DETAILED ACTION
Claims Subject to Examination
Claims 1-12 of this application are subject to examination.
Claim Construction in Examination
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Examiner’s Claim Construction
The current claim limitations are construed under the BRI standard. No explicit claim construction is deemed to be necessary.
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.
GROUND 1: Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “an olefin/unsaturated carboxylic acid copolymer and/or an olefin/unsaturated carboxylic acid/unsaturated carboxylic acid ester copolymer” (ll. 4-5). This subject matter is indefinite because:
The meaning of each slash (“/”) is unclear. It is unclear whether each slash should be interpreted as representing the word “and”, or as representing the word “or”, or as representing some other word, phrase or punctuation mark.
The alternative expression “and/or” renders the scope of the claim unclear since “and” is inclusive whereas “or” is exclusive. Further, the expression “and/or” allows for such a diverse interpretation and such a broad scope that the metes and bounds of the claim cannot be ascertained with a reasonable degree of certainty.
Claim 4 recites “the thermoplastic polyurethane comprises an alicyclic diisocyanate and/or an aromatic diisocyanate as a polyisocyanate constituting (A) the thermoplastic polyurethane.” This subject matter is indefinite because it fails to conform to the description of the invention in the specification. According to the specification, the thermoplastic polyurethane include a reaction product having urethane bonds formed in the molecule by a reaction between a polyisocyanate and a polyol. Since it includes both a polyisocyanate and a polyol, it is inaccurate to characterize the polyisocyanate as “constituting” the thermoplastic polyurethane.
Claims 4 and 9-12 are indefinite due to the use of the alternative expression “and/or” (claims 4, 9 and 10, l. 2; claims 11 and 12, l. 3). See the explanation above.
Claim 12 requires that the resin component of the cover composition “consists of” the recited compounds. The phrase “consists of” is an exclusive, closed phrase. However, claim 12 uses the alternative expression “and/or”, which is open-ended and non-exclusive. Such inconsistency renders the claim indefinite.
Dependent claims are included in the rejection at least because of their dependencies.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Molitor et al.”
US Patent No. 4,674,751
“Takesue et al.”
US Publication No. 2003/0045652 A1
“Tarao et al.”
US Publication No. 2009/0124431 A1
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.
GROUND 2: Claims 1-6, 9, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takesue et al.
Takesue et al. discloses a golf ball comprising a spherical core and a cover covering the spherical core. See ¶¶ 0011, 0043, 0056-0057. The cover is formed from a cover composition containing (A) a thermoplastic polyurethane, and (B) a binary copolymer of olefin and unsaturated carboxylic acid or a tertiary copolymer of olefin, unsaturated carboxylic acid and unsaturated carboxylic acid ester. See ¶¶ 0007-0010, 0012-0015, 0020-0030, 0032-0033, 0054-0058, 0077-0087; TABLE 1. Note that Takesue et al. reverses the designations “(A)” and “(B)” in comparison to the claims. When the feel of hit is of greater interest (higher priority), an amount of (A) the thermoplastic polyurethane is 50 mass % or more in the resin component. See ¶¶ 0010, 0033; TABLE 1.
With respect to claim 2, Takesue et al. discloses a mass ratio (A)/(B) of 50/50 to 99.9/0.1 that is used when the feel of hit is of higher priority. See ¶¶ 0010, 0033. With respect to claim 3, the mass ratio disclosed by Takesue et al. encompasses the claimed range. With respect to claim 11, the mass ratio disclosed by Takesue et al. yields a total amount of (A)+(B) of 85 mass % or more.
With respect to claim 4, Takesue et al. discloses that (A) the thermoplastic polyurethane comprises an aliphatic or aromatic diisocyanate as a polyisocyanate constituting (A) the thermoplastic polyurethane. See ¶¶ 0025, 0027. With respect to claim 5, Takesue et al. discloses that the polyisocyanate can be diphenylmethane diisocyanate. See ¶ 0027.
With respect to claim 6, Takesue et al. discloses that the cover composition has a slab hardness ranging from 30 to 60 in Shore D hardness when the feel of hit is of higher priority. See ¶ 0033. Thus, Takesue et al. teaches a hardness that falls within the claimed range.
With respect to claim 9, Takesue et al. discloses that the cover composition has an overall melt index (MI) of 0.5 to 30 dg/min measured according to the JIS-K7210 standard at 190° C under a load of 2.16 kgf. See ¶¶ 0039, 0068. In TABLE 1, Example 6 is disclosed as having a MI of 16.0 g/10 min. In TABLE 2, Comparative Examples 6 and 7 are disclosed as having a MI of 10.7 g/10 min and 14.6 g/10 min, respectively. Thus, Takesue et al. discloses the claimed melt flow rate of 10 g/10 min or more.
With respect to claim 12, while Takesue et al. teaches that it is desireable to add a third compound (C) to the resin component, Takesue et al. teaches that it was known to use a resin component consisting of only (A) and (B). See ¶¶ 0002-0006 (especially ¶¶ 0005-0006). Further, Takesue et al. teaches Comparative Examples 1, 2 and 6 that excludes (C) and, thus, consists of (A) and (B). See ¶¶ 0056-0058, 0086-0087; TABLE 2.
GROUND 3: Claims 1-6, 11 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tarao et al.
Tarao et al. discloses a golf ball comprising a spherical core and a cover covering the spherical core. See ¶¶ 0006, 0069, 0097-0098. The cover is formed from a cover composition containing (A) a thermoplastic polyurethane, and (B) a binary copolymer of olefin and unsaturated carboxylic acid or a tertiary copolymer of olefin, unsaturated carboxylic acid and unsaturated carboxylic acid ester. See ¶¶ 0006-0007, 0009, 0011-0017, 0022-0032, 0101-0105; TABLE 3. An amount of (A) the thermoplastic polyurethane is 50 mass % or more in the resin component. See ¶¶ 0009, 0041; TABLE 3.
With respect to claims 2 and 3, Tarao et al. discloses a mass ratio (A)/(B) of 5/95 to 95/5. See ¶¶ 0009, 0041. The mass ratio disclosed by Tarao et al. falls within and/or encompasses the claimed ranges. With respect to claim 11, the mass ratio disclosed by Tarao et al. yields a total amount of (A)+(B) of 85 mass % or more.
With respect to claim 4, Tarao et al. discloses that (A) the thermoplastic polyurethane comprises an alicyclic or aromatic diisocyanate as a polyisocyanate constituting (A) the thermoplastic polyurethane. See ¶¶ 0012-0013. With respect to claim 5, Takesue et al. discloses that the polyisocyanate can be 4,4'-diphenylmethane diisocyanate or 4,4'-dicyclohexylmethane diisocyanate. See ¶¶ 0013-0014.
With respect to claim 6, Tarao et al. discloses that the cover composition has a slab hardness ranging from 30 to 57 in Shore D hardness. See ¶¶ 0009, 0067, 0092. Thus, Takesue et al. teaches a hardness that falls within the claimed range.
With respect to claim 12, while Tarao et al. teaches that it is desireable to add a third compound (C) to the resin component, Tarao et al. teaches that it was known to use a resin component consisting of only (A) and (B). See ¶¶ 0004-0005, 0007. Further, Tarao et al. teaches exemplary Golf Ball No. 18 that excludes (C) and, thus, consists of (A) and (B). See ¶ 0106; TABLE 3.
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.
GROUND 4: Claims 7-10 rejected under 35 U.S.C. 103 as obvious over Takesue et al.
See the discussion of Takesue et al. in GROUND 2. As explained above, Takesue et al. discloses a melt flow rate of 10 g/10 min or more. Further, TABLE 1 of Takesue et al. specifies additional physical properties of both the resin component and the golf ball.
With respect to claims 7-10, since Takesue et al. teaches some of the same polyurethane compounds and some of the same binary and tertiary copolymers used by applicant, Takesue et al. teaches or suggests a cover composition having similar properties to that of applicant. In addition, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify/design the cover composition of Takesue et al. by selecting the claimed melt viscosity, flow starting temperature, melt flow rate (of the binary or tertiary copolymer), and melting point in order to achieve the melt flow rate and additional physical properties disclosed by Takesue et al. Further, such a modification involving the selection of specific optimal values, given prior art general conditions, is recognized to be within the level of ordinary skill in the art.
GROUND 5: Claims 7-10 rejected under 35 U.S.C. 103 as obvious over Tarao et al.
See the discussion of Tarao et al. in GROUND 3. Further, TABLE 3 of Tarao et al. specifies physical properties of the resin component and the golf ball.
With respect to claims 7-10, since Tarao et al. teaches some of the same polyurethane compounds and some of the same binary and tertiary copolymers used by applicant, Tarao et al. teaches or suggests a cover composition having similar properties to that of applicant. In addition, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify/design the cover composition of Tarao et al. by selecting the claimed melt viscosity, flow starting temperature, melt flow rate, and melting point in order to achieve the physical properties disclosed by Tarao et al. Further, such a modification involving the selection of specific optimal values, given prior art general conditions, is recognized to be within the level of ordinary skill in the art.
Pertinent Prior Art
The following prior art is considered pertinent to the claimed invention but is not relied upon to reject any claim.
Like Takesue et al. and Tarao et al., Molitor et al. teaches a golf ball cover composition containing (A) a thermoplastic polyurethane, and (B) a binary copolymer of olefin and unsaturated carboxylic acid. See col. 1, ll. 36-55; col. 2, ll. 33-57; col. 3, ll. 31-54; col. 4, l. 18 to col. 5, l. 36; col. 6, ll. 34-41; col. 6, l. 58 to col. 7, l. 34; TABLE. An amount of (A) is 80 parts, and an amount of (B) is 20 parts. See col. 6, ll. 34-37. An average melt flow index of (B) is 14, and the presence of (B) sets the melt flow index of the cover composition to optimal levels. See col. 5, ll. 10-17. The cover composition has an overall melt flow index of 0.89. See col. 6, ll. 37-38. The cover composition has a Shore C hardness ranging from 70 to 85. See col. 2, ll. 33-38 and 46-49; col. 4, ll. 18-25.
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Filing and Contact Information
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
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