DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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.
Internet/E-mail Communication
In order to permit communication regarding the instant application via email, Applicant is invited to file form PTO/SB/439 (Authorization for Internet Communications) or include the following statement in a separately filed document (see MPEP 502.03 II):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
If such authorization is provided, please include an email address in the remarks of a filed response. The examiner’s e-mail address is Christopher.Legendre@uspto.gov.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 19 September 2024 was filed before the mailing date of the first action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is hereby considered.
Specification
The disclosure is objected to because of the following informalities:
In the Abstract, line 1, “The present invention provides a” should be changed to --A-- (note: the language of the Abstract should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc - see MPEP 608.01(b)).
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in this Office action.
There are no limitations deemed to invoke 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
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.
Claims 1-13 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, the term “large” is a relative term which renders the claim indefinite since it is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. To overcome this rejection, the Office suggests changing “large number” to --plurality--. Due to dependency, this rejection also applies to claims 2-13.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 10, and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kuwahara et al. (US 12,318,666 - hereafter referred to a Kuwahara; foreign priority date of 30 November 2022).
The applied reference has a common assignee / applicant / joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
In reference to claim 1 (as far as it is clear and definite)
Kuwahara discloses:
A multi-piece solid golf ball comprising a core (1), a surrounding layer (i.e., a radially inner layer of the plurality of layers forming intermediate layer 2 - see col.1:ll.64-66), an intermediate layer (i.e., a radially outer layer of the plurality of layers forming intermediate layer 2 - see col.1:ll.64-66), and a cover (3), wherein a large number of dimples (D)(note: large number is a relative term that is not defined by the disclosure) are formed on an outside surface of the cover, the core is formed of a single layer or a plurality of layers of a rubber composition (see col.6:ll.6-7), the surrounding layer is formed of a single layer or a plurality of layers of a resin composition (see col.4:ll.55-56), the intermediate layer and the cover are both formed of a single layer of a resin composition (see col.17:ll.18-19 and col.4:ll.55-56), and
a relationship between an initial velocity of an intermediate layer-encased sphere and an initial velocity of the ball satisfies the following condition (see values in Table 8):
(initial velocity of ball) < (initial velocity of intermediate layer-encased sphere), and
where a deflection when the ball is compressed under a final load of 1,275 N (130 kgf) from an initial load of 98 N (10 kgf) is not more than 3.0 mm (see col.2:ll.43-47),
a ratio CL1/CD1 of a lift coefficient CL1 at a Reynolds number of 218,000 and a spin rate of 2,800 rpm to a drag coefficient CD1 is denoted by A1, a ratio CL2/CD2 of a lift coefficient CL2 at a Reynolds number of 184,000 and a spin rate of 2,900 rpm to a drag coefficient CD2 is denoted by A2, and a ratio CL3/CD3 of a lift coefficient CL3 at a Reynolds number of 158,000 and a spin rate of 3,100 rpm to a drag coefficient CD3 is denoted by A3, the following two conditions are satisfied (see col.2:ln.58 through col.3:ln.3):
0.590 ≤ A1 ≤ 0.640 and (A2 + A3)/2 ≥ 0.670.
In reference to claim 2
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1, wherein the value (see col.23:ll.47-56) of A1 is 0.590 to 0.613, the value (see col.23:ln.57 through col.24:ln.10) of A2 is 0.635 to 0.668, and the value (see col.24:ll.11-22) of A3 is 0.695 to 0.734.
In reference to claim 3
Kuwahara discloses:
The multi-piece solid golf ball according to claim 2, wherein the value (see col.23:ll.47-56) of A1 is 0.614 to 0.640, the value (see col.23:ln.57 through col.24:ln.10) of A2 is 0.669 to 0.750, and the value (see col.24:ll.11-22) of A3 is 0.735 to 0.815.
In reference to claim 4
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1, wherein the value (see col.24:ll.23-28) of (A2 + A3)/2 is 0.670 to 0.783.
In reference to claim 10
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1, wherein the resin composition of the intermediate layer contains a high-acid ionomer resin having an acid content of at least 16 wt% (see col.15:ll.4-6).
In reference to claim 12
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1, wherein the core has a hardness profile in which, letting a Shore C hardness at a core center be Cc, a Shore C hardness at a midpoint M between the core center and the core surface be Cm, Shore C hardnesses at positions 2 mm, 4 mm, and 6 mm inward from the midpoint M be Cm-2, Cm-4, and Cm-6 respectively, Shore C hardnesses at positions 2 mm, 4 mm, and 6 mm outward from the midpoint M be Cm+2, Cm+4, and Cm+6 respectively, and a Shore C hardness at the core surface be Cs, and defining surface areas A to F as follows:
• surface area A: 1/2 × 2 × (Cm-4 - Cm-6)
• surface area B: 1/2 × 2 × (Cm-2 - Cm-4)
• surface area C: 1/2 × 2 × (Cm - Cm-2)
• surface area D: 1/2 × 2 × (Cm+2 - Cm)
• surface area E: 1/2 × 2 × (Cm+4 - Cm+2)
• surface area F: 1/2 × 2 × (Cm+6 - Cm+4)
the following condition is satisfied:
(surface area E + surface area F) - (surface area A + surface area B) ≥ 1.0 (see various Examples and/or Comparative Examples having values that satisfy the instant condition).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwahara in view of Watanabe (US 6,702,694).
In reference to claim 8
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1.
Kuwahara does not disclose:
the intermediate layer contains an inorganic particulate filler, and the resin material of the intermediate layer has a specific gravity of at least 1.05.
Watanabe discloses:
a golf ball comprising an intermediate layer formed of a resin material and comprising an inorganic particulate filler for imparting durability (see col.8:ll.54-62), and wherein the resin material has a specific gravity of at least 1.05 to imbue a desired balance of crack durability and resilience (see col.10:ll.10-16)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ball of Kuwahara to configure the intermediate layer to have an inorganic particulate filler and configure the resin material to have a specific gravity of at least 1.05, as disclosed by Watanabe, for the purpose of promoting sufficient durability and/or imbuing a desired balance of crack durability and resilience.
In reference to claim 9
Kuwahara discloses:
The multi-piece solid golf ball according to claim 1.
Kuwahara does not disclose:
a difference between the specific gravity of the cover and the specific gravity of the intermediate layer is not more than 0.15.
Watanabe discloses:
a golf ball comprising a cover / outer layer (3) and an intermediate layer (2), wherein a difference between the specific gravity of the cover and the specific gravity of the intermediate is not more than 0.15 (see corresponding values in Tables 2 and 3); the value of the specific gravity of the intermediate layer imbues a desired balance of crack durability and resilience (see col.10:ll.10-16); the value of the specific gravity of the outer layer imbues a desired balance of scuff resistance and resilience (see col.15:ll.9-17).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the ball of Kuwahara to configure the cover and the intermediate layer such that a difference in specific gravity therebetween is not more than 0.15, as disclosed by Watanabe, for the purpose of imbuing a desired balance of crack durability, resilience, and scuff resistance.
Allowable Subject Matter
Claims 5-7, 11, and 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Citations of Pertinent Art
The following art is considered pertinent to Applicant’s disclosure.
Watanabe ‘661 et al. (US 2016/0175661) discloses a golf ball in which the initial velocity of the intermediate layer-encased sphere is larger than the initial velocity of the core.
Kimura (US 2012/0157235) discloses a golf ball having deflection properties within the disclosed range under the same conditions of the instant application.
Watanabe ‘143 (US 2025/0010143) and Watanabe ‘673 (US 2025/0041673) each disclose a golf ball having aerodynamic properties within the disclosed ranges of the instant application.
Watanabe ‘597 (US 12,343,597) discloses a golf ball having surface area properties, hardness properties, and deflection properties within the disclosed range under the same conditions of the instant application.
Kuwahara ‘243 et al. (US 2025/0269243) is related to the applied reference Kuwahara.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER RYAN LEGENDRE whose telephone number is (571)270-3364. The examiner can normally be reached on M-F: 9-5 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Eugene Kim can be reached at 571-272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R LEGENDRE/Primary Examiner, Art Unit 3711
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