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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the golf ball with a core and cover of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 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.
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 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yabuki et al (JP 2007-159996).
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 5 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 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yabuki et al as applied to Claims 1-3 and 5-6 above, and further in view of Egashira et al (US Patent Application Publication 2009/0298617).
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mochizuki et al, Kuwahara et al, and Yamabe all teach golf balls having covers with similar resin compositions/ characteristics.
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.
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/JOSHUA T KENNEDY/Primary Examiner, Art Unit 3784 6/24/2026
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