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 § 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 1-13 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. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “edge angles” in claim 1 is used by the claim to mean “angle of a tangent line at a particular point in the depth of a dimple,” while the accepted meaning is “the angle where the edge of the dimple meets the land of the ball surface.” The term is indefinite because the specification does not clearly redefine the term.
Claim 11 is 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. It is not clear what parameters or characteristics may be considered to determine the type of a dimple. The scope of the claim is indefinite.
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, 2, and 5-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaski et al., U.S. Patent Application No. 2005/0187038. As to Claims 1 and 9, Sasaki teaches a golf ball (2) on which a large number of dimples (12) may be formed on the surface, paragraph 0023. The dimples may have a dimple profile comprising a curved wall (curved faces), paragraphs 0042-0044. It is inherent that points where depths are 10 %, 20%, and 30 % exist. Sasaki teaches that at a point where the dimple depth is 10%, the dimple profile is turning downward toward the bottom, see Figure 3. At a point where the dimple depth is 20% the curve of the dimple profile has a point of inflection to begin a curved path toward the bottom, marking an area of steepest decline; therefore, an edge angle greater than the edge angle at the 10% depth, see Figure 3. It follows that ED2 is greater than ED1. The curved profile below the inflection point continues to curve toward the dimple bottom. It is inherent that the 30% point of depth occurs between 20% and 50%, suggesting that the edge angle at 30% may be less than the edge angle at 20%, see Figure 3, from which it follows that ED3 may be less than ED2. Sasaki teaches that the dimple profile design, with curvature radii providing the edge angles as disclosed, reduces the tendency of the ball surface to deteriorate and maintains flight performance, paragraph 0046, indicating that the curvature radii at noted points in the dimple profile represents a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date to set ED2 greater than ED1, as taught by Sasaki, to provide improved durability and to maintain flight performance. Sasaki, discloses the claimed invention except for specifically indicating that ED2 may be greater than ED3. It would have been obvious to one of ordinary skill in the art before the effective filing date to set ED2 greater than ED3, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980). Sasaki teaches that at least 10% of the number of dimples reflect the inequality relationship as claimed, paragraphs 0015, 0053, and 0054, noting that the dimple profile of Figure 3 is given as formula (1). The examiner finds that the golf ball of prior art possesses the structural features of the inventive golf ball and is capable of performing in the same manner, namely by exhibiting a ratio of lift to drag coefficients equal to or greater than 0.0590 and equal to or less than 0.655 at a Reynolds number of 218,000 and a spin rate of 2,800 rpm and to exhibit and average value of the ratio of lift to drag coefficients at a Reynolds number of 184,000 and a spin rate of 2,900 rpm and at a Reynolds number of 158,000 and a spin rate of 3,100 being equal to or greater than 0.670 (from 0.670 to 0.783). "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 1 is treated as best understood in view of the rejection under 35 USC §112(b). As to Claim 2, Sasaki teaches that dimples satisfying the inequality expression of Claim 1 may account for at least 50% of the total number of dimples, paragraphs 0015, 0053, and 0054. As to Claim 5, Sasaki teaches that the 20% depth point occurs at the point of inflection where the curve having radius RW begins. The point of 50% depth lies at point further along the same curve suggesting that ED2 may be greater than ED5, for a ratio greater than 1. Sasaki, as modified, discloses the claimed invention except for specifying a ratio equal to or greater than 1.35. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra. As to Claim 6, given that the 30% depth point lies further along the curve of radius RW, beyond the 20% depth point, Sasaki, together with cited case law is applied as in Claim 5 as to the ratio ED3 to ED5 being equal to or greater than 1.2. As to Claim 7, given that the 60% depth point lies further along the curve of radius RW, beyond the 20% depth point, Sasaki, together with cited case law is applied as in Claim 5 as to the ratio ED2 to ED6 being equal to or greater than 2.0. As to Claim 8, Sasaki teaches that points at 10%, 20%, 30%, 50%, and 60% are not more than 90 degrees, see Figure 3, noting that the curves of the dimple profile do not become vertical at any point along the path. As to Claim 10, Saski, together with the rationale set forth in the treatment of Claim 1 is found equally applicable to support a finding of obviousness and to find that the golf ball of prior art is capable of exhibiting a value of A2 from 0.635 to 0.750 and a value of A3 from 0.695 to 0.815. As to Claim 11, Sasaki teaches that at least 50% of the dimples satisfying formula (1) are dimples of a larger diameter, see Abstract and paragraph 0056, and noting that dimples having a larger diameter and satisfying formula (1) may be a percentage of all dimples satisfying formula (1), suggesting that at least two types of dimples may satisfy the condition of Claim 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to configure the population of dimples with at least two types of dimples satisfying the condition of Claim 1, as suggested. Further, Sasaki teaches that dimples satisfying formula (1) may be of multiple types, paragraph 0063, suggesting that at least three type of dimples may satisfy the condition of Claim 1. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide at least three types of dimple satisfying the condition of Claim 1, as suggested. Claim 11 is treated as best understood in view of the rejection under 35 USC §112 (b). As to Claim 12, Sasaki teaches that the number of dimples satisfying the condition of Claim 1 may be from 250 to 500, paragraphs 0037 and 0057, noting that 90% of the dimples may satisfy formula (1) and that the ball may have 410 dimples. As to Claim 13,Sasaki teaches that an occupancy ratio of dimples satisfying the condition of Claim 1 may be 60 to 90 %, paragraph 0038. As to Claim 14, Sasaki teaches that a total volume of dimples may be from 300 to 500 cubic millimeters, paragraph 0060.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki, in view of Moriyama, U.S. Patent Application No. 2008/0227570. Sasaki, as modified, substantially shows the claimed limitations, as disclosed above. As to Claim 3, Sasaki teaches a continuing curve of the dimple profile between the 20% depth and 50% depth, suggesting that the edge angle at 40% may be less than the edge angle at 30%, suggesting that ED4 may be equal to or less than ED3. Sasaki, as modified, does not specify the relationship between the 30% point and the 10% point or between the 40% point and the 10% point. Moriyama teaches a dimple profile defined by a smaller radius curve (R1) at the edge and extending downward to continuously join a larger radius curve (R2) which continues to the dimple bottom, paragraphs 0048 and 0049 and see Figure 4, suggesting that ED3 may be equal to or greater than ED1, which in turn may be equal to or greater than ED4. Moriyama teaches that the dimple profile shape including first and second curved surfaces (14, 16) suppresses drag and provides excellent flight performance, indicating that the dimple profile shape is a result effective variable. It would have been obvious to provide Sasaki, as modified, with a dimple profile including a first smaller radius curve continuing to a second larger radius curve, as taught by Moriyama, to provide Sasaki, as modified, with 10% depth point suggested to be equal to or greater than a 40% depth point and equal to or less than a 30% depth point, to yield the predictable result of improving flight performance. Sasaki, as modified, discloses the claimed invention except for specifically indicating the claimed inequality relationship. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra. As to Claim 4, Sasaki, as modified by Moriyama, teaches that a tangent line at the 50% depth point would produce and angle appearing to be less than the angle of a tangent line at the 10% depth point, see Figure 3, suggesting that ED1 may be greater than ED5, providing a ratio of ED1 to ED5 greater than 1. The examiner finds that the claimed inequality may have been discovered by routine optimization, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art, In re Boesch, supra.
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 21 September 2026
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