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 1-18 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 Nesbitt et al. (herein “Nesbitt”, US Pat. No. 5,209,485) in further view of Watanabe (US Pub. No. 2010/0298067 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), an intermediate layer covering the spherical core (Fig. 1, item 6), and an outermost cover covering the intermediate layer (Fig. 1, item 8), wherein the spherical core is formed from a rubber composition containing a rubber component (par. [0035]), a co-crosslinking agent (par. [0036]), and a crosslinking initiator (par. [0039]), the base rubber contains a polybutadiene rubber (par. [0035]); and a slab material hardness of the intermediate layer composition forming the intermediate layer is greater than a slab hardness of a cover composition forming the outermost cover (Table 7, Example 1; listing 63 shore D for the intermediate cover, and listing 31 Shore D for the outer cover; see pars. [0070] and [0084] making obvious “slab hardness” as it discloses “sheet hardness”). It is noted that Takihara does not specifically disclose that the base rubber contains a polybutadiene rubber and a butyl rubber, an amount of the butyl rubber ranges from 10 mass % to 60 mass % in 100 mass % of the base rubber. However, Takihara clearly discloses the ability to mix the polybutadiene with other rubbers (par. [0035]). In addition, Nesbitt discloses a golf ball with a core and the use of butyl rubber with polybutadiene (col. 5, lines 40-49), an amount of the butyl rubber ranges from 10 mass % to 60 mass % in 100 mass % of the base rubber (col. 5, line 66 to col. 6, line 9; noting 30 to 70% makes obvious the claimed range). 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 polybutadiene with butyl rubber with an amount of the butyl rubber ranges from 10 mass % to 60 mass % in 100 mass % of the base rubber as taught by Nesbitt because doing so would be use of a known technique (using butyl rubber and polybutadiene in combination within a golf ball core) to improve a similar product (a golf ball that can have a mixture of rubber) in the same way (using butyl rubber and polybutadiene in combination within a golf ball core, the mixture allowing for COR of the core and thus the ball to be reduced – see Nesbitt: col. 5, lines 40-49). Finally, it is noted that the combined Takihara and Nesbitt do not specifically disclose that a center hardness (H0) of the spherical core, a hardness (H2.5) at a point having a radial distance of 2.5 mm from a center of the spherical core, a hardness (H5.0) at a point having a radial distance of 5.0 mm from the center of the spherical core, a hardness (H7.5) at a point having a radial distance of 7.5 mm from the center of the spherical core, a hardness (H10) at a point having a radial distance of 10 mm from the center of the spherical core, a hardness (H12.5) at a point having a radial distance of 12.5 mm from the center of the spherical core, and a hardness (H15) at a point having a radial distance of 15 mm from the center of the spherical core satisfy a relationship of H0<H2.5<H5.0<H7.5<H10<H12.5<H15, a hardness difference (H10-H0) between the hardness (H10) at the point having the radial distance of 10 mm from the center of the spherical core and the center hardness (H0) is 10 or more in Shore C hardness. However, Watanabe discloses and/or makes obvious all of these specific core relationship (see specifically, the NPL Examiner’s Calculation using Table 4, Example 1; 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 the combined Takihara and Nesbitt to use the “approximately linear gradient” of Table 4, Example 1 so that the above core and 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]).
Regarding claim 2, the combined Takihara, Nesbitt, and Watanabe disclose a hardness difference (H12.5-H5.0) between the hardness (H12.5) at the point having the radial distance of 12.5 mm from the center of the spherical core and the hardness (H5.0) at the point having the radial distance of 5.0 mm from the center of the spherical core is 5 or more in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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 as H12.5-H5.0 = 8.3; 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, Nesbitt, and Watanabe disclose a center hardness H0 of the spherical core is 60 or less in Shore C hardness (Takihara: par. [0053]; noting “equal to or greater than 30” makes obvious the claimed range, or Watanabe: par. [0038]; noting “at least 50” making obvious the claimed range).
Regarding claim 4, the combined Takihara, Nesbitt, and Watanabe disclose that the intermediate composition forming the intermediate layer is a resin composition containing an ionomer resin as a base resin (Takihara: par. [0057]), and the cover composition forming the outermost cover is a resin composition containing a urethane resin as base resin (Takihara: par. [0075]).
Regarding claim 5, the combined Takihara, Nesbitt, and Watanabe disclose that the slab hardness of the cover composition forming the outermost cover is 40 or less in Shore D hardness (Takihara: Table 7, Example 1; noting 31 Shore D).
Regarding claim 6, the combined Takihara, Nesbitt, and Watanabe disclose that the slab hardness of the intermediate layer composition forming the intermediate layer is 50 or more in Shore D hardness (Takihara: Table 7, Example 1; noting 63 Shore D).
Regarding claim 7, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness (H5.0) at the point having the radial distance of 5.0 mm from the center of the spherical core ranges from 56 to 72 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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]; the value at H5.0 = 66 anticipating the claimed range; 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 8, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness (H10.0) at the point having the radial distance of 10 mm from the center of the spherical core ranges from 62 to 78 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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]; the value at H10.0 = 71.5 anticipating the claimed range; 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 9, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness (H12.5) at the point having the radial distance of 12.5 mm from the center of the spherical core ranges from 66 to 80 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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]; the value at H12.5 = 74.3 anticipating the claimed range; 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 10, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness (H15) at the point having the radial distance of 15 mm from the center of the spherical core ranges from 70 to 85 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; noting a value of H15 = 76 anticipating the claimed range; 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 11, the combined Takihara, Nesbitt, and Watanabe disclose that a surface hardness (Hs) of the spherical core ranges from 70 to 85 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; noting a value of HS = 81 anticipating the claimed range; 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 12, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness difference (H₁₀-H0) ranges from 10 to 25 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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]; the value of H10-H0 = 10.5 anticipating the claimed range; 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 13, the combined Takihara, Nesbitt, and Watanabe disclose that the hardness difference (H12.5- H5.0) ranges from 5 to 18 in Shore C hardness (see specifically, the NPL Examiner’s Calculation using Watanabe: Table 4, Example 1; 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]; the value of H12.5-H5 = 8.3 anticipating the claimed range; 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 14, the combined Takihara, Nesbitt, and Watanabe disclose a mass ratio (polybutadiene rubber/butyl rubber) of the polybutadiene rubber to the butyl rubber ranges from 40/60 to 90/10 (Nesbitt: col. 5, lines 58-65; noting a range 10:90 to about 90:10 makes obvious the claimed range). In the alternative, regarding the exact ratio of polybutadiene to butyl 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 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 Nesbitt which specifically states that that ratio of polybutadiene to butyl rubber is a result-effective variable used to optimize COR (Nesbitt: col. 5, line 40 to col. 6, line 17). 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 can be found through routine experimentation in order to optimize the core COR.
Regarding claim 15, the combined Takihara, Nesbitt, and Watanabe disclose that the butyl rubber has a Mooney viscosity (ML1+8 (125 °C)) ranging from 28 to 60 (Nesbitt: col. 8, lines 21-35; specifically listing a value of “46”; noting Nesbitt does not specifically state if the temperature of the measurement is 100oC or 125oC, but it would have been obvious to a POSA that it could be 125oC because these are typically the only two choices used to measure Mooney viscosity of rubber). In the alternative, assuming arguendo that the value 46 is measured at a temperature of 100oC, conversion to 125oC can be accomplished using the formula U100 = U125 x 1/(1/(1+0.000061x(125-100)). Solving for U125 = 45.9, so the value would still anticipate the claimed range.
Regarding claim 16, the combined Takihara, Nesbitt, and Watanabe disclose that a hardness difference (Hm-Hc) between the slab hardness (Hm) of the intermediate layer composition and the slab hardness (Hc) of the cover composition is more than 0 and 50 or less in Shore D hardness (Takihara: Table 7, Example 1; noting 63 for the intermediate layer, and 31 for the outer cover layer, so 63-31 = 32; the disclosed value anticipating the claimed range, see par. [0070] making obvious “composition”).
Regarding claim 17, the combined Takihara, Watanabe, and Umezawa disclose that the hardness difference (H₁₀ - H0) is 10.5 or more in Shore C hardness (Takihara: see Examiner’s Calculations, NPL, see also claim 1). It is noted that the combined Takihara, Watanabe, and Umezawa disclose that the value is 12 or more. 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. [0040] of their specification, applicant specifically states that the value can be “10 or more”, and for that matter, does not even give any criticality whatsoever for having the (H10-H0) value be “10 or more”. Restated, applicant has no criticality for the lesser included range of “12 or more” and a POSA would understand that any value of with the range of “10 more” 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 10.5 and 12 to yield the same properties, the range of “12 or more” is obvious under the holding in Titanium Metals.
Regarding claim 18, the combined Takihara, Watanabe, and Umezawa disclose that the hardness difference (H₁₀ - H0) is 10.5 or more in Shore C hardness (Takihara: see Examiner’s Calculations, NPL, see also claim 1). It is noted that the combined Takihara, Watanabe, and Umezawa disclose that the value is 14 or more. 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. [0040] of their specification, applicant specifically states that the value can be “10 or more”, and for that matter, does not even give any criticality whatsoever for having the (H10-H0) value be “10 or more”. Restated, applicant has no criticality for the lesser included range of “14 or more” and a POSA would understand that any value of with the range of “10 more” 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 10.5 and 14 to yield the same properties, the range of “14 or more” is obvious under the holding in Titanium Metals.
Response to Arguments
Applicant's arguments filed 7/8/26 have been fully considered but they are not persuasive.
103 Discussion
Applicant’s Remarks and submission of Exhibits A and B are not compelling based on the following discussion. Applicant essentially asks the Examiner to limit the term “butyl rubber” to only the specifically identified “butyl rubber” (i.e. nothing beyond anything except exactly “butyl rubber”). Respectfully submitted, as discussed in the interview, the term “butyl rubber” does not have a specifical definition, the Examiner does not import limitations from the specification in the claims, applicant has not amended the claims to specifically require/limit this narrow interpretation, and the claim phrase uses “contains” (i.e. “the bas rubber contains a polybutadiene rubber and a butyl rubber”) which is open ended under MPEP 2111.03 (I). Furthermore, Nesbitt clearly discloses and evidences that the generic term “butyl rubber” is synonymous with “halobutyl rubber” when it states “It has been further found that increasing the amount of polybutadiene will increase the C.O.R. of the balls and in turn increasing the amount of butyl rubber will decrease the C.O.R. of the balls” (col. 7, lines 38-40; emphasis added). As such, the Examiner maintains his rejection that a “halobutyl rubber” reads on “butyl rubber” (i.e. that “halobutyl rubber” is a type of “butyl rubber”, i.e. it is a species that reads on the generic term). This position is reinforced by the citation to Nesbitt above.
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 than 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. Again, with regards to Nesbitt, applicant argues on page 8 that Nesbitt does not disclose the core hardness profile (i.e. H10 – H0) greater than 10 or Hm > Hc. Again, Takihara already discloses these two limitations. Nesbitt is brought in to show that butyl rubber can be used in the core to reduce the COR. Along those lines, applicant actually has no criticality whatsoever for H10 – H0 being greater than 10 (or 12 or 14) and less than 25. That is, the specification gives no specific benefit whatsoever for having H10-H0 being greater than 10 and less than 25.
As such, the arguments are not compelling and this action is made final.
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
7/27/26
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
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