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 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The structure of claim 1 is unclear. The preamble of claim 1 recites a rubber “core” and a cover layer. The cover layer is then defined by a (I) polyurethane or polyurea, and (II) a “core”-shell polymer. It is unclear if this “core”-shell polymer is somehow related to the previously recited “core”, or, if this is an entirely separate element. Lines 5-7 also recite details of a “core” component, and details of a “shell” component, which read as though these are different layers / elements of the ball. However, it appears these elements are defined as materials that are blended together to make a single outer layer. It is unclear, then, why these elements are recited separately as a “core” and a “shell,” when they both appear to simply be material components to a chemical blend that makes up a single outer cover layer. Appropriate correction / clarification is required.
Claim Rejections - 35 USC § 102 / 35 USC § 103
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mochizuki (US PGPub. No. 2019/0184240 A1).
In Reference to Claims 1-6
Mochizuki teaches (Claim 1) A golf ball comprising a rubber core (paragraph 0059) of at least one layer and a cover of at least one layer encasing the core (paragraph 0002), wherein at least one layer of the cover is formed of a resin composition comprising: (I) a polyurethane or a polyurea (paragraph 0008), and (II) a core-shell polymer in which the core is a crosslinked acrylic rubber particle and the shell consists of an acrylic polymer (paragraph 0011; paragraph 0045, and paragraphs 0091 and 0093); the amount of component (II) included per 100 parts by weight of component (I) is less than 15 parts by weight (paragraphs 0008 and 0014); and the CS₁ value calculated by formula (1) below CS₁ = (CV₅₀ - CV₁₂)/38 (1) (wherein CV₅₀ is the coefficient of restitution at an incident velocity of 50.0 m/s and CV₁₂ is the coefficient of restitution at an incident velocity of 12.0 m/s) is larger than -4.08x10-³ (paragraphs 0074 and 0075 and table 2; the examiner notes here that this is simply an inherent / resultant characteristic of the materials claimed; since the examiner cannot test materials, there is no way to know for certain if the disclosed material composition of the ball of Mochizuki would meet this formula or not, however, it appears that the blend for item II listed in Mochizuki would produce properties identical to what is claimed, since, specifically, item II is disclosed to be Parapet material [applicant’s specification paragraph 0118], and, since the Mochizuki reference also teaches using Parapet material for this element; see paragraphs 0091 and 0093);
(Claim 2) wherein the CS₂ value calculated by formula (2) below CS2 = (1.0 - CV12/45)/33 (2) (wherein CV12/45 is the coefficient of restitution at an incident velocity of 12.0 m/s when the coefficient of restitution at an incident velocity of 45.0 m/s is set to 1.0) is larger than - 5.23x10⁻³ (paragraphs 0074 and 0075 and table 2; the examiner notes here that this is simply an inherent / resultant characteristic of the materials claimed; since the examiner cannot test materials, there is no way to know for certain if the disclosed material composition of the ball of Mochizuki would meet this formula or not, however, it appears that the blend for item II listed in Mochizuki would produce properties identical to what is claimed, since, specifically, item II is disclosed to be Parapet material [applicant’s specification paragraph 0118], and, since the Mochizuki reference also teaches using Parapet material for this element; see paragraphs 0091 and 0093);
(Claim 3) wherein component (II) does not include a plasticizer (paragraphs 0008 and 0011, none listed).
(Claim 4) wherein component (II) has a melt flow rate (MFR), as measured at 230°C and under a load of 2.16 kgf (ISO 1133), which is 18 g/10 min or less (no melt flow rate is disclosed in Mochizuki, however, this is also an inherent property to the materials disclosed in Mochizuki; as explained above, the examiner cannot test for material properties, therefore, there is no way to know whether or not the materials disclosed in Mochizuki would have this melt flow rate, however, it appears that the blend for item II listed in Mochizuki would produce properties identical to what is claimed, since, specifically, item II is disclosed to be Parapet material [applicant’s specification paragraph 0118], and, since the Mochizuki reference also teaches using Parapet material for this element; see paragraphs 0091 and 0093).
(Claim 5) wherein component (II) has a rebound resilience of 22% or less (paragraph 0047, 20%);
(Claim 6) wherein component (II) has a Shore D hardness of from 22 to 40 (paragraph 0046).
As explained above, the examiner cannot test material properties to determine if the claimed coefficient of restitution formula and melt flow rates are met by the disclosed materials of Mochizuki. However, since the material listed for item II is disclosed to be Parapet material (applicant’s specification paragraph 0118), and, since the Mochizuki reference also teaches using Parapet material for this element (see paragraphs 0091 and 0093), it would appear that these values would inherently be met by the disclosed material of Mochizuki.
However, in the event that the disclosed material, COF, and MFR values claimed are somehow different from what is taught in Mochizuki, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the specific material with the COR and MFR values claimed simply as a matter of engineering design choice, since, it has been held that the selection of a known material based on its suitability for its intended use is an obvious matter of engineering design choice. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). And further, since 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). Selecting a known type of acrylic polymer / rubber blend to create a suitable golf ball cover with desired characteristics is an obvious matter of engineering design choice and is not a patentable advance. Further, coefficient of restitution and melt flow rate are result effective variables, i.e. variables that achieve a recognized result. In this case, selecting a material based on coefficient of restitution achieves a desired rebound (see paragraphs 0022, 0047, and 0095) and selecting a material property for melt flow rate produces a desired melt characteristic during manufacturing (paragraph 0027). Therefore, simply claiming optimum or workable ranges for these values is simply a matter of routine experimentation, and is not a patentable advance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additionally cited references disclose inventions similar to applicant’s claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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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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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711
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