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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-10, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In Claim 1, line 4, the limitation providing that the N-frequency tessellation minimizes a total surface area of the ball such that when the ball contacts a surface a minimized surface area of the ball contacts the surface, thereby causing a reduction in noise upon contact constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that N-frequency tessellation decreases a noise of the ball compared to a ball having apertures arranged without a geodesic pattern constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claim 22 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation providing that N-frequency tessellation distributes apertures substantially uniformly across the hollow spherical shell constitutes new matter which was not disclosed in the originally filed specification and cannot be added.
Claims 23 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In each claim, the limitation providing that at least one of: a size, number, or location of apertures is based at least in part on reducing an amount of the outer surface in contact with a surface when the ball is struck, or based at least in part on causing the reduction in noise, constitute new matter which was not disclosed in the originally filed specification and cannot be added.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1, 3-5, 8, 11, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim et al. U.S. Patent Application No. 2011/0275463, in view of Sanchez, U.S. Patent No. 5,249,804, and in further view of Thurman, U.S. Patent No. 5,562,552. As to Claims 1 and 8, Lim teaches a ball (game ball) comprising a hollow spherical shell, paragraph 0009. Apertures (24, 26) may be defined in the spherical shell, paragraph 0009. Lim teaches that apertures are formed in the spherical shell based at least in part on a pattern, paragraph 0012, noting specific placement of apertures. Lim teaches that apertures in a ball used in a pickleball game may comprise apertures configured to facilitate flight through the air, paragraph 0002. Lim is silent as to the apertures being arranged at least in part based on a N-frequency tessellation. Sanchez teaches that a ball (golf ball) may be provided with surface features (dimples) configured to encourage turbulence in order to reduce drag, Col. 1, ln. 8-11. A geodesic pattern of dimples may provide a ball with aerodynamic symmetry, Col. 2, ln. 10-12. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Lim with a geodesic based pattern of aerodynamic features, as taught by Sanchez, to provide Lim with apertures based in part on a geodesic pattern, to yield the predictable result of facilitating improved ball flight. Lim, as modified, discloses the claimed invention except for providing that the geodesic based pattern may be a N-frequency tessellation of the spherical shell. Thurman teaches that a pattern for aerodynamic features (dimples) may be formed by projecting triangular faces of a regular icosahedron onto a spherical surface to form a spherical icosahedral triangle, Col. 3, ln. 26-33. Sides of each triangle may be bisected to form four smaller triangles inside the icosahedral triangles, Col. 3, ln. 37-39 and see Figure 9, forming a N-frequency tessellation of the spherical shell, noting a 2 frequency tessellation, where N is an integer. It would have been obvious to one of ordinary skill in the art before the effective filing date to provide Lim, as modified, with aerodynamic features arranged at least in part on a N-frequency tessellation of a spherical shell to provide Lim, as modified, with a N-frequency tessellation at least forming in part the arrangement of apertures, to yield the predictable result of improved ball flight. The examiner finds that shell of prior art possesses the structural features of the inventive shell and may exhibit the same characteristics, namely that N-frequency tessellation minimizes a total surface area of the ball such that the claimed result necessarily follows. "The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112. As to Claims 3 and 14, Lim teaches that the apertures may comprise apertures (second plurality of apertures) having a same diameter of 7mm, paragraph 0015. Lim, as modified, discloses the claimed invention except for providing that the plurality of apertures may have a diameter of approximately 7.5 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to change the aperture diameter of 7.5 mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, 105 USPQ 237 (CCPA 1955). As to Claims 4 and 15, Lim teaches that apertures may comprise at least two different classes of apertures (first plurality and second plurality) having at least to different diameters, paragraph 0015. As to Claim 5, Lim teaches a first aperture diameter of 8.5 mm and a second aperture diameter of 7 mm, paragraph 0015. Lim, as modified, discloses the claimed invention except for providing that the first plurality of apertures may have a diameter of 8.8 mm and the second plurality of apertures may have a diameter of 7.2 mm. It would have been obvious to one of ordinary skill in the art before the effective filing date to change the aperture diameters of the first and second plurality of apertures to meet the claimed dimensions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art, In re Rose, supra. As to Claim 11, Lim, as modified by Sanchez and Thurman, is applied as in Claim 1, with the same obviousness rationales being found applicable. Further, Lim teaches that a ball may be formed by a method comprising molding (manufacturing) a first hemisphere, molding (manufacturing) a second hemisphere and coupling (joining) the first and second hemispheres to form a spherical shell, paragraph 0017. The examiner finds that the ball of prior art possesses the structural features of the claimed ball and would perform in the same manner, as claimed. The rationale applied in the treatment of Claim 1 is equally applicable. As to Claims 21-24, the examiner finds that the ball of prior art possesses the structural features of the inventive ball and that the ball of prior art would exhibit the characteristics as claimed, namely the N-frequency tessellation decreasing noise compared to a ball without a geodesic pattern and distributing apertures substantially uniformly, and that the size, number, and location of apertures reduces surface contact when the ball is struck and causes noise reduction. The same rationale applied in the treatment of Claim 1 being found applicable.
Claim(s) 7, 10, 17, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lim, in view of Sanchez and Thurman, as applied to claim 1 above, and further in view of You, U.S. Patent Application No. 2023/0201672. As to Claims 7 and 17, You teaches that apertures may be spaced at regular intervals on the surface of the sphere, paragraph 0023, suggesting equal spacing between edges of neighboring apertures. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the apertures with equal spacing between edges of neighboring apertures, as suggested. As to Claims 10 and 18, You teaches that the apertures may be arranged at regular intervals as discussed above. The ball is formed in two hemispheres (first hemisphere and second hemisphere), paragraph 0031. It follows that the arrangement of apertures in the first hemisphere matches that of the second hemisphere, such that pairs of apertures are formed wherein a first aperture of a first pair is axially aligned with a second aperture of the first pair through a center of the ball. It would have been obvious to one of ordinary skill in the art before the effective filing date to arrange the apertures at regular intervals with matching first and second hemispheres, as taught by You, to provide Lim, as modified, with an arrangement of apertures comprising pairs of apertures configured as claimed to yield the predictable result of facilitating stable flight.
Allowable Subject Matter
Claims 16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 22 June 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The examiner maintains the position that Lim teaches through-hole apertures in a hollow spherical shell, as set forth in the office action. The failure of the secondary references to also teach the feature does not overcome a rejection based on a combination of the teaching of the cited references.
In response to applicant’s argument that the references include no clear teaching that a pattern of dimples on a golf ball may be applied to a spherical shell in order to reduce noise, the examiner maintains the position that the golf ball and the hollow spherical shell are intended to travel through air and that the surface features provide aerodynamic benefits. A person of ordinary skill in the art would have understood that it was obvious to try the arrangement of aerodynamic features used on a solid sphere for a hollow sphere. The fact that the prior art does not recognize a benefit in the nature of noise reduction does not overcome the rejection based on the combined teaching of the prior art references of the claimed structure. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant’s argument that Thurman does not teach 2-frequency tessellation, the examiner maintains the position that Thurman teaches a pattern for the distribution of dimples on the surface of a golf ball. The exemplary demonstration of tessellation in a single pattern sets the form for tiling the whole surface and the demonstration is not interpreted to indicate a restriction to only applying the pattern to a single tile.
In response to applicant's argument that Sanchez and Thurman are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Sanchez and Thurman are in the same field of endeavor in that the references deal with advantageous patterns for aerodynamic features on the surface of a sphere. Further, the problem faced by the inventor involves aerodynamic effects of surface features on a sphere, namely apertures. Although applicant argues that noise reduction is the purpose of the invention the specification notes that the arrangement of surface features for aerodynamic performance is a factor to be considered, see paragraphs 0004,0025, 0037. The examiner maintains the position that the teaching of the cited references would have motivated a person of ordinary skill in the art to try the pattern of aerodynamic features leading to the structure of the claimed invention and the claimed advantage of noise reduction would follow, see MPEP 2112.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner maintains the position that it was known in the art that the arrangement of apertures on a hollow spherical shell affect the flight. The awareness is reflected in applicant’s specification, as noted above. A person of ordinary skill in the art would have found it obvious to try the pattern of aerodynamic features on a solid sphere from prior art on a hollow sphere. Both spheres pass through the air in flight and predictable flight patterns are important to both solid and hollow spheres. The failure of prior art to recognize that noise reduction would also result does not overcome the rejection based on the teaching of prior art pointing to the discovery of a hollow sphere having the claimed structure.
In response to applicant’s argument that the combination of the teaching of Sanchez and Thurman with that of Lim would render Lim unsatisfactory for its intended purpose, the examiner maintains the position that Lim does not teach away from providing advantageous aerodynamic features on the surface of the ball. The teaching of placing smaller apertures near the equator to increase durability does not obviate the possibility of an N-frequency tessellation in part on the surface of the sphere.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a uniform geodesic aperture layout) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claimed pattern of apertures at least in part based on an N-frequency tessellation is not incompatible with the disclosure of Lim.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN ELLIOTT SIMMS JR whose telephone number is (571)270-7474. The examiner can normally be reached 8:30 am - 5:00 pm - M-F.
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, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E SIMMS JR/Primary Examiner, Art Unit 3711 1 July 2026
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