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 1-20 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 9, the limitation providing core hardness at a point 10 mm radial distance from a center being 72 Shore C or more constitutes new matter which was not disclosed in the originally filed specification and cannot be added. The examiner notes that a hardness range for the 10 mm point is not disclosed without a lower boundary. The table of examples in the originally filed specification discloses only value of 72 Shore C.
Claim 17 is 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. The limitation providing core surface hardness of 85 Shore C or less was not disclosed in the originally filed specification and cannot be added. The examiner notes that only a disclosure of the range including a lower boundary was originally disclosed.
Claims 18 and 19 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. The limitations providing a hardness difference between a 10 mm point hardness and center hardness of the core in ranges of 12 or more and 14 or more respectively constitute new matter which was not disclosed in the originally filed specification and cannot be added. The examiner notes that only a disclosure of the range including an upper boundary was originally disclosed.
Claim 20 is 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. The limitation providing core surface hardness of 85 Shore C or less, a core center hardness of 60 shore C or less, and a 12.5 mm point hardness of 75.4 Shore C or more constitute new matter which was not disclosed in the originally filed specification and cannot be added. The ranges were originally disclosed only with upper and lower boundaries.
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.
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.
Claim(s) 1-15 and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al., U.S. Patent Application No. 2021/0106879, in view of Sullivan et al., U.S. Patent Application No. 2007/0270241, and in further view of Watanabe et al., U.S. Patent Application No. 2016/0175660. As to Claim 1, Watanabe, ‘879, teaches a golf ball comprising a spherical core (1), an intermediate layer (2) covering the core, and an outermost cover (3) positioned outside the intermediate layer, and having a plurality of dimples (D) formed on the cover, paragraph 0019. The core may be formed from a base rubber composition containing a base rubber, a co-crosslinking agent, and a crosslinking initiator, paragraphs 0023-0026. The base rubber may contain polybutadiene, paragraph 0029. The slab hardness of the intermediate layer composition forming the intermediate layer may be greater than the slab hardness of a cover composition forming the outermost cover, see Table 5, Example 1 Watanabe, ‘879, teaches an occupation ratio of a total area of the dimples in a surface area of a virtual sphere that is assumed to have no dimples may be 75% or more, paragraph 0093. Watanabe, ‘879, teaches that other rubbers may be blended with polybutadiene, paragraph 0029, but Watanabe, ‘879, is silent as to the inclusion of butyl rubber in the base rubber composition. Sullivan teaches a golf ball core composition including butyl rubber in an amount of 10 to 60 mass %, paragraphs 0016 and 0019. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, with a butyl rubber component in the core composition, in an amount 10 to 60 mass % as taught by Sullivan, to provide Watanabe, ‘879, with a known substitute core composition component. Watanabe, ‘879, as modified, does not disclose a dimple. Watanabe, ‘660, teaches a similar golf ball, paragraph 0021. Watanabe, ‘660, teaches a total volume of the plurality of dimples may be 365 cubic mm or more, paragraphs 0096 and 0097, noting total lower dimple volume 0.6% to 1.0% of ball volume and ball diameter of 42.67 mm., paragraph 0127 and see Table 3. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with a dimple configuration having total volume as claimed and as taught by Watanabe, ‘660, to provide Watanabe, ‘879, as modified, with a known substitute dimple configuration. Watanabe, ’879, teaches a core hardness profile having particular ranges of hardness values at specified radius points, paragraphs 0137 and 0138 and see Figure 2 and Table 4. Watanabe, ‘879, teaches that hardness values establishing a core hardness profile represent a result effective variable, paragraph 0049, noting that favorable spin and distance may be obtained. Watanabe, ‘879, teaches that core hardness at a 10 mm point from the core center may be 70.7 Shore C. Watanabe, ‘879, as modified, discloses the claimed invention except for providing a 10 mm point hardness of 72 Shoe C or more. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide 10 mm point hardness within the claimed range, since 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. As to Claim 2, Watanabe, ‘660, teaches that the total lower volume of the plurality of dimples may be 400 cubic mm or more, paragraphs 0096 and 0097, it would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with a total lower dimple volume as claimed and as taught by Watanabe, ‘660, the examiner finding that the same rationale applied in Claim 1 is equally applicable. As to Claims 3 and 18, Watanabe, ‘ 879, teaches a core hardness profile exhibiting Shore C hardness at the center, the surface and intervening points at 2mm, 4 mm, 6 mm, 8 mm, 10 mm, 12 mm, 14 mm, 16 mm, and 18 mm, with hardness increasing at each interval, suggesting the core profile of Watanabe, ‘879, satisfies the claimed inequality expression indicating increasing hardness stepwise measured at the named points. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the core profile of Watanabe, ‘879, as claimed and as suggested to provide a known substitute core hardness profile. Watanabe, ‘879, teaches that the hardness difference between 10 point hardness and center hardness may be 10 or more (12 or more) Shore C (13), see Table 4, Example 1. As to Claim 4, Watanabe, ‘879, teaches that a difference between the 12 mm point and the 6 mm point may be 5 or more Shore C (13), suggesting a difference of 5 or more between 12.5 mm and 5 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with the difference in hardness between the points as claimed, as suggested. As to Claim 5, Watanabe, ‘879, teaches that core center hardness may be 60 Shore C or less, paragraph 0044. As to Claim 6, Watanabe, ‘879, teaches that the intermediate layer composition may contain an ionomer resin as a base resin, paragraph 0058, and the cover composition forming the outermost cover may be a resin composition containing a urethane resin as a base resin, paragraph 0069. As to Claim 7, Watanabe, ‘879, teaches that the slab hardness of the cover composition forming the outermost cover may be 40 Shore D or less, paragraph 0065. As to Claim 8, Watanabe, ‘879, teaches that the slab hardness of the intermediate layer composition forming the intermediate layer may be 50 Shore D or more, paragraph 0054. As to Claim 9, Watanabe, ‘879, teaches that the core hardness at a 4 mm point may be about 59 and hardness at a 6 mm point may be about 62, see Table 4, Example 1, suggesting that 5 mm point hardness may range from 56 to 72. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with 5 mm point hardness within the claimed range, as suggested. As to Claim 10, Watanabe, ‘879, together with cited case law is applied as in Claim 1, with the same obviousness rationale being found applicable. As to Claim 11, Watanabe, ‘879, teaches 12 point hardness of about 75 Shore C and 14 point hardness of about 78 Shore C, suggesting 12.5 point hardness ranging from 66 to 80 Shore C. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with 12.5 mm point hardness within the claimed range, as suggested. As to Claim 12, Watanabe, ‘879, teaches 14 point hardness of about 78 and 16 point hardness of about 80, suggesting a 15 point hardness ranging from 70 to 85 Shore C. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, 879,, as modified, with 15 mm point hardness within the claimed range, as suggested. As to Claim 13, Watanabe, ‘879, teaches surface hardness ranging from 70 to 85 Shore C, paragraph 0045. As to Claim 14, Watanabe, ‘879, teaches a hardness difference between intermediate layer slab hardness and cover composition slab hardness of more than zero and less than 50 Shore D, see Table 5, Example 1. As to Claim 15, Watanabe, ‘879, teaches that rubber material other than the polybutadiene may be added in amounts within a range that does not detract from advantageous effects, paragraph 0029. Sullivan teaches that the proportion of polybutadiene to butyl rubber may range from 40/60 to 90/10, paragraph 0016. Noting the additional elastomer present in an amount of 5 to 50 parts by weight per 100 parts by weight of base rubber. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with a mass ratio of polybutadiene rubber to butyl rubber within the claimed range, as taught by Sullivan, to provide Watanabe, ‘879, as modified, with a known substitute concentration of butyl rubber. As to Claim 17, Watanabe, ‘879, teaches that core surface hardness may be 85 Shore C or less, paragraph 0045. As to Claim 19, Watanabe, ‘879, is applied as in Claims 3 and 18. The examiner notes that the core hardness values establishing a hardness profile represent a result effective variable, as discussed in the treatment of Claim 1. Watanabe, ‘879, as modified, discloses the claimed invention except for providing that the difference in the core hardness measure between the 10 mm point and the core center may be increased from 13.3 Shore C to 14 or more Shore C, see Table 4, Example 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with a difference in hardness between the 10 mm point and the core center to within the claimed range, since 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. As to Claim 20, Watanabe, ‘879, teaches that core surface hardness may be 85 Shore C or less, paragraph 0045. Center hardness of the spherical core may be 60 Shore C or less, paragraph 0044. Watanabe, ‘879, teaches core hardness at a 12 mm point of 75.2 Shore C and core hardness at a 14 mm point of 77.6 Shore C, see Table 4, Example 1, suggesting that core hardness at a 12.5 mm point may be 75.4 or more (75.8 by interpolation). It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, with a 12.5 mm point hardness within the claimed range as taught and suggested, as a known substitute hardness value within the core hardness profile.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe, ‘879, in view of Sullivan, and Watanabe, ‘660, as applied to claim 1 above, and further in view of Inoue et al., U.S. Patent Application No. 2019/0232117. Watanabe, ‘879, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 16, Watanabe, ‘879, as modified, does not disclose the Mooney viscosity of the butyl rubber component. Inoue teaches that a golf ball core may include a blend of polybutadiene rubber and butyl rubber, paragraph 0105. A suitable butyl rubber may have Mooney viscosity ranging from 28 to 60, measured as claimed, paragraph 0026. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Watanabe, ‘879, as modified, with a butyl rubber component having Mooney viscosity within the claimed range, as taught by Inoue, to provide Watanabe, ‘879, as modified, with a known substitute material.
Response to Arguments
Applicant’s arguments submitted 11 August 2026 have been considered but are moot because the new ground of rejection.
In response to applicant’s argument that Sullivan, ‘241, teaches a rubber composition including an oily substance, the examiner maintains the position that the presence of an additional feature does not overcome a rejection based on the disclosure of claimed features. Sullivan, ‘241, teaches that a core base rubber may include polybutadiene as a base rubber and butyl rubber is listed as suitable additional elastomer component. Further, Sullivan,’241, teaches that the additional elastomer may be present in the claimed concentration, as discussed in the office action.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant’s argument that Sullivan, ‘241, fails to teach the named listed features of the inventive ball, the examiner maintains the position that the failure of a secondary reference to teach all of the claimed limitations does not overcome a rejection based on the combination of teaching of a primary reference combined with that of a secondary reference.
Conclusion
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.
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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 20 August 2026
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