DETAILED ACTION
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 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.
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 1-4, 6-10, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Takihara et al. (herein “Takihara”; US Pub. No. 2017/0165528 A1) in view of Watanabe (US Pub. No. 2010/0298067 A1) and in further view of Umezawa (US Pub. No. 2010/0125006 A1).
Regarding claim 1, Takihara discloses a golf ball comprising a spherical core (Fig. 1, item 4; noting a POSA would understand that a spherical core is obvious as used in a spherical golf ball), at least one intermediate layer positioned outside the spherical core (Fig. 1, item 6), and a cover positioned outside the intermediate layer (Fig. 1, item 8), wherein the spherical core is formed from a rubber composition containing a polybutadiene rubber and another rubber as a component (par. [0035]; noting polybutadiene in combination with other rubbers is obvious), a co-crosslinking agent (par. [0036]), and a crosslinking initiator (par. [0039]), the co-crosslinking agent contains methacrylic acid, a metal salt of methacrylic acid, or a mixture of methacrylic acid and a metal salt thereof (pars. [0036]-[0037]; listing salts thereof, and par. [0037] stating “The salt serves as a co-crosslinking agent”) and a material hardness Hm of the intermediate layer is greater than a material hardness Hc of the cover (Table 7, Example 1; noting Hm of 63 Shore D, and Hc of 31 Shore D; see also par. [0070] and [0084]). It is noted that Takihara does not specifically disclose wherein a center hardness (Shore C hardness) of the spherical core, a hardness (Shore C hardness) at each point of 2.5 mm, 5 mm, 7.5 mm, 10 mm, 12.5 mm and 15 mm from a center of the spherical core toward a surface of the spherical core, and a surface hardness (Shore C hardness) of the spherical core are represented by H0, H2.5, H₅, H7.5, H₁₀, H12.5, H15, Hs respectively, the following relationship is satisfied: H0<H2.5<H5<H7.5<H10<H12.5<H15<Hs. However, Takihara discloses a golf ball that would inherently have some hardness gradient (pars. [0052]-[0053]). In addition, Watanabe discloses a similar three piece ball wherein when a center hardness (Shore C hardness) of the spherical core, a hardness (Shore C hardness) at each point of 2.5 mm, 5 mm, 7.5 mm, 10 mm, 12.5 mm and 15 mm from a center of the spherical core toward a surface of the spherical core, and a surface hardness (Shore C hardness) of the spherical core are represented by H0, H2.5, H₅, H7.5, H10, H12.5, H15, Hs respectively, the following relationship is satisfied: H0<H2.5<H5<H7.5<H10<H12.5<H15<Hs (see specifically, the NPL Examiner’s Calculation using Table 4, Example 3; noting values for H0, H7.5, H15, and HS are specifically given, values for H2.5, H5, H10, and H12.5 are linearly interpolated based on least square equation in the graph, completely consistent with the desired to obtain a “linear gradient” in par. [0041]; noting the claimed relationship for claim 1 is met; also noting that “JIS-C” and “Shore C” are the same scale, see as evidence, Hashimoto et al., US Pat. No. 5,093,402, col. 8, lines 39-40). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Takihara to use the “approximately linear gradient” of Table 4, Example 3 so that the above equational relationship is met as taught by Watanabe because doing so would be combining prior art elements (a 3-piece golf ball having some core hardness gradient, and a 3-piece golf ball having a linear core hardness gradient) according to known methods (using of the linear core hardness gradient in the former 3-piece golf ball) to yield predictable results (the continued ability to use a core hardness gradient in a 3-piece golf ball, the core hardness gradient being linear so as to meet the claimed equation and provide a “spin rate-lowering effect on shots” with a driver and known to work in a 3-piece golf ball – see Watanabe: par. [0041]). Finally, it is noted that the combined Takihara and Watanabe do not specifically disclose that the another rubber used in conjunction with the polybutadiene is butyl rubber. However, Umezawa discloses the ability to use polybutadiene with butyl rubber (par. [0029]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify the combined Takihara and Watanabe to use a rubber combination of polybutadiene and butyl rubber in the core as taught by Umezawa because doing so would be combining prior art elements (golf ball with a polybutadiene mixture in the core, and a golf ball with a polybutadiene mixture in the core with butyl rubber) according to know methods (using butyl rubber in the core as part of the mixture) to yield predictable results (the continued ability to use a polybutadiene mixture in the core, the mixture being polybutadiene and butyl rubber, the butyl rubber used to limit the COR of the core).
Regarding claim 2, the combined Takihara, Watanabe, and Umezawa disclose that each of (H2.5-Ho), (H5-H2.5), (H7.5-H5), (H₁₀-H₇.5), (H12.5-H10), (H15-H12.5), and (Hs-H15) is 0 or more and 5 or less (Watanabe: Table 4, Example 3; see specifically, the NPL Examiner’s Calculation using Table 4, Example 3; noting values for H0, H7.5, H15, and HS are specifically given, values for H2.5, H5, H10, and H12.5 are linearly interpolated based on least square equation in the graph, completely consistent with the desired to obtain a “linear gradient” in par. [0041]; noting the claimed relationship for claim 2 is met; also noting that “JIS-C” and “Shore C” are the same scale, see as evidence, Hashimoto et al., US Pat. No. 5,093,402, col. 8, lines 39-40).
Regarding claim 3, the combined Takihara, Watanabe, and Umezawa disclose that (Hs-Ho) is 20 or less in Shore C hardness (Takihara: par. [0052]; specifically listing “equal to or greater than 15”, the disclosed range making obvious the claimed range, or Watanabe: Table 4, Example 3; listing specifically 18, the value anticipating the claimed range).
Regarding claim 4, the combined Takihara, Watanabe, and Umezawa disclose that the spherical core has a surface hardness Hs of 80 or less in Shore C hardness (Takihara: par. [0055]; noting “equal to or greater than 70” makes obvious the claimed range, or Watanabe: Table 4, Example 3 listing 77, the value anticipating the range), and a center hardness Ho of 60 or less in Shore C hardness (Takihara: par. [0053]; noting “equal to or greater than 30” makes obvious the claimed range, or Watanabe: Table 4, Example 3 listing 59, the value anticipating the range).
Regarding claim 6, the combined Takihara, Watanabe, and Umezawa disclose that the intermediate layer has a material hardness Hm of 50 or more in Shore D hardness (Takihara: Table 7, Example 1; noting 63 Shore D).
Regarding claim 7, the combined Takihara, Watanabe, and Umezawa disclose that the cover has a material hardness Hc of 40 or less in Shore D hardness (Takihara: Table 7, Example 1; noting 31 Shore D).
Regarding claim 8, the combined Takihara, Watanabe, and Umezawa disclose that the rubber composition further contains an isoprene rubber as the rubber component (Takihara: par. [0035]; Watanabe: Table 1, Example 1; and Umezawa: par. [0029]; noting a “blend of” makes this obvious).
Regarding claim 9, the combined Takihara, Watanabe, and Umezawa disclose that the intermediate layer contains an ionomer resin as a resin component (Takihara: par. [0057]).
Regarding claim 10, the combined Takihara, Watanabe, and Umezawa disclose that the cover contains a polyurethane as a resin component (Takihara: par. [0075]).
Regarding claim 12, the combined Takihara, Watanabe, and Umezawa disclose that (Hs-Ho) is 5 is more and 20 or less (Takihara: par. [0052]; specifically listing “equal to or greater than 15”, the disclosed range making obvious the claimed range, or Watanabe: Table 4, Example 3, specifically listing 18).
Regarding claim 13, the combined Takihara, Watanabe, and Umezawa disclose that a mass ratio [the polybutadiene rubber / (the butyl rubber and the polyisoprene rubber)] of the polybutadiene rubber to the butyl rubber and the polyisoprene rubber ranges from 30/70 to 95/5 (Umezawa: par. [0029]; noting it is obvious that both butyl and polyisoprene can be a “blend of”, it is obvious that the ratio of polybutadiene to butyl/polyisoprene can be 50/50). In the alternative, regarding the exact ratio of polybutadiene to butyl/polyisoprene rubber, 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). In addition, to support the Examiner’s assertion that ratio of polybutadiene to butyl/polyisoprene rubber 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 Umezawa which specifically states that that ratio of polybutadiene to butyl/polyisoprene rubber is a result-effective variable used to optimize COR (Umezawa: par. [0029]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact ratio of polybutadiene to butyl/isoprene rubber can be found through routine experimentation in order to optimize the core COR.
Regarding claim 14, the combined Takihara, Watanabe, and Umezawa disclose that the co-crosslinking agent contains methacrylic acid, the metal salt of the methacrylic acid, or the mixture of the methacrylic acid and the metal salt thereof in an amount of 50 mass % or more (Takihara: par. [0038]; noting “equal to or less than 50 parts by weight” makes obvious the claimed range; noting a POSA would understand that “mass %” and “parts by weight” are the same, see also Watanabe: par. [0055]; noting “not more than 60 parts” also making obvious the claimed range). In the alternative, assuming arguendo that “mass %” and “parts by weight” are not the same, 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). In addition, to support the Examiner’s assertion that the amount of the co-crosslinking agent 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 Takihara which specifically states that the amount of the co-crosslinking agent is a result-effective variable that can be optimized for the “the feel [of the golf ball] at impact” (par. [0038]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that the exact amount of co-crosslinking agent could be found through routine experimentation in order to optimize the feel at impact.
Regarding claim 15, the combined Takihara, Watanabe, and Umezawa disclose that the co-crosslinking agent consists of methacrylic acid, the metal salt of the methacrylic acid, or the mixture of the methacrylic acid and metal salt thereof (Takihara: par. [0037], specifically stating “”The salt serves as a co-crosslinking agent”, or see Table 1, specifically listing “Zinc diacrylate”).
Regarding claim 16, the combined Takihara, Watanabe, and Umezawa disclose that (Hs-H₁₅) is 0 or more and 5 or less. It is noted that the combined Takihara, Watanabe, and Umezawa disclose that the value is 4 or less. However, under Titanium Metals, values can be made obvious when they do not overlap, but are simply close (see MPEP 2144.05(I)). Here, in par. [0034] of their specification, applicant specifically states that a value with the range of “5 or less…provides a better shot feeling with hitting the ball with a putter”. Restated, applicant has no criticality for the lesser included range of “4 or less” and a POSA would understand that any value of with the range of “5 or less” would have the same “same properties”; completely consistent with the holding in Titanium Metals. As such, based on applicant’s own disclosure, a POSA would understand a value of 4 and 5 to yield the same properties, the range of “4 or less” is obvious under the holding in Titanium Metals.
Regarding claim 17, the combined Takihara, Watanabe, and Umezawa disclose that (Hs-H₁₅) is 0 or more and 5 or less. It is noted that the combined Takihara, Watanabe, and Umezawa disclose that the value is 3 or less. However, under Titanium Metals, values can be made obvious when they do not overlap, but are simply close (see MPEP 2144.05(I)). Here, in par. [0034] of their specification, applicant specifically states that a value with the range of “5 or less…provides a better shot feeling with hitting the ball with a putter”. Restated, applicant has no criticality for the lesser included range of “3 or less” and a POSA would understand that any value of with the range of “5 or less” would have the same “same properties”; completely consistent with the holding in Titanium Metals. As such, based on applicant’s own disclosure, a POSA would understand a value of 3 and 5 to yield the same properties, the range of “3 or less” is obvious under the holding in Titanium Metals.
Response to Arguments
Applicant's arguments filed 6/25/26 have been fully considered but they are not persuasive.
103 Discussion
Applicant’s Remarks and submission of Exhibits A and B are rendered moot as the Nesbitt reference is removed from rejection and replaced by Umezawa. This replacement of the tertiary reference was based on the claim amendments.
Applicant discusses specific embodiments within the original specification of the preferred invention against non-preferred (Golf Balls Nos. 1 to 7 vs 8 to 10). The Examiner simply notes that the arguments do not make out a case for “unexpected results” as required under 716.02.
On pages 6-8, applicant specifically argues each reference in isolation. Specifically, applicant argues Watanabe ‘067 in isolation instead of what the reference teaches a POSA. Specifically, applicant argues that Watanabe discloses an intermediate layer having a hardness lower the cover in contradiction to what is claimed (see Remarks, page 7, applicant stating “core”, but the Examiner assumes that they mean “cover”). As noted in the previous interview, the argument is not compelling. The primary reference Takihara already shows this claimed relationship between the intermediate layer and the cover. Watanabe is brought in to show the core hardness profile. A POSA would understand that the core hardness profile disclosed in Watanabe could be adapted for the three piece golf ball as disclosed in Takihara regardless of other structures.
All arguments directed toward Nesbitt are moot as it is replaced by Umezawa.
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 at 8:00-5:30 M-F EST.
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
7/13/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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