Appeal No. Application No. 08/898,853
2004-1203
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The record indicates that the appellants originally copied claims 13 through 19 from U.S.
Patent No. 5,743,816 to Ohsumi et al. in order to provoke an interference.2 As indicated above,
independent claim 13 recites a solid golf ball comprising a solid core and a cover, with the core
having a three-layered structure composed of an inner layer, an intermediate layer and an outer
layer. In contrast, the original disclosure in the instant application describes “a multi-piece solid
golf ball having a structure of at least four layers, comprising a core having a structure consisting
of at least two layers and a cover enclosing the core and consisting of inner and outer cover
layers” (specification, page 2). The examiner contends that such disclosure runs afoul of the
written description requirement with respect to the subject matter recited in claims 13 through 19
because
[t]he specification does not substantially disclose a third layer on the core of the
golf ball. There is an option of providing additional layers (spec 9 line 5) but
there are no specific details given regarding the characteristics. Particularly there
is no mention of the Shore D hardness being less than the second layer (claim 13)
or the thickness (claim 15). Furthermore, there is no mention of the specific
gravities in claim 16 or the materials in claim 18 [final rejection, page 2].
The appellants counter that the rejection is unsound because the limitations in the
appealed claims relating to the outer “core” layer find written descriptive support in their
original
disclosure of the inner “cover” layer. According to the appellants, “[i]t is merely a matter of
2 Claims 14, 15 and 18 have since been canceled.
3
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