynolds number of 184,000 and a spin rate of 2,900 rpm, and at a Reynolds number of 158,000 and a spin rate of 3,100, such that 0.590 is equal to or less than the first ratio, which in turn is equal to or less than 0.655, and half of the sum of the second ratio and the third ratio is equal to or greater than 0.670. “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112. As to Claims 3-5, the examiner finds that the rationale applied in Claim 1 is equally applicable to support a finding that the ball of prior art is capable of exhibiting the characteristics associated with lift to drag ratios at specified Reynolds numbers and spin rates. As to Claim 6, Watanabe, ‘240, teaches that the entire core may have a radius of 18.8 mm, with surface hardness of 81, mid-point (9.4mm) hardness of 58.5, C5 hardness of 58.3, and center hardness of 55.5, all in Shore C, see Table 4, Example 1. Interpolating hardness values over the core radius, Watanabe, ‘240, suggests C3 hardness of 57.2, C6 hardness of 58.4, C9 hardness of 58.5, Cs-3 hardness of 74.1, and Cs-6 hardness of 67.2, all in Shore C. It follows that (surface area D + surface area E) – (surface area A + surface area B + surface area C) may be equal to or greater than 5. It would have been obvious to one of ordinary skill in the art to configure the core hardness profile to satisfy the claimed inequality expression as suggested. As to Claim 7, Watanabe, ‘240, is applied as in Claim 6, with regard to the core hardness profile as taught and as suggested. It follows that surface area E minus the sum of surface areas A, B, and C yields a result greater than zero. It would have been obvious to one of ordinary skill in the art to configure the core hardness profile to satisfy the claimed inequality expression as suggested. As to Claim 8, Watanabe, ‘240, is applied as in Claim 6, with regard to the core hardness profile as taught and as suggested. It follows that surface area E minus the sum of surface areas A and B yields a result greater than zero. It would have been obvious to one of ordinary skill in the art to configure the core hardness profile to satisfy the claimed inequality expression as suggested. As to Claim 9, Watanabe, ‘240, is applied as in Claim 6, with regard to the core hardness profile as taught and as suggested. It follows that Cs – Cs-6 divided by C6 – Cc may be equal to or greater than 3.0. It would have been obvious to one of ordinary skill in the art to configure the core hardness profile to satisfy the claimed inequality expression as suggested.
Response to Arguments
Applicant's arguments filed 2 July 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., special dimple design) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In this case the dimple design features present in claim limitations are discloses by prior art, as set forth in the office action.
In response to applicant’s argument that Watanabe ‘240, fails to show a specific example incorporating the claimed range for the volume occupancy ratio, the examiner maintains the position that the failure of the reference to present a specific example does not overcome the rejection based on the disclosure, by the reference, of the claimed range. Although the claimed range is more narrow than that disclosed by the reference, Watanabe, ‘240, teaches that the volume occupancy ratio impacts the flight trajectory, see paragraph 0102. It follows that the volume occupancy ratio is a result effective variable and it would have been obvious to one of ordinary skill in the art to discover the claimed range by routine experimentation. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. The examiner notes that applicant’s specification indicates that a broader range for the volume occupancy ratio is effective to achieve favorable results, suggesting that the claimed range does not have criticality.
In response to applicant's argument that the inventive golf ball may address potential rule changes in the game of golf, which would make the inventive ball more valuable, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
.
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 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 14 July 2026
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