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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 5, 7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6 and 5, respectfully of U.S. PG Pub No. 20250041671 in view of Takihara et al. (US 20170165528).
Regarding Claim 1, claim 1 of the reference PG Pub recites all of the limitations of claims 1 of the instant application except for the spherical core formed from a rubber composition containing a base rubber, the base rubber contains natural rubber.
Takihara teaches:
A golf ball(2) comprising a spherical core(4), wherein the spherical core is formed from a rubber composition containing a base rubber(P[0035]), the base rubber contains a natural rubber(P[0035]).
Therefore, it would have been obvious to one of ordinary skill of the art before the effective filing date of the claimed invention to modify U.S. PG Pub No. 20250041671 in view of Takihara such that the spherical core contains a base rubber containing natural rubber as Takihara teaches the use of a “natural rubber” is a known material suitable for making spherical cores in golf balls. It would have been obvious to one having ordinary skill in the art at the time of the invention to have selected a “natural rubber” because it is merely the selection of an art known material suitable for the construction of a golf ball core. In further support of this position, the selection of a known material to make an abradable coating prior to the invention was held to be obvious see In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding Claims 5, 7 and 10, claims 2, 6 and 5 of U.S. PG Pub No. 20250041671 recites all of the limitations of claims 5, 7 and 10 of the instant application.
Therefore, Claims 5, 7 and 10 are obvious over U.S. PG Pub No. 20250041671 in view of Takihara.
Claims 1, 7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 4, respectfully of U.S. PG Pub No. 20250041669 in view of Takihara et al. (US 20170165528).
Regarding Claim 1, claim 1 of the reference PG Pub recites all of the limitations of claims 1 of the instant application except for the spherical core formed from a rubber composition containing a base rubber, the base rubber contains natural rubber; a total lower volume of a plurality of dimples from on the outermost cover is 365 mm3 or more, and an occupation ratio of a total are of the plurality of dimples in a surface are of a virtual sphere that is assumed to have no dimples on the outermost cover is 75% or more
Takihara teaches:
A golf ball(2) comprising a spherical core(4), an intermediate layer(6) covering the spherical core, and an outermost cover(8) positioned outside the intermediate layer and having a plurality of dimples(10) formed thereon(Fig 1; P[0032]), wherein
the spherical core is formed from a rubber composition containing a base rubber(P[0035]), a co-crosslinking agent(P[0036]), and a crosslinking initiator(P[0039]),
the base rubber contains a natural rubber(P[0035]),
the co-crosslinking agent contains methacrylic acid and/or a metal salt thereof(P[0036]-P[0037]),
a total lower volume of the plurality of dimples is 365 mm3 or more(P[0110]), and
an occupation ratio of a total area of the plurality of dimples in a surface area of a virtual sphere that is assumed to have no dimples on the outermost cover is 75% or more(P[0108]).
Therefore, it would have been obvious to one of ordinary skill of the art before the effective filing date of the claimed invention to modify U.S. PG Pub No. 20250041669 in view of Takihara such that the golf ball has an outermost cover with a plurality of dimples, the spherical core contains a base rubber containing natural rubber, and a total lower volume of the plurality of dimples is 365mm3 or more, and an occupation ratio of 75% or more, as Takihara teaches the use of a “natural rubber” is a known material suitable for making spherical cores in golf balls. It would have been obvious to one having ordinary skill in the art at the time of the invention to have selected a “natural rubber” because it is merely the selection of an art known material suitable for the construction of a golf ball core. In further support of this position, the selection of a known material to make an abradable coating prior to the invention was held to be obvious see In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Further, it would have been obvious to make a total lower volume of the plurality of dimples is 365mm3 or more, and an occupation ratio of 75% or more to improve flight performance characteristics of the ball in the air(P[0108],P[0110])
Regarding Claims 7 and 10, claims 5 and 4 of U.S. PG Pub No. 20250041669 recites all of the limitations of claims 7 and 10 of the instant application.
Therefore, Claims 7 and 10 are obvious over U.S. PG Pub No. 20250041669 in view of Takihara.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 5, and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takihara et al. (US 20170165528), hereinafter: “Takihara”.
In Regard to Claim 1
Takihara teaches:
A golf ball(2) comprising a spherical core(4), an intermediate layer(6) covering the spherical core, and an outermost cover(8) positioned outside the intermediate layer and having a plurality of dimples(10) formed thereon(Fig 1; P[0032]), wherein
the spherical core is formed from a rubber composition containing a base rubber(P[0035]), a co-crosslinking agent(P[0036]), and a crosslinking initiator(P[0039]),
the base rubber contains a natural rubber(P[0035]),
the co-crosslinking agent contains methacrylic acid and/or a metal salt thereof(P[0036]-P[0037]),
a total lower volume of the plurality of dimples is 365 mm3 or more(P[0110]), and
an occupation ratio of a total area of the plurality of dimples in a surface area of a virtual sphere that is assumed to have no dimples on the outermost cover is 75% or more(P[0108]).
In Regard to Claim 5
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein the total lower volume of the plurality of dimples is 400 mm3 or more(P[0110]).
In Regard to Claim 7
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein a slab hardness of an intermediate layer composition forming the intermediate layer is greater than a slab hardness of a cover composition forming the outermost cover(see Table 7, Ex. 1; Hm = 63 > Hc = 31).
In Regard to Claim 8
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein a cover composition forming the outermost cover is a resin composition containing a urethane resin as a base resin(P[0074]-P[0075]), and
a slab hardness of the cover composition forming the outermost cover is 40 or less in Shore D hardness(see Table 7, Ex. 1; Hc = 31).
In Regard to Claim 9
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein an intermediate layer composition forming the intermediate layer is a resin composition containing an ionomer resin as a base resin(P[0057]), and
a slab hardness of the intermediate layer composition forming the intermediate layer is 50 or more in Shore D hardness(see Table 7, Ex. 1; Hm = 63).
In Regard to Claim 10
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein the spherical core has a surface hardness Hs ranging from 60 to 87 in Shore C hardness(see Table 8, Ex. 1; Hc = 81), and a center hardness H0 ranging from 55 to 77 in Shore C hardness(see Table 8, Ex. 1; H1 = 55).
In Regard to Claim 11
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein the golf ball has a surface hardness ranging from 45 to 65 in Shore D hardness(see Table 9, Ex. 6; Hc = 47).
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.
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takihara in view of Watanabe (US 20100298067).
In Regard to Claims 2 and 3
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above), wherein the golf ball that would inherently have some hardness gradient (pars. [0052]-[0053]).
Takihara fails to teach:
wherein 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, a hardness (H15) at a point having a radial distance of 15 mm from the center of the spherical core, and a surface hardness (Hs) of the spherical core satisfy a relationship of H0<H2.5<H5.0<H7.5<H10<H12.5<H15<Hs.
Watanabe teaches:
An analogous golf ball with a similar three piece construction wherein a center hardness (Shore C hardness) of the spherical core, a hardness (Shore C hardness) at each point of 2.5 mm, 5 mm, 7.5 mm, 10 mm, 12.5 mm and 15 mm from a center of the spherical core toward a surface of the spherical core, and a surface hardness (Shore C
hardness) of the spherical core are represented by Ho, H2.5, H₅, H7.5, H10, H12.5, H15, Hs respectively, so as to satisfy H0<H2.5<H5.0<H7.5<H10<H12.5<H15<Hs and the following relationships (1) to (7) are satisfied; (H2.5-H₀) < 4 (1), (H5-H2.5) < 4 (2), (H7.5-H5) < 4 (3), (H10-H7.5) < 4 (4), (H12.5-H10) < 4 (5), (H15-H12.5) < 4 (6), and (Hs-H15) < 4 (7) (see specifically, the NPL Examiner's Calculation using Table 4, Example 3; 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 all the values for claims 2 and 3 are met, except for Hs-H15 < 4; also noting that "JIS-C" and "Shore C" are the same scale, see as evidence, Hashimoto et al., Pat. No. 5,093,402, col. 8, lines 39-40).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Takihara to use the "approximately linear gradient" of Table 4, Example 3 so that the above equations are 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 the limitation requiring Hs-H15 < 4 in claim 3, it is noted that the combined Takihara and Watanabe disclose that the value is 5. 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. [0056] of their specification, applicant has no criticality for the range of "less than 4" and a PHOSITA would understand that any value close to the value of "5" would have the same "same properties"; completely consistent with the holding in Titanium Metals. As such, based on applicant's own disclosure, a PHOSITA would understand a value of 4 and 5 to yield the same properties, the range of "less than 4" is obvious under the holding in Titanium Metals.
In Regard to Claim 4
Takihara in view of Watanabe teaches:
The golf ball according to claim 2(see rejection of claim 2 above), wherein a hardness difference (Hs-H0) between the surface hardness (Hs) of the spherical core and the center hardness (H0) of the spherical core is 10 or less in Shore C hardness(see Takihara Table 9, Ex. 7; H2 = 70, H1 = 60, DH = 70-60 = 10).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takihara in view of Iwami (US 6878777).
In Regard to Claim 6
Takihara teaches:
The golf ball according to claim 1(see rejection of claim 1 above)
Takihara fails to teach:
wherein an amount of the natural rubber ranges from 10 mass % to 80 mass % in 100 mass % of the base rubber.
Iwami teaches:
An analogous multi-piece golf ball having a core wherein an amount of the natural rubber ranges from 10 mass % to 80 mass % in 100 mass % of the base rubber(<40% mass natural rubber; Col 6, ln. 50-60)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Takihara to incorporate the teachings of Iwami to construct the core of blended rubber wherein natural rubber ranges from 10 mass % to 80 mass % of the base rubber to improve rebound performance, provide suitable resistance to abrasion, anti-wearability properties and larger coefficient of restitution(Col 7, ln. 25-50; Col 12, ln. 4-20).
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20250170458 A1
INOUE; Hidetaka et al.
US 20250135293 A1
INOUE; Hidetaka et al.
US 20250041671 A1
Inoue; Hidetaka et al.
US 20170165528 A1
TAKIHARA; Hironori et al.
US 20100298067 A1
Watanabe; Hideo
US 20160310798 A1
MIMURA; Kohei et al.
US 20200023240 A1
WATANABE; Hideo et al.
US 6878777 B2
Iwami; Satoshi
US 20250170459 A1
INOUE; Hidetaka et al.
The above references are cited for teaching golf balls with features similar to that of the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN P WOLCOTT whose telephone number is (571)272-9837. The examiner can normally be reached M-F 8:00am-4:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/BRIAN P WOLCOTT/Primary Examiner, Art Unit 3711
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