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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on February 18, 2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Rejections - 35 USC § 102
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.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Nanba et al. (US Patent No. 7,291,675, hereinafter Nanba).
Regarding claim 1, Nanba discloses a golf ball comprising a constituent member (“a one-piece golf ball,” Abstract) formed of a cured product of a rubber composition containing (a) a base rubber (col.1 :34-35), (b) a co-crosslinking agent (col. 1:35-36), and (c) a crosslinking initiator (“organic peroxide,” col. 1:37-38), wherein
the base rubber includes (a1) a polybutadiene (col. 2:16-23) synthesized using a cobalt-based catalyst (“cobalt catalyst,” col. 2:30-32) and (a2) a natural rubber (“Together with the polybutadiene, the base rubber (a) may also include other rubbers such as natural rubber,” col. 2:17-20),
the co-crosslinking agent includes an unsaturated carboxylic acid and/or a metal salt thereof (col. 2:30-44); and
the crosslinking initiator includes an organic peroxide (col. 3:1-16).
Regarding claim 2, Nanba discloses that a mass ratio of (a1) the polybutadiene synthesized by using the cobalt-based catalyst to (a2) the natural rubber in (a) the base rubber is at least 50/50 and preferably at least 70/30 (col. 2:20-23, the polybutadiene being at least 50 wt % and preferably at least 70 wt %), which falls squarely within the claimed range of 40/60 to 80/20.
Regarding claim 3, Nanba further discloses the unsaturated carboxylic acid and/or metal salt thereof is methacrylic acid and/or a metal salt thereof (col. 2:36-42).
Regarding claim 4, Nanba further discloses the rubber composition further contains an organic sulfur compound (col. 1:38-39; col. 3:34-62).
Regarding claim 5, Nanba further discloses the golf ball is a one-piece golf ball, and a golf ball body thereof is formed of the cured product of the rubber composition (“one-piece golf balls,” col. 2:10-15).
Regarding claim 6, Nanba further discloses an amount of (a1) the polybutadiene synthesized by using the cobalt-based catalyst ranges from 50 mass % to 100 mass % of (a) the base rubber (col. 2:20-23), which overlaps the claimed range of 35 mass % to 75 mass %.
Regarding claim 7, because Nanba discloses that the base rubber may be composed of the polybutadiene and natural rubber, with the polybutadiene being preferably at least 70 mass % of the base rubber (col. 2:20-23), Nanba is understood to implicitly disclose the natural rubber making up the balance of the mass of the base rubber, or no more than 30 mass % (100-70=30), which falls within the claimed range of from 15% mass % to 55 mass % in 100 mass % of the base rubber.
Regarding claim 8, Nanba further discloses the base rubber further includes another rubber component other than (a1) the polybutadiene synthesized by using the cobalt-based catalyst and (a2) the natural rubber (“Together with the polybutadiene, the base rubber (a) may also include other rubbers,” plural, “such as natural rubber, polyisoprene rubber and styrene-butadiene rubber,” col. 2:16-23; the “another rubber component” being, e.g., polyisoprene rubber and styrene-butadiene rubber). Nanba teaches that an amount of the polybutadiene (i.e., the polybutadiene synthesized using the cobalt-based catalyst) is “preferably at least 70 wt %” (col. 2:20-23), which overlaps with the claimed range of 75 mass % or more in 100 mass % of (a) the base rubber. The examiner notes that when the amount of the (a1) polybutadiene synthesized by using the cobalt-based catalyst alone is 75 mass % or more of the base rubber (as taught by Nanba), then a total amount of the (a1) polybutadiene synthesized by using the cobalt-based catalyst and (a2) the natural rubber will also necessarily be greater than 75 mass % of the base rubber.
Regarding claim 9, Nanba further discloses an amount of a cis-1,4 structure in (a1) the polybutadiene synthesized using the cobalt-based catalyst ranges from 90 mass % to 99 mass % (“a cis-1,4 content more preferably at least 90%, and most preferably at least 95%,” col. 2:24-29).
Regarding claim 10, polybutadiene is understood to include three types of bonds: cis, trans, and vinyl, which sum to 100%.1 Because Nanba discloses that the amount of cis-1,4 structure is preferably at least 95% (col. 2:24-29) and the amount of 1,2-vinyl is most preferably 1.3% or less (col. 2:26-29), Nanba is understood to implicitly disclose an amount of trans-1,4 structure in (a1) the polybutadiene synthesized by using the cobalt-based catalyst being preferably less than 3.7% (100-95-1.3=3.7), which falls within the claimed range of 0.1 mass % to 10 mass %.
Regarding claim 11, Nanba further discloses an amount of a 1,2-vinyl structure in (a1) the polybutadiene synthesized using the cobalt-based catalyst is preferably 2% or less (col. 2:24-29), which falls with the claimed range from 0.1 mass% to 10 mass %.
Claim Rejections - 35 USC § 103
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 12 is rejected under 35 U.S.C. 103 as unpatentable over Nanba in view of Higuchi et al. (US Patent No. 6,786,836, hereinafter Higuchi).
Regarding claim 12, Nanba teaches the claimed invention substantially as claimed, as set forth above for claim 1. Nanba is silent with respect to a toluene solution. However, Higuchi teaches a golf ball comprising a rubber composition including polybutadiene, wherein a toluene solution containing the polybutadiene in a concentration of 5 mass % has a viscosity ranging from at least 50 mPa∙s (= 50 cps) to most preferably not more than 450 mPa∙s (=450 cps) (col. 2:49-67), which includes the claimed range of 50 cps to 160 cps. Higuchi teaches that this range optimizes workability of the rubber composition and rebound characteristics of the golf ball (col. 2:62-63, 66-67). 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 the invention of Nanba such that a toluene solution containing the polybutadiene synthesized by using the cobalt-based catalyst in a concentration of 5 mass % has a viscosity within the claimed range, as taught by Higuchi, in order to optimize workability of the rubber composition and rebound characteristics of the golf ball.
Claims 13-15 are rejected under 35 U.S.C. 103 as unpatentable over Nanba in view of Endo (US Patent No. 6,489,401, hereinafter Endo).
Regarding claims 13-15, Nanba teaches the claimed invention substantially as claimed, as set forth above for claim 1. Nanba is silent with respect hardness properties of the one-piece golf ball. However, Endo teaches a one-piece golf ball having a center hardness ranging from 55 to 63 in JIS-C hardness (col. 2:20-26, where JIS-C hardness is understood to be generally equivalent to Shore C hardness), which overlaps the claimed range of 60.0 to 74.0 in Shore C hardness (claim 13), a surface hardness of 75 to 88 in JIS-C hardness (col. 2:25-26), which overlaps the claimed range of 75.0 to 85.0 in Shore C hardness (claim 14), and a hardness difference ranging from 18 to 25 in JIS-C hardness (col. 2:26), which overlaps the claimed range of 10.0 to 20.0 in Shore C hardness (claim 15). Endo teaches that controlling the center hardness, surface hardness, and hardness difference within these ranges optimizes shot feel, flight performance, and durability (col. 5:18-25, 24-45). 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 the invention of Nanba by configuring the one-piece golf ball to have a center hardness, surface hardness, and hardness difference within the claimed ranges, as taught by Endo, in order to optimize shot feel, flight performance, and durability of the golf ball.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hamada et al. (US Patent No. 5,082,285) and Voorheis et al. (US Patent No. 6,774,187) each disclose a one-piece golf ball including a base rubber that includes a polybutadiene synthesized using a cobalt-based catalyst in combination with natural rubber and a third rubber component, cited here as further representative of the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laura Davison/Primary Examiner, Art Unit 3993
1 See Wikipedia, “Polybutadiene,” https://en.wikipedia.org/wiki/Polybutadiene, archived by the Internet Archive on March 15, 2023 at https://web.archive.org/web/20230315143521/https://en.wikipedia.org/wiki/Polybutadiene
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