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.
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) 1-8, 10, 13, 15-22, 24, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morgan et al., U.S. Patent Application No. 2009/0137343, in view of Morgan, 2016/0158605, and in further view of Yoneyama, U.S. Patent No. 6,210,295. As to Claim 1, Morgan, ‘343, teaches a golf ball comprising a core (12), an intermediate layer (14) covering the core, a cover (16), covering the intermediate layer, paragraph 0043. The surface of the ball may have first and second hemispherical regions, each formed by a translucent cover layer, with first and second colors providing an imaginary boundary between hemispherical regions, paragraph 0079, noting a translucent cover with pigment or dye in only one hemisphere. The outermost layer of the intermediate layer may have a single color, paragraph 0043, noting colored layer. It is inherent that the first and second colors may have a hue, but Morgan, ‘343, does not disclose a hue value for each color. Morgan, ‘605, teaches that first and second colors for a golf ball may be selected according to hue value, indicating that hue value and difference between the hue values of a first and second color constitute result effective variables, paragraphs 0011, 0035, and 0036, noting that a first and second color must be selected so as to differ in wavelength by an amount appropriate to the size of the gap in wavelength between the colors.. It would have been obvious to one of ordinary skill in the art before the effective filing date to select first and second colors for the hemispheres according to hue values, taking into account the difference in hue values for the selected colors, as taught by Morgan, ‘605, to provide Morgan, ‘343, with first and second colors providing favorable appearance. Morgan, ‘343, as modified, does not disclose that the difference in hue values may satisfy one of the claimed inequality expressions. It would have been obvious to one of ordinary skill in the art before the effective filing date to select first and second colors satisfying one of the claimed inequality expressions, 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. Morgan, ‘343. as modified, discloses the claimed invention except for providing a colorless paint film. Yoneyama teaches that a golf ball may be provided with a colorless (clear) paint film, see Abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with a colorless paint film, as taught by Yoneyama, to provide Morgan, ‘343, as modified, with a known substitute outermost layer. As to Claims 2 and 16, Morgan, ‘343, teaches that the intermediate layer may be colored with the intention that the intermediate layer may be viewed through the translucent cover, paragraph 0043. It follows that the difference in hue between the intermediate layer and the hemisphere through which the intermediate layer is being viewed each influence the perceived appearance, the teaching of Morgan, ‘605, suggesting that the color hue value of the intermediate layer and that of each hemisphere may be considered in selecting hue values. It would have been obvious to one of ordinary skill in the art before the effective filing date to select color hue values for the intermediate layer and the hemispheres, based on the difference in hue values, see paragraph 0011, to provide Morgan, ‘343, as modified, with a favorable appearance of the ball. Morgan, ‘343, as modified, discloses the claimed invention except for providing that the hue values may be selected to satisfy the claimed inequality expressions. It would have been obvious to one of ordinary skill in the art before the effective filing date to select color hue values of the intermediate layer and the hemispheres to satisfy the claimed inequality expressions, 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, supra. As to Claims 3 and 17, Morgan, ‘605, teaches that saturation and lightness values influence the appearance of a ball surface indicating that saturation and lightness together with the difference in values for first and second colors constitute result effective variables, paragraphs 0011 and 0015. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified with first and second colors selected according to saturation and lightness values, as taught by Morgan, ‘605, to provide Morgan, ‘343, as modified, with a favorable ball appearance. Morgan, ‘343, as modified, discloses the claimed invention except for providing first hemisphere color with saturation and lightness values within the claimed ranges. It would have been obvious to one of ordinary skill in the art before the effective filing date to select first hemisphere saturation and lightness values within the claimed ranges, 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, supra. As to Claims 4 and 18, Morgan’605, together with cited case law is applied as in Claim 3, with regard to the second hemisphere color, the same obviousness rationale being found applicable. As to Claims 5 and 19, the examiner notes that Morgan, ‘343, teaches that a colored intermediate layer is configured to be viewed through each of the first and second hemispheres, such that the color hue values of each contributes to the perceived appearance, as discussed above. Morgan, ‘605, is applied as above with regard to selecting the three colors according to hue values, with the same obviousness rationale being found applicable. Further, it would have been obvious to one of ordinary skill in the art before the effective filing date to select hue values for the intermediate layer and for the hemispheres within the claimed ranges, 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, supra. As to Claims 6 and 20, Morgan, ‘605, is applied as in Claims 4 and 5 with regard to the teaching of selecting colors according to saturation and lightness values. It would have been obvious to one of ordinary skill in the art before the effective filing date to select colors for the intermediate layer and the hemispheres according to saturation and lightness values, as taught by Morgan, ‘605, to provide Morgan, ‘343, as modified, with a favorable ball appearance. It would have been obvious to one of ordinary skill in the art before the effective filing date to select saturation and lightness values for the intermediate layer and for the hemispheres within the claimed ranges, 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, supra. As to Claims 7 and 21, Morgan, ‘343, teaches that first and second colors may be yellow or orange, paragraph 0044. As to Claims 8 and 22, Morgan, ‘343, teaches that the translucent cover may be formed from a resin composition containing a resin component, paragraph 0049. As to Claims 10 and 24, Morgan, ‘605, teaches that the outermost layer of the intermediate layer (intermediate layer) may be formed from a resin composition containing a resin component, paragraphs 0039 and 0040. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with an intermediate layer formed as claimed and as taught by Morgan, ‘605, to provide Morgan, ‘343, as modified, with a known substitute intermediate layer formulation. As to Claims 13 and 27, Yoneyama teaches that the colorless paint film may be a clear paint film (clear) that is transparent, see Abstract. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with clear transparent paint film, as taught by Yoneyama, to provide Morgan, ‘343, as modified, with a known substitute coating. As to Claim 15, Morgan, ‘343, as modified by Morgan, ‘605, and Yoneyama, together with cited case law, is applied as in Claim 1, with the same obviousness rationale being found applicable. Further, 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 exhibiting the intermediate layer not clearly distinguishable from the cover when viewed through the cover. "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.
Claim(s) 9 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morgan, ‘343, in view of Morgan, ‘605, and Yoneyama, as applied to claims 1 and 8 above, and further in view of Berard, U.S. Patent No. 4,798,386, and Urita, Japanese Patent Application No. JP 2017-118950. Morgan, ‘343, as modified, substantially shows the claimed limitations as discussed above. As to Claims 9 and 23, Morgan, ‘343, as modified, is silent as to a concentration of titanium oxide and dye and/or pigment. Berard teaches that a golf ball cover may comprise pigment in a range of 0.5 to 7 parts by mass (weight) to 100 parts of base reason, see Abstract. Urita teaches that a golf ball cover may comprise a whitener agent in a range from 0.001 to 0.7 parts by mass (weight) with respect to 100 parts of resin component, paragraph 0028. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with dye and/or pigment and a whitener agent, in the claimed ranges, as taught by Berard and Urita, to provide Morgan, ‘343, as modified, with known substitute ranges for dye and/or pigment and whitener agent. Morgan, ‘343, as modified, discloses the claimed invention except for specifying titanium oxide as the whitener agent. It would have been obvious to one having ordinary skill in the art before the effective filing date to select titanium oxide as the whitener agent, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960).
Claim(s) 11, 12, 25, and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morgan, ‘343, in view of Morgan, ‘605, and Yoneyama, as applied to claims 1 and 10 above, and further in view of Urita. Morgan, ‘343, as modified, substantially shows the claimed limitations, as discussed above. As to Claims 11 and 25, Morgan, ‘343, as modified, is silent as to a concentration of titanium oxide and dye and/or pigment in the intermediate layer resin composition. Urita teaches an intermediate layer comprising a whitener agent in an amount of 0.001 to 0.7 parts by mass (weight) per 100 parts resin and dye in amount of 0.5 to 7 parts by mass (weight) to 100 parts resin, paragraph 0028. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with whitener agent and dye, in the claimed amounts, as taught by Urita, to provide Morgan, ‘343, as modified, with a known substitute concentration of whitener agent and dye. Morgan, ‘343, as modified, discloses the claimed invention except for specifying titanium oxide as the whitener agent. It would have been obvious to one having ordinary skill in the art before the effective filing date to select titanium oxide as the whitener agent, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960). As to Claims 12 and 26, Morgan, ‘343, teaches that the intermediate layer may be white, as opposed to being colored, paragraph 0043. Dye and/or pigment may be added to any layer of the ball, paragraph 0081, suggesting that a white intermediate layer may be formed with a whitener but not dye and/or pigment. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the intermediate layer with whitener and no dye or pigment as taught and suggested to provide a known substitute white intermediate layer. Urita is applied as in Claim 11 with regard to a whitener being used in the intermediate layer, the same obviousness rationale being found applicable. Morgan, ‘343, as modified, discloses the claimed invention except for specifying titanium oxide as the whitener agent, in an amount within the claimed range. Urita teaches a whitener in an amount up to 7 parts by mass (weight) per 100 parts resin, and that the amount may be a suitable amount, paragraph 0028, indicating that the concentration of whitener is a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date to introduce whitener in an amount 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, supra. It would have been obvious to one having ordinary skill in the art before the effective filing date to select titanium oxide as the whitener agent, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416 (CCPA 1960).
Claim(s) 14 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morgan, ‘343, in view of Morgan, ‘605, and Yoneyama, as applied to claim 1 above, and further in view of Namba et al. U.S. Patent Application No. 2019/0388734. Morgan, ‘343, as modified, substantially shows the claimed limitations, as discussed above. As to Claim 14 and 28, Morgan, ‘343, as modified, is silent as to the colorless paint film providing a matte. Namba teaches a golf ball coating comprising a filler-containing delustering paint, paragraph 0018. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Morgan, ‘343, as modified, with a filler containing delustering paint, as taught by Namba, to provide Morgan, ‘343, as modified, with a golf ball matte finish, to yield the predictable result of an alternate ball appearance.
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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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 28 August 2026
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