Acushnet Company v Spalding and Evenflo Companies, Inc
[1998] APO 31
•25 May 1998
official notice
decision of a delegate of the commissioner of patents
Application: No. 657005 in the name of ACUSHNET COMPANY
Title: GOLF BALL
Action: Opposition under section 59 of the Patents Act 1990 by SPALDING AND EVENFLO COMPANIES, INC.
Decision: Issued .
Abstract
The invention relates to golf ball dimple characteristics and particularly the edge angle where dimples of different diameter are used on the same ball.
Opposition not successful on all grounds. Evidence concerning the characteristics of the opponent’s unfinished ball and evidence of alleged sale is insufficient basis to show lack of novelty. Section 7 requires novelty to be determined in light of “prior art information ... made publicly available”. As there was insufficient evidence of what the finished ball would disclose the opponent’s case could not succeed.
The specification was amended following the serving of evidence-in-support and consequently there is no award of costs.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 657005 by ACUSHNET COMPANY and opposition under section 59 of the Patents Act 1990 by SPALDING AND EVENFLO COMPANIES, INC.
background
Patent application no. 657005 relating to golf balls was filed on 20 October 1992 by ACUSHNET COMPANY (“Acushnet”), with convention priority claimed from application no. 782035 filed in the United States of America on 24 October 1991. The application was advertised accepted on 23 February 1995. SPALDING AND EVENFLO COMPANIES, INC. (‘Spalding”) filed a notice of opposition on 23 May 1995 and a Statement of Grounds and Particulars on 23 August 1995.
Spalding filed their evidence-in-support on 23 February 1996. Acushnet filed a request to amend the complete specification and a statement of proposed amendments on 13 August 1996. The request was allowed on 17 April 1997 and advertised on 15 May 1997. Acushnet filed their evidence-in-answer on 27 May and evidence in reply was completed on 26 September 1997
Spalding filed an application on 12 May 1997 to file further evidence. The delegate in a decision dated 20 November 1997 decided not to grant the application to serve further evidence.
The evidentiary stage having been completed, the matter was set down for hearing at Melbourne on 16 April 1998. Mr G McGowan of counsel, assisted by Mr R Hind, patent attorney of Davies Collision Cave appeared for Acushnet. Mr M Royal, assisted by Ms M Hedges, patent attorneys of Phillips Ormonde & Fitzpatrick appeared for Spalding.
THE SPECIFICATION
The short description (three pages) relates to golf balls. It states that golf dimple designs in the past typically included 250 to 500 dimples, all having the same specific diameter, depth, and shape, usually chosen to maximise the aerodynamic effectiveness of the dimples. It was not uncommon to find several different sized dimples on a single ball. These were typically configured to all have the same depth, or the same enclosed volume, or the same depth/diameter ratio, or with no particular relationship at all. None of these schemes maximised the aerodynamic effectiveness of each dimple size.
The consistory statement reflects the wording of claim 1. In an embodiment, the ball has dimples over 50 percent and preferably about 70 to about 80 percent of the outer surface of the ball.
The figures show a perspective view of an unfinished ball with dimples of different diameters, a sectional view through the centre of two adjacent dimples, and a partial sectional view of a dimple of a finished ball.
Figure 1 shows a ball with a plurality of dimples 11, 12, 13, etc. (four are shown) with dimples 11 (a spherical concave dimple) and 12 (a saucer shaped dimple) shown in section in Figure 2. Figure 2 illustrates the meaning of the dimple edge angle, as the angle between the tangents T1 (to ball periphery surface) and T2 (to dimple wall).
Preferably edge angles are between 14 to 22 degrees for optimum aerodynamic ball performance with balls having 70-80 percent dimple coverage. Where dimple coverage is about 50 percent or more, a dimple edge angle of 14-26 degrees is preferred. While the edge angles of dimples may vary a small amount, where all dimple angles fall within a range of about 2 degrees the dimple angles are considered to be substantially the same.
Figure 3 shows the dimple edge angle for a finished ball including layers of paint and clear coat. These create a varied curvature at the demarcation between the ball periphery surface and dimple wall.
The specification indicates that “dimple edge angles, diameters, depths, and other dimensions are normally measured on an unfinished moulded ball or the master pattern used to create the ball mould, which usually are substantially the same. .... Thus the edge angles and other dimple dimensions on a finished ball may vary somewhat from the unfinished ball or the master pattern.”
The claims read as follows:
“1. A golf ball having three or more sets of dimples on its surface, each dimple having a curved wall which provides a dimple edge angle, wherein the respective dimples within a set have substantially the same diameter which differs substantially from that of the dimples of each other set, the respective dimples within a set have substantially the same dimple edge angle, and the dimples of each set have a dimple edge angle within 2° of the dimple edge angle of the dimples of each other set.
2. A golf ball according to claim 1 having dimples over 50% or more of its surface.
3. A golf ball of claim 1 having dimples over substantially 70% to 80% of the ball surface.
4. A golf ball of claim 2 in which the dimple edge angles of the sets are all in the range of 14 to 26 degrees.
5. A golf ball of claim 3 in which the edge angles of the dimples are all in the range of 14 to 22 degrees.
6. A golf ball substantially as hereinbefore described with reference to the drawings.”
evidence-in-support
The evidence‑in‑support consists of:
A declaration by Joseph F. Stiefel (“Stiefel‑1”)with exhibits JFS‑1, JFS‑2 and JFS‑3.
A declaration by Edward F. Mendrala with exhibits EFM‑1, EFM‑2 and EFM‑3.
A declaration by Gerry A. Lavallee with exhibits GAL‑1 and GAL‑2.
A declaration by Barry Nicholson (“Nicholson‑1”) with exhibits BN‑1 to BN‑16.
A declaration by T. Neville Young with exhibits TNY‑1 to TNY‑4.
A declaration by Michelle M. Hedges with exhibit MMH‑1.
A declaration by Elizabeth Swan.
Stiefel, Mendrala and Lavallee are all employed by the opponent in the USA. Stiefel-1 refers to exhibit JFS-1, a copy of the drawings and technical specifications, dated 7 September 1988, showing the placement of dimples and their location on a golf ball, the dimple pattern later designated as the 422 Tri pattern. The dimples have three different diameters. Stiefel-1 also refers to exhibit JFS-2, a description of the method Mr Stiefel normally used to measure the edge angles of dimples on a golf ball’s surface. Exhibit JFS-3 is an example of an uncoated golf ball having the 422 Tri pattern. Stiefel-1 states that the 422 Tri pattern (code name D137) was used commercially on the Spalding Top-Flite Plus II model golf ball and subsequently other golf balls. According to Stiefel-1, the results of Mr Stiefel’s measurements on an uncoated golf ball having the 422 Tri pattern were as follows:
| Pattern name | Ball Dia. (inches) | D# | Dimp. Dia. (inches) | Unpainted Measured Edge Angle (degrees) |
| 0.165 | 14.50 | |||
| 422 Tri | 1.680 | D137 | 0.153 | 15.17 |
| 0.142 | 13.58 |
Mendrala refers to exhibit EFM-1, which is identical to JFS-1, a copy of technical specifications including a set of drawings. Exhibit EFM-2 describes technical data for each dimple including the spherical radius of each dimple. The spherical radius is the radius of an imaginary sphere that when cut into the golf ball will produce a dimple on the ball having the desired diameter and depth. Mr Mendrala prepared the required tooling and prepared the first mould cavities from the tooling on 22 September 1988.
Lavallee refers to exhibit GAL-1, a copy of a work log which recorded the mould cavities prepared by Mr Mendrala. Lavallee states that of the six pairs prepared, four pairs were shipped to Australia. Exhibit GAL-2 is a copy of the mould history journal. From the journal entries, Lavallee deduces that the four pairs of mould cavities sent to Australia were produced before 27 October 1989.
Mr Nicholson has qualifications in rubber and polymer science and has previously worked for Spalding Australia Pty Ltd as a technical manager. Nicholson-1 suggests that it has been widely known and accepted since before 1991 that the diameter and depth of the dimples, as well as the dimple pattern can separately and collectively affect the ball’s flight characteristics. The most commonly known shape of dimples prior to October 1991 was circular in plan view. In order to satisfy the Rules of Golf, the dimples must normally be arranged symmetrically on the surface of the ball.
Nicholson-1 asserts that it has been widely known and accepted since long before October 1991 that the greater the coverage of dimples, the greater the effect of lift and reduction of drag, which increases distance through the air. Examples of golf balls having dimples with two or more different diameters, manufactured and/or sold in Australia prior to 24 October 1991 are “DDH” golf ball, manufactured by Dunlop, and “Top-Flite Plus II”, manufactured by Spalding Pty. Ltd.
Nicholson-1 refers to exhibit BN-2, copies of advertisements relating to the Dunlop DDH ball. The DDH ball has dimples of 4 different sizes: 2 being large and shallow and 2 being smaller and deeper. Nicholson-1 states that it is, and was prior to October 1991, a technical fact that dimples sharing a common diameter have virtually identical geometrical configurations.
Nicholson-1 then reviews the opposed specification and compares it with exhibit BN-3 (a copy of UK Patent Application GB 2203954 A), exhibit BN-4 (a copy of UK Patent Application GB 2234178 A), exhibit BN-5 (Mr Nicholson’s calculation of the surface area coverage), exhibit BN-6 (a copy of Australian Patent Specification AU 569427), exhibit BN-7 (Mr Nicholson’s calculation of the surface area coverage), exhibit BN-8 (a copy of Australian Patent Application AU-A-24098/88), exhibit BN-9 (a copy of Australian Patent No. AU 562196), exhibit BN-10 (Mr Nicholson’s calculation of the surface area coverage). Nicholson-1 also refers to exhibit BN-11 (a copy of a golf ball specification sheet for Spalding Australia Top-Flite Plus II golf ball), exhibit BN-12 (a copy of an invoice to Sportstrader), exhibit BN-13 (a copy of an order in the name of Decathlon Marketing), exhibits BN-14 to BN-16 (copies of Stiefel, Mendrala, and Lavallee declarations).
Young refers to exhibits TNY-1 to TNY-4 (photocopies of advertisements for the Dunlop DDH golf ball, published prior to October 1991 in “Australian Golf Digest”, formerly “Australian Golf”).
Hedges’ declaration is based on the information she received from Bob Barrett, Victorian State Manager of Federal Publishing Company. The company is the publisher of “Australian Golf Digest”, formerly “Australian Golf”. Exhibit MMH-1 comprises copies of the front cover of the magazine dated October 1984, November 1984, March 1985, September 1985 and November 1985. According to Hedges, the magazines were distributed for sale to newsagents in Australia just prior to the month of respective issue.
Swan declares that the respective journal issues of “Australian Golf Digest” and “Australian Golf” would have been available on the shelves of the State Library of New South Wales shortly after their receipt.
Evidence-in-answer
The evidence‑in‑answer consists of:
A declaration by Steven Aoyama. Mr Aoyama is employed by Acushnet in the USA as a “manager of Product Advanced Research”.
Aoyama refers to the drawings in exhibit EFM-2 and indicates that the edge angles of the 422 Tri pattern ball can be calculated according to the following formula:
where
w = edge angle in degrees
D = dimple diameter
r = dimple radius of curvature
Rb = ball radius
Using the values of D, r, and Rb supplied in EFM-2, Aoyama calculates the edge angles of the three different sized dimples to be:
| Dimple Diameter | Edge Angle |
| 0.165 | 16.35 |
| 0.153 | 17.62 |
| 0.142 | 15.46 |
Aoyama believes that these mathematically calculated edge angles are accurate and the measured edge angles in Stiefel-1 are not. He states that the method described in the Stiefel-1 declaration, “incorporates a lot of “eyeballing” and other non-precise techniques” and “Given the amount of judgment required to make these measurements, there is plenty of room for bias to show up in the data, especially if it is not done “blind” ”.
evidence‑in‑reply
The evidence‑in‑reply consists of:
A declaration by Joseph F. Stiefel (“Stiefel‑2”) dated 12 June 1997.
A declaration by Barry Nicholson (“Nicholson‑2”) dated 13 June 1997 with exhibit BN‑17.
A declaration by Joseph F. Stiefel (“Stiefel‑3”) dated 10 September 1997 with exhibits JFS‑4 to JFS‑8.
A declaration by Barry Nicholson (“Nicholson‑3”) dated 23 September 1997 with exhibit BN‑18
Stiefel-2 comments on the practical consequences of varying the edge angle by up to 0.5°, of the dimples sharing a common diameter. In Mr Stiefel’s experience, such a small change in the dimple edge angle would have a negligible effect on the aerodynamic performance of the golf ball. Accordingly, Mr Stiefel does not believe there would be any detectable change in such flight characteristics as length, height, lift, spin, roll, control and accuracy by such a small change in dimple edge angle.
Nicholson-2 refers to exhibit BN-17, a copy of the request dated 13 August 1996 to amend the complete specification of the opposed patent application no. 657005. Nicholson-2 concludes that the additional feature introduced by the amendment, “the dimples of each set have a dimple edge angle within 2° of the dimple edge angle of the dimples of each other set”, is also present in the Spalding Top-Flite Plus II golf balls. Nicholson-2 considers that the features of the amended claims 2 and 3 were disclosed by sales and offers for sale of the Spalding Top-Flite Plus II golf balls prior to October 1991. Regarding the measured angles, the third measured edge angle 13.58° is, on the face of it, not within the range claimed in claims 4 and 5. However, Nicholson-2 notes that the limits of the claimed ranges are defined by whole numbers. When the measured edge angle 13.58° is rounded to the nearest whole number, i.e. 14°, it clearly falls within the ranges. According to Nicholson-2, this level of precision is consistent with the overall disclosure of the opposed specification, which states that “where all dimple angles fall within a range of about 2 degrees, the dimple angles are considered to be substantially the same”. Notwithstanding the above, Nicholson-2 states that a difference of less than half a degree in the value of the dimple edge angle is such as to have no practical effect on the aerodynamic performance of the golf ball.
Stiefel-3 disagrees with the Aoyama assertion that the method described in Stiefel-1 was inaccurate, imprecise and open to bias. Prior patent specifications in the name of the applicant describe the same method. Exhibit JFS-8 (a copy of US Patent no. 4936587 in the name of the applicant) states that the measurements were made on the actual golf ball, rather than calculated mathematically. If the relevant edge angles should be determined mathematically, then Stiefel-3 considers that the opposed specification fails to disclose this. The opposed specification states that “dimple edge angles, diameters, depths and other dimensions are normally measured on an unfinished moulded ball or the master pattern used to create the ball mould which usually are substantially the same”. The term “unfinished” is a term of the art referring to the moulded ball after milling and polishing but prior to being coated with paint and/or clear coat.
Stiefel-3 further states that the small differences between the calculated and measured edge angles are not due to any inaccuracies in Mr Stiefel’s measurements of edge angles, but are an unavoidable consequence of the effects of the ball production process. As part of the standard tool making process at Spalding, after the dimples are cut into the tool, the edges of the dimples are finished by “honing” in order to remove any sharp burr. Furthermore, after the golf balls are moulded, it is a standard step to remove the “flash” from the golf ball’s surface in a vibratory polishing step. The effects of honing the tooling and polishing the golf ball surface are a very slight rounding of the dimple edges. Stiefel-3 further states that there is no material effect on aerodynamic performance at a degree of precision of greater than about 2-3°. Stiefel-3 also concludes that the Spalding golf balls possessed the additional feature introduced in claim 1 of the amended specification namely that the dimple edge angles of one set are within 2° of the dimple edge angles of each other set.
Nicholson-3 (exhibit BN-18 is a copy of Stiefel-3) considers that the degree of very slight rounding of the dimple edges caused by honing of the tooling from which the moulds were made and the vibratory polishing of the golf ball’s surface were the same on golf balls manufactured in Australia as on golf balls manufactured in USA.
DECISION
Section 40
Spalding allege that the specification does not give a method of performance of the invention. There is no exemplification of dimple diameter, dimple depth, numbers of dimples in each set, the numbers of sets of each type, or arrangement of sets and dimples. Spalding also argue that it would not be possible to design a golf ball pattern from the instructions given.
However, the specification is addressed to a person skilled in the art and while a lay person may not be able to design or manufacture a golf ball from the specification alone, in my view a skilled addressee would be able to do so. In this regard, the declarants appear to have no significant difficulty in evaluating and comparing the present invention with the prior art. It is further said that the advantages of the invention are not given but I believe the skilled addressee would recognise in the description that the aim of the invention was to maximise the aerodynamic effectiveness where different sized dimples are used on a golf ball.
Spalding have raised clarity issues about the terms “dimple edge angle”, “substantially the same diameter”, “which differs substantially from that of the dimples of each other set”, and “sets”. Once again the declarants have not shown any difficulty arising out of the lack of clarity in these terms and I believe their scope is sufficiently clear to a skilled addressee. It is further said that in claim 2, the feature of the golf ball having dimples over 50% or more of its surface is not fairly based on the description at page 1A, where the ball is described as having dimples over 50% of its surface. As page 1A also refers to “preferably about 70 to about 80 percent” coverage and “50 percent or more” appears on page 2 I believe claim 2 is fairly based.
Manner of new manufacture
This ground was argued together with obviousness on an assertion that the claimed invention was a mere selection of dimple characteristics without an indication of the advantage achieved. I do not think the case was seriously pursued but nevertheless I do not find that the subject matter claimed is unsuitable for the grant of a patent.
Obviousness
The general test to be applied in determining obviousness is whether the invention would have been obvious to a non-inventive worker in the trade equipped with the common general knowledge in the trade as at the priority date (The Wellcome Foundation Limited v V R laboratories (Aust) Pty Ltd (1980-1981) 148 CLR 262 at 270). It was also stated in the Wellcome case, supra, at 286 that:
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not”.
The evidence does not suggest that the dimple edge angle is a parameter that has been recognised in common general knowledge as having particular significance, to be controlled to influence the aerodynamic performance of a golf ball. Consequently I cannot see how it could be shown on the balance of probabilities that faced with the problem of improving golf ball performance an appropriately skilled addressee would have taken the necessary steps to arrive at the invention claimed by the applicant. I find that there is insufficient evidence to show that the claimed invention lacks an inventive step.
Novelty
The basic test for anticipation and lack of novelty is the “reverse infringement” test – see General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited (1972) RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd. (1977) 137 CLR 228 at 235. In applying this test I must ascertain whether each and every one of the essential features of the claimed invention are provided by the prior disclosure (Rodi Wienenberger AG v Henry Showell Ltd. [1969] RPC 367, Fluor Oxidising Co. Ltd. v Carr & Co. Ltd. (1908) 25 RPC 428).
Having reviewed the evidence I find that the only alleged anticipation that could possibly be relevant under this ground of opposition is the sale in Australia of the Spalding Top-Flite Plus II golf balls having the 422 Tri pattern.
Acushnet argued that sale of that ball in Australia before the priority date had not been proved and if proved the finished golf ball coated with paint and lacquer could not be analysed to give the edge angles characteristics of the ball. The opponent on the other hand has provided evidence concerning the design of the 422 Tri pattern and the results of edge angle measurements made on an unfinished ball. There is evidence alleging that balls made in Australia used moulds produced in the USA from the same tooling and hence balls made in both countries would be virtually identical. Also there is material said to prove of sale of the balls in Australia.
What I cannot find in the evidence is the information that a finished golf ball would have provided to the public through its sale in Australia. Acushnet suggest in this regard that it would not have been possible for the purchasers to determine the dimple edge angles because any solvents used to dissolve the paint and lacquer would also have damaged the ball inside and destroyed any information about the dimple edge angles. This seems somewhat unlikely but I am left without any evidence either way.
To prove a lack of novelty section 7 requires the opponent to show that a claimed invention is not novel in light of “prior art information ... made publicly available”. Consequently in this context it is insufficient to prove merely that a finished golf ball was available on the market and that it was based on an unfinished ball with certain measured characteristics. The opponent must also show that the information disclosed to the public by that sale was such that it deprived the claimed invention of novelty. It may be that here the opponent has assumed that the information disclosed by the finished and unfinished balls is equivalent but I do not believe that I am free to rely on such an assumption without clear evidence. Seiller's Application [1970] RPC 103, is much quoted in these circumstances where Graham, J said at 106:
"In my judgment it is necessary that proof of prior user in opposition cases should be very clear. Normally, in the absence of cross-examination, this will involve corroboration of a mere statement as to recollection in a declaration, particularly where the time interval involved is considerable. Such corroboration is often best found in documents contemporary with the fact to be proved. Each case, however, must be considered on its own facts and I say expressly that I am not attempting to lay down any rule as to what is or is not sufficient in any given case ."
It is also the case that in opposition proceedings the standard of proof is the civil standard on the balance of probabilities (see e.g. Dunlop Holdings Ltd's Application [1979] RPC 523), and the opponent carries the onus of establishing the opposition grounds alleged. In Montecatini Edison SpA v. Eastman Kodak Co. (1971) 45 ALJR 593 at 595 Gibbs J. said:
"I ought not to find in favour of the appellant on the issue of want of novelty, or that of obviousness, unless I were satisfied that the appellant's case had been clearly made out; it was said that I should adopt a similar approach to that which must be followed in considering whether to accept an application, namely, that the application should only be rejected in a clear case where it is obvious that a patent cannot be granted: see Commissioner of Patents v. Microcell Ltd. (1959) 102 CLR 232 at 236, 244-5."
Consequently I find that the opponent has not made out its case under this ground of opposition.
COSTS
Spalding have not been successful in their opposition. Acushnet did however amend their specification to narrow the scope of the claims following the serving of evidence-in-support. In the circumstances I do not think it is appropriate to make any award of costs.
SUMMARY
I have found that the opposition is unsuccessful on all grounds. Consequently I direct that the application proceed to sealing.
PHILIP SPANN
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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