DETAILED ACTION
Claim Objections
1. Claim 6 and 20 are objected to because of the following informalities: recitation of “wherein the wherein” appears to be a typographical error. Appropriate correction is required.
Specification
2. The disclosure is objected to because of the following informalities: in paragraph [0059], recitations to Figures 12A and 12B should be amended to Figures 11A and 11B.
Further, paragraph [0061] requires a first ink depth of a center region to be less than the second ink depth, but then contradicts this disclosure by stating that the center region “has the thickest depth”. Applicant should provide clarity to this apparent discrepancy.
Claim Rejections - 35 USC § 112
3. 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 2-3 and 13-20 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. The recitation in claims 2, 13 and 17 requiring a group of dimples comprising a diameter wherein the dimples “concentrically surround” an aperture presents a claim scope that one ordinary skill in the art cannot properly ascertain. Specifically, it is unclear what the minimum number of dimples with a diameter are required to meet the limitation of “concentrically surround” the aperture. For examining purposes, a minimum of 8 dimples are construed to be required, as this is the minimum number of dimples shown concentrically surrounding an aperture in applicant’s drawings.
Claims 7 and 18 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. The recitation in claims 7 and 18 requiring a “center region having first ink depth” that is less than a third ink depth appears to be contradicted by paragraph [0061] of the specification. Applicant should provide clarity to this apparent discrepancy.
Claim 9 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. Claim 9 recites the limitation "the dimple diameter", “the dimple depth”, “the second distal set”. There is insufficient antecedent basis for these limitations in the claim.
Claim 16 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. The recitation therein of “each group of dimples” presents an indefinite scope because it is unclear how many groups are required as base claim 13 does not specific a number of groups. For examining purposes, the claim scope will be construed as two or more groups.
Claim 19 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. Claim 19 recites the limitation "the circumferential channel”. There is insufficient antecedent basis for these limitations in the claim as there are two recitations to “a circumferential channel” (i.e. one in claim 17 and one in claim 19).
Claim Rejections - 35 USC § 103
4. 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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “ Obvious to try ” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
5. Claims 1, 5-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Pub. No. 2017/0354850) in view of Ohanyan (US Pub. No. 2017/0043229) in further view of Bergstroem (SE 200400675).
With respect to claim 1, Chen teaches a ball (paragraph [0015]), comprising: a shell comprising a hollow core, a diameter, a weight, a thickness between an exterior surface and an interior surface and a weight:diameter ratio between the weight and the diameter (inherent); and a plurality of apertures 11 within the exterior surface (Fig.’s 1-5; paragraphs [0015]-[0016]).
Chen does not expressly disclose the numeric values for the weight and diameter. However, analogous art reference Ohanyan teaches the following to be known in the paddle ball art: a weight is between 27 and 52 grams, wherein a diameter is between 2.5 and 3.5 inches and wherein a weight:diameter ratio is between 9.3 and 20.8 (paragraph [0047]; Per MPEP 2131.03, prior art that teaches a range with sufficient specificity overlapping the claimed rang meets the claim). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to select ball dimensions as taught by Ohanyan for the ball of Chen. The rationale to combine is to provide a known size and weight for the ball that is conducive for paddle play.
Chen fails to expressly disclose a plurality of dimples on the exterior surface as claimed. However, analogous art reference Bergstroem teaches the following to be known in the art: a plurality of dimples on a ball exterior surface, wherein each dimple comprises a perimeter edge along the exterior surface and a depression recessed a dimple depth from the perimeter edge into the exterior surface (“The outer surface of the ball has impressions or cavities (5), the depth of which is at most 0.5 mm”). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add dimples to the exterior surface of the ball of Chen. The rationale to combine is to “improve the aerodynamics of the ball”.
With respect to claim 5, Chen teaches wherein the shell further comprises a pair of opposing poles and an equator (at 12) equidistant from each of the opposing poles, wherein a first aperture from the plurality of apertures is centered on a first of the opposing poles, wherein a second aperture from the plurality of apertures is centered on a second of the opposing poles, wherein a first group of apertures from the plurality of apertures are aligned along a first line of latitude between the first pole and the equator, wherein a second group of apertures from the plurality of apertures are aligned along a second line of latitude between the first line of latitude and the equator, wherein a third group of apertures from the plurality of apertures are aligned along a third line of latitude between the second pole and the equator, and wherein a fourth group of apertures from the plurality of apertures are aligned along a fourth line of latitude between the third line of latitude and the equator (Fig.’s 1-5; emphasis on Fig. 4).
With respect to claim 6, Chen teaches wherein the first group of apertures and the third group of apertures each consist of 4 apertures equally spaced around the first line of latitude and the third line of latitude, respectively, as opposed to 5, and wherein the second group of apertures and the fourth group of apertures each consist of 8 apertures equally spaced around the second line of latitude and the fourth line of latitude, respectively, as opposed to 10 (Fig.’s 1-5; emphasis on Fig. 4). However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). Moreover, where 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). In the instant case, the ball of Chen as modified above would not operate different with a number of apertures as claimed. Notably, the number of apertures is known to be a result effective variable for the weight, aerodynamic drag and flight properties of the ball. See e.g. Astrom (US Pat. No. 3,908,994), DiPietro (US Pat. No. 9,592,426), cited as extrinsic references. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal number of apertures along the first through fourth latitudes, including within the claimed range, via routine experimentation. The motivation to add two apertures to each group is to reduce overall weight, and modify the aerodynamic and flight properties of the ball. The increased holes will expectantly perform better in the outdoor elements. Further, the applicant does not place criticality to the claimed amount, and no specific purpose for operability has been established in relation to the claimed range. See paragraph [0059]. The proposed modification has a reasonable expectation of success as it involves only adding only two apertures along each latitude and the functionality will not be compromised by the modification.
With respect to claims 8-9, Bergstroem, cited above for the dimples, further teaches the following to be known in the art: wherein a group of dimples from the plurality of dimples comprise a proximal set of dimples and a distal set of dimples, wherein the proximal set of dimples are situated proximate to a corresponding aperture, and wherein the distal set of dimples are spaced a distance away from the proximal set of dimples opposite from the corresponding aperture (Fig. 1) and further comprising a middle set of dimples between the proximal set of dimples and the distal set of dimples (Fig. 1). The motivation to combine is the same as stated above. Admittedly, Bergstroem does not expressly disclose wherein at least one of the dimple diameter and the dimple depth of the second distal set of dimples are unequal to the respective dimple diameter and the respective dimple depth of at least one of the proximal set of dimples and the distal set of dimples. However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). Moreover, where 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). In the instant case, the ball of Chen as modified above would not operate different with a dimple diameter or dimple depth in the middle set of dimples as claimed. Notably, dimple diameter and dimple depth are known to be result effective for aerodynamic drag properties. See e.g. Hanada et al. (US Pub. No. 2001/0019974), Kennedy (US Pub. No. 2006/0223654) and Campbell (US Pub. No. 2017/0291076), cited as extrinsic references. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal dimple diameter and/or depth, including within the claimed range, via routine experimentation. The motivation to modify is to provide a desired flight characteristic and drag property. Further, the applicant does not place criticality to the claimed amount, and no specific purpose for operability has been established in relation to the claimed range. The proposed modification has a reasonable expectation of success the functionality will not be compromised by the modification.
6. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Pub. No. 2017/0354850) in view of Ohanyan (US Pub. No. 2017/0043229) in further view of Bergstroem (SE 200400675) and even further view of Kuo (US Pub. No. 2004/0048720).
With respect to claim 4, Chen does not expressly teach a circumferential ring as claimed. However, analogous art reference Kuo teaches the following to be known in the art: a circumferential ring surrounding an aperture, wherein the circumferential ring comprises a pair of ring edges along an interior surface and a sidewall spacing the pair of ring edges by a ring width, wherein the sidewall comprises a curvature between the pair of ring edges and protrudes a ring height to a ring peak within a core of the shell. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a circumferential ring to at least one aperture of the hollow ball of Chen. The rationale to combine is to add structural rigidity to the apertures, which are known to be regions of high stress and failure. The ring will improve the durability of the ball.
7. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Pub. No. 2017/0354850) in view of Ohanyan (US Pub. No. 2017/0043229) in further view of Bergstroem (SE 200400675) and even further view of Mateos (NPL reference - SARA MATEOS FERNÁNDEZ, Development of the Football, Department of Materials and Manufacturing Technology, Department of Materials and Manufacturing Technology, SE-41296 Gothenburg, Sweden; publication date - 2015).
With respect to claim 10, Chen does not teach the claimed geometry of the aperture edges. However, analogous art reference Mateos teaches the following to be known in the art: wherein an of the apertures further comprises an exterior edge and an interior edge connected by a sidewall, wherein the exterior edge connects to the exterior surface, wherein the interior edge connects to the interior surface, wherein the sidewall comprises a first segment, a second segment and an inflection between the first segment and the second segment, wherein the first segment is angled between the inflection and the exterior edge, and wherein the second segment is angled between the inflection and the interior edge (page 21 – “Venturi” geometry shown in Table 3). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to provide a “venturi” geometry to the apertures. The rationale to combine is to produce a constriction effect of airflow that enters and leaves the ball.
8. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (US Pub. No. 2017/0354850) in view of Ohanyan (US Pub. No. 2017/0043229) in further view of Bergstroem (SE 200400675) and even further view of Tandon et al. (US Pat. No. 4,305,583).
With respect to claim 11, Chen does not expressly teach a plurality of protuberances as claimed. However, analogous art reference Tandon et al. teaches the following to be known in the art: a plurality of protuberances 5 on an interior surface of a ball shell, wherein each protuberance comprises a perimeter base along the interior surface and a peak protruding a height from the perimeter base into a hollow core (Fig. 2; column 4, lines 60-63). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add protuberances to an interior surface of the shell of Chen, as taught by Tandon et al. The rationale to combine is to provide improved acoustics.
Double Patenting
9. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
10. Claims 1-3, 8-11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,257,481.
With respect to claims 1-3, 8-11, although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the patented claims reads on the present claims.
11. Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,257,481 in view of Kuo (US Pub. No. 2004/0048720).
With respect to claim 4, the patented claims do not expressly teach a circumferential ring as claimed. However, analogous art reference Kuo teaches the following to be known in the art: a circumferential ring surrounding an aperture, wherein the circumferential ring comprises a pair of ring edges along an interior surface and a sidewall spacing the pair of ring edges by a ring width, wherein the sidewall comprises a curvature between the pair of ring edges and protrudes a ring height to a ring peak within a core of the shell. At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to add a circumferential ring to at least one aperture of the hollow ball of the patented claims. The rationale to combine is to add structural rigidity to the apertures, which are known to be regions of high stress and failure. The ring will improve the durability of the ball.
12. Claims 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,257,481 in view of Chen (US Pub. No. 2017/0354850).
With respect to claims 5-6, the patented ball does not expressly disclose the arrangement of apertures as claimed. However, analogous art reference Chen teaches the following to be known in the art:
With respect to claim 5, Chen teaches wherein the shell further comprises a pair of opposing poles and an equator (at 12) equidistant from each of the opposing poles, wherein a first aperture from the plurality of apertures is centered on a first of the opposing poles, wherein a second aperture from the plurality of apertures is centered on a second of the opposing poles, wherein a first group of apertures from the plurality of apertures are aligned along a first line of latitude between the first pole and the equator, wherein a second group of apertures from the plurality of apertures are aligned along a second line of latitude between the first line of latitude and the equator, wherein a third group of apertures from the plurality of apertures are aligned along a third line of latitude between the second pole and the equator, and wherein a fourth group of apertures from the plurality of apertures are aligned along a fourth line of latitude between the third line of latitude and the equator (Fig.’s 1-5; emphasis on Fig. 4). At time of applicant’s effective filing, a person ordinary skill in the art would have found it obvious to combine the teachings of Chen with the patented golf ball. The rationale to combine is to provide a lightweight ball that will have advantageous flight properties with low drag.
With respect to claim 6, Chen teaches wherein the first group of apertures and the third group of apertures each consist of 4 apertures equally spaced around the first line of latitude and the third line of latitude, respectively, as opposed to 5, and wherein the second group of apertures and the fourth group of apertures each consist of 8 apertures equally spaced around the second line of latitude and the fourth line of latitude, respectively, as opposed to 10 (Fig.’s 1-5; emphasis on Fig. 4). However, the mere scaling of a prior art invention capable of being scaled up does not establish patentability. See In re Rinehart, 531 F.2d 1048, 1053 189 USPQ 143 (CCPA 1976). Moreover, where 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). In the instant case, the ball of Chen as modified above would not operate different with a number of apertures as claimed. Notably, the number of apertures is known to be a result effective variable for the weight, aerodynamic drag and flight properties of the ball. See e.g. Astrom (US Pat. No. 3,908,994), DiPietro (US Pat. No. 9,592,426), cited as extrinsic references. At time of applicant’s effective filing, one ordinary skill in the art would have found it obvious to select an optimal number of apertures along the first through fourth latitudes, including within the claimed range, via routine experimentation. The motivation to add two apertures to each group is to reduce overall weight, and modify the aerodynamic and flight properties of the ball. The increased holes will expectantly perform better in the outdoor elements. Further, the applicant does not place criticality to the claimed amount, and no specific purpose for operability has been established in relation to the claimed range. See paragraph [0059]. The proposed modification has a reasonable expectation of success as it involves only adding only two apertures along each latitude and the functionality will not be compromised by the modification.
Allowable Subject Matter
13. Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL DAVID DENNIS whose telephone number is (571)270-3538. The examiner can normally be reached M-F 8:00 am - 5:00 pm.
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, Eugene Kim can be reached at (571) 272 4463. 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.
/MICHAEL D DENNIS/Primary Examiner, Art Unit 3711
Prosecution Insights