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 .
Claims 1-6 have been examined.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
With regards to the amended limitation of the inorganic filler being in an amount from 15 to 30 parts by weight, Examiner initially notes that Applicant provides no criticality as to this claimed range in the disclosure. In fact, the specification notes that, in Table 2, Examples 1 and 2 and Table 3, Examples 5 and 6 all receive "excellent" reviews. Each of these examples comprise titanium oxide in the amount of 5-10 parts by weight. Therefore, Applicant's disclosure does not establish criticality of such a claimed range as amended as the ranges make no difference in the operation or benefits of the claimed invention.
With regards to Yabuki et al purportedly ‘teaching away’ from the claimed range, Examiner notes that Yabuki merely states that there is a risk of decreased rebound properties, which is not enough to amount to a ‘ruling out’ of such a range by one of ordinary skill in the art as purported by Applicant. Further, as advanced in the rejection below, Egashira et al disclose that the risk of decreased control/ rebound properties in fact occurs beyond an upper limit of 30 parts per weight of said inorganic fillers:
“The above-described spherical inorganic particulates are included in the above polymer material in an amount of preferably at least about 0.1 part by weight, and more preferably at least about 0.5 part by weight, per 100 parts by weight of the polymer. The upper limit is preferably not more than about 30 parts by weight, and more preferably not more than about 20 parts by weight. Beyond these values, control of the golf ball weight within the standard range becomes difficult” (Par. 0049)
Claim Rejections - 35 USC § 103
Claims 1-6 are rejected under 35 U.S.C. 103 as obvious over Yabuki et al (JP 2007-159996) in view of Egashira et al (US Patent Application Publication 2009/0298617).
1-3 and 5-6. Yabuki et al disclose a golf ball comprising a rubber core of at least one layer and a cover of at least one layer encasing the core, wherein at least one layer of the cover is formed of a resin composition that includes components (I) and (II) below:
(I) a thermoplastic polyurethane (Abstract) and
(II) an inorganic filler, specifically titanium oxide (Abstract: titanium oxide),
component (II) is included in an amount of at least 1-10 parts by weight per 100 parts by weight of component (I) (“The compounding amount of the titanium oxide in the cover material is 1 part by mass or more, more preferably 2 parts by mass or more, further preferably 3 parts by mass or more, and 10 parts by mass or less with respect to 100 parts by mass of the thermoplastic polyurethane. More preferably, it is 9 parts by mass or less, and further preferably 8 parts by mass or less”), and
wherein the resin composition has a Shore D hardness of less than 50 (“The slab hardness of the urethane cover is Shore D hardness, preferably 20 or more, more preferably 30 or more, preferably 70 or less, and more preferably 60 or less”).
However, Yabuki et al do not explicitly disclose wherein titanium oxide is included in an amount of at least 15-30 parts by weight per 100 parts by weight of component (I).
Egashira et al disclose that titanium oxide can be “included in the above polymer material in an amount of preferably at least about 0.1 part by weight, and more preferably at least about 0.5 part by weight, per 100 parts by weight of the polymer. The upper limit is preferably not more than about 30 parts by weight, and more preferably not more than about 20 parts by weight. Beyond these values, control of the golf ball weight within the standard range becomes difficult” (Par. 0049). Applicant is reminded that a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, as shown in Egashira, it is likely that product [was] not of innovation but of ordinary skill and common sense. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d at 1397. Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the amount of titanium oxide in the cover layer of Yabuki et al to be at least 15-30 parts by weight as taught by Egashira et al as Egashira et al shows that desired control properties of the ball are maintained to an upper limit of 30 parts by weight of titanium oxide.
Further, Yabuki et al do not explicitly disclose the material properties of the resin composition having an abrasion volume after 1,000 rotations in a Taber abrasion test according to JIS-K 7311 of more than 0.003 cm3 and satisfying the formula: 7.0×10-4 > (η1-η2)/H3 (1), wherein H is the Shore D hardness of the resin composition, and η1 and η2 being respectively the 210°C and 220°C melt viscosities (200 Pa·s or less, preferably 150 Pa·s or less) of the composition at a shear rate of 6,080 sec-1 when measured with a capillary rheometer in accordance with ISO 11443: 1995.
Initially, Examiner reminds applicant that it has been well settled that “[W]here 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), that “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.” In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929), and that In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As advanced above, Yabuki et al teaches that “The compounding amount of the titanium oxide in the cover material is 1 part by mass or more, more preferably 2 parts by mass or more, further preferably 3 parts by mass or more, and 10 parts by mass or less with respect to 100 parts by mass of the thermoplastic polyurethane. More preferably, it is 9 parts by mass or less, and further preferably 8 parts by mass or less”), therefore the claimed value of the inorganic filler in the amount of at least 5 parts by weight per 100 parts by weight of a thermoplastic polyurethane falls within the disclosed range of Yabuki et al of “3 parts by mass or more…and further preferably 8 parts by mass or less”. Further, Yabuki et al teaches that “The slab hardness of the urethane cover is Shore D hardness, preferably 20 or more, more preferably 30 or more, preferably 70 or less, and more preferably 60 or less” , therefore the claimed value of the resin composition having a Shore D hardness of less than 50 falls within the disclosed range of Yabuki et al of “The slab hardness of the urethane cover is Shore D hardness… preferably 30 or more…and more preferably 60 or less”). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the composition of Yabuki et al to have the inorganic filler be in the amount of at least 5 parts by weight per 100 parts by weight of a thermoplastic polyurethane and the Shore D hardness be less than 50 as this is merely an optimization of ranges producing expected and predictable results.
With regards to the claimed values of melt viscosity, Examiner initially notes that melt viscosity is a measure of a material's resistance to flow when in a molten state (e.g. a material property that is known based on a specific material). As advanced above, Yabuki et al disclose a golf ball comprising the claimed materials, the claimed ratio of said claimed materials, and the claimed hardness of said claimed materials. Furthermore, Yabuki et al disclose the ratio of the cover material being a result effective variable which can be optimized to achieve a desired melt viscosity to improve durability, abrasion resistance, and appearance of the golf ball (“the melt viscosity ratio of the cover material obtained by blending and the melt viscosity ratio of the thermoplastic polyurethane used as the raw material (cover material / thermoplastic polyurethane) is 0.8 or more, more preferably 0.85 or more, more preferably 0.9 or more, even more preferably 1.0 or more, and 2 or less, more preferably 1.75 or less, and still more preferably 1.5 or less. By setting the melt viscosity ratio in the range of 0.8 to 2, durability, abrasion resistance, and appearance of the obtained golf ball are improved”). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the melt viscosity of the resin composition of Yabuki et al to be 200 Pa·s or less, preferably 150 Pa·s or less, as this is merely a statement of a material property found in a composition of the disclosed ratio of said disclosed materials, and the disclosed hardness of said disclosed materials which would produce expected and predictable results (see also MPEP 2112(II-IV) with regards to inherency of a certain result or characteristic).
With regards to the claimed testing and subsequent results, Examiner reminds Applicant that it has been held that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. In this case, the Examiner rejects the specifically claimed results as being inherent as Yabuki et al disclose the combination of elements as claimed and therefore the claimed characteristics would be natural results of the claimed standardized testing under the claimed conditions.
4. Yabuki et al disclose the golf ball significantly as claimed, but do not explicitly disclose wherein the titanium oxide has an average particle size of at least 0.21 µm.
Egashira et al a similar golf ball having a cover material comprising a thermoplastic material (Par. 0045) combined with an inorganic filler material, such as titanium oxide, having an average particle size of about 0.2 µm (Par. 0060) the combination of which the coefficient of restitution which is improved by at least about 0.1% and an initial velocity which is improved by at least about 0.1% relative to a golf ball which uses a polymer material containing amorphous inorganic particulates. Examiner cites MPEP 2144.05 which states “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of Americav.Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the titanium oxide particles of Yabuki et al to be at least about 0.21 µm as taught by Egashira et al to improve the flight performance of the golf ball.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA T KENNEDY whose telephone number is (571)272-8297. The examiner can normally be reached M-F 7a-4:30p MST.
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, LoAn Jimenez can be reached at (571) 272-4966. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA T KENNEDY/Primary Examiner, Art Unit 3784 10/1/2026
