Acushnet Company v Spalding Australia Pty Limited

[1989] APO 24

In the Matter of the Patents Act      1952

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In the Matter of Application No. 533145 for a Patent by ACUSHNET COMPANY

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In the Matter of Opposition thereto under Section 59 by SPALDING AUSTRALIA PTY. LIMITED.

DECISION OF AN ACTING ASSISTANT COMMISSIONER OF PATENTS:
Background
         In my decision in this matter dated 29 December 1987 I found that the opposition succeeded on the grounds of prior publication (by use), failure to comply with section 40, and obviousness.  I gave the applicant an opportunity to propose amendments to overcome these defects; the applicant lodged a request to amend which, following examination, was advertised in the Official Journal on 9 June 1988.  The request was not opposed and was advertised as allowed on 27 October 1988.  However, in a letter dated 13 September 1988, the opponent advised that it wished to be heard when the amended application was to be considered in the light of my previous decision.  Both parties were further heard in Melbourne on 15 February 1989; Mr P H Huntsman, patent attorney, appeared for Acushnet and Messrs M J Royal and D J Rickard, patent attorneys, appeared for Spalding.
The Specification
         Pursuant to the amendments allowed under sub‑section 83(2), the claims of the specification are now of a scope somewhat narrower

than the scope of the accepted claims.  The claims in their present form are as follows:

1.In a golf ball comprising a core and a cover which extends about the core, the cover being formed of resin which is substantially clear, the improvement comprising said cover resin having admixed therein a fluorescent material, said fluorescent material being selected from the group consisting of fluorescent dye in the amount of 0.01% to 0.40% by weight of the cover composition and fluorescent pigment in the amount of 0.5% to 6.0% and said cover having at least one substantially clear coat applied over the cover to give the golf ball a glossy appearance and wherein the fluorescent material in the cover is visible in the finished golf ball.

2.The improvement of claim 1 wherein the substantially clear resin is an ionomer resin.

3.The improvement of claim 1 or claim 2 wherein the cover composition includes an ultraviolet light stabilizer.

4.The improvement of claim 3 wherein the ultraviolet light stabilizer is present in the amount of 0.1% to 3.0% by weight of the cover composition.

5.The improvement of any one of the preceding claims wherein the fluorescent material comprises a fluorescent dye present in the amount of o.04% to 0.40% by weight of the cover composition.

6.The improvement of any one of the preceding claims wherein the core is a one piece solid core.

7.The improvement of any one of the preceding claims wherein the core is white, the cover composition is clear and identifying indicia are applied directly to the core to be visible through the cover and through the substantially clear coat.

8.The improvement of any one of claims 1 to 6 wherein identifying indicia are applied to the cover prior to the application of the at least one substantially clear coat.

9.The improvement of any one of claims 1 to 6 and 8 wherein a white opacifying agent is admixed with the resin of the cover.

10. The improvement of claim 9 wherein the opacifying agent is titanium dioxide.

11. The improvement of claim 1 substantially as herein described with reference to any one of Examples 1, 2 and 4 to 7.

Submissions
         Mr Royal made several submissions on section 40 matters but I shall confine my comments to the more significant of those matters.  He submitted that claim 1 is ambiguous because of appended claim 9: thus the use of the expression "opacifying agent admixed with the resin of the cover" causes some doubt as to whether the cover can be "substantially clear".  Mr Huntsman submitted that claim 1 was clear, he stated:

"The cover is formed from resin which is substantially clear, it doesn't specify one way or another whether the cover is clear or not in the final product."

On the matters of prior publication by use and obviousness, Mr Huntsman emphasised that claim 1 has now been limited by amendment to particular ranges of fluorescent materials set down in the examples in the specification and that these ranges give a commercially acceptable desired brightness of the surface of the golf ball.  Mr Royal argued that the ranges of materials referred to are matters of common general knowledge because the examples merely establish, inter alia, high and low levels of the amount of fluorescent material to be used.  Example 5 indicates that 0.40% of dye is a "high level" and "makes the ball somewhat less bright and so less visible", whereas example 6 indicates that when the quantity of dye is reduced to 0.01%, the golf ball "does not have the fullness of colour".  He stated:

"These limits are the sorts of limits that are established by the normal trial and error type experiments that one carries on before one puts any proposal into practice.  There's nothing special about these amounts, they are amounts that are quite within the competence of the man skilled in the art."

Mr Royal also submitted that the features of the cover formed of a clear resin and the clear coat applied over the cover to give the golf ball a glossy appearence have been disclosed in the specification and evidence as being matters of common general knowledge. Mr Royal thus concluded that claim 1 as amended is still obvious, and is published by prior use in the light of common general knowledge. He further submitted that claims 2‑10 merely add well‑known features and that there is no invention in the specific examples referred to in claim 11, since most of the materials were available "off‑the‑shelf". He referred to the decision of the High Court in Washex Machinery Corp. v. Roy Burton & Co. (1975) 49 ALJR 12 in which the independent claim was found to be obvious; Stephen J stated at page 15:

"The main attack made upon claim 1 founds upon what is said to be its failure to do more than incorporate a description of part of the prior art and then refer to one obvious mode of overcoming the stated disadvantages of the prior art and this without providing more than a mere general reference to that obvious mode."

In that case it was recognized that a theoretical solution to the problems of the prior art had been known before the priority date but "that the adoption of such a solution would, in practice, then have been regarded as impracticable, and, consequently, as not warranting investigation and trial, because of what was then believed to be ... great technical difficulties" (Page 16).  Stephen J found that the solution "would have been apparent to the hypothetical skilled but unimaginative technician because of the common general knowledge in the art which must be presumed to be part of his skilled equipment".
         Mr Huntsman submitted that firstly there is no evidence to suggest that the amounts of fluorescent materials specified in the claims are common general knowledge and secondly that the opponent's only source of this information was the examples in the specification.  He stated:

"It is not necessary for the applicant to identify why he has selected a particular figure in the examples."

With regard to the appended claims, he emphasised claims 3 and 7, submitting that the opponent had produced no evidence that either the use of ultraviolet stabilizers is common practice or the idea of applying indicia directly to the golf ball core is known.
Decision
I have given serious consideration to the opponent's argument that claim 1 is not clear. The clause "the cover being formed of resin which is substantially clear" could, in the light of the description of the invention, be construed to mean that the final cover is substantially clear. However, this construction would make the claims as a whole ambiguous, since claim 9 is directed to an opaque cover. Generally though, claims should be interpreted to avoid ambiguity, see Hendriksen v. Tallon Ltd. [1965] RPC 434, and in this case I am prepared to accept Mr Huntsman's broader construction of the claim, i.e. a clear resin is used to form the cover with the final cover being either clear or opaque to some degree as long as the fluorescent material is visible.
         This broader construction of claim 1 adds weight to the opponent's contention that the claim is prior published by use of the Spalding ball referred to in my earlier decision.  The Spalding ball had a resin cover including opacifying titanium dioxide pigment admixed with fluorescent yellow pigment and the cover was painted with a clear epoxy primer and a clear polyurethane top coat.  However, there is a feature differentiating present claim 1 from the Spalding ball, namely the specified amounts of fluorescent material in the former.  The evidence does not include information on the amounts used in the Spalding ball, thus claim 1 is not prior published.
         Mr Royal submitted that there was nothing special about these specified amounts of fluorescent material and I agree. 
Thus at page 6 lines 8‑17 the specification reads ‑

"The fluorescent materials useful in the present invention are commercially available fluorescent pigments and dyes.  They are described in U.S. patent Nos. 2,809,954, 2,938,873, 2,851,424 or 3,412,036.  A good commercial source for these products is Dayglo Color Corporation.  The amount of fluorescent material to be used is largely a matter of choice depending on the brightness desired.  However, it is preferred that the amount of fluorescent dye be from about 0.04% to about 0.40% by weight of the cover composition."

Two points emerge.  The first is that the fluorescent materials are commercially available.  The second is that the amount of material to be used is "largely a matter of choice depending on the brightness desired" ‑ a very relevant concession by the applicant.  Further to the second point, I note that the specification nowhere discloses the compositions which comprise the fluorescent materials, and even in the examples, the disclosure is by reference to commercial or trade names e.g. "Dayglo Fluorescent Dye Saturn Yellow", which are not, of course, indicative of composition.
         In these circumstances the inclusion of percentage ranges of the fluorescent material in the claims is substantially meaningless, and cannot possibly contribute to novelty. I note that in similar circumstances in The Carlton Tyre Saving Co.'s Application (1973) 43 AOJP 1404, where the applicant claimed a specific wall thickness of a badminton racquet frame, the delegate of the Commissioner found that the claims of the specification were not novel because "all the applicant had done was to optimise a range of values and as some thicknesses must have better results than others, finding the best thickness could not be regarded as novel". 
         Mr Huntsman's arguments about the "greater gloss" of the applicant's golf ball, I view as quite irrelevant; in any case,  this is a surface effect on the ball not associated with the amounts of fluorescent material.  As described in the specification and as defined in present claim 1, the glossy appearance is due to the clear coat applied over the cover.  Thus I conclude that claim 1 is not novel in the light of the prior use of the Spalding golf ball referred to in my earlier decision.
         Claim 2 does not include any novelty‑conferring feature; the synthetic resin SURLYN (Registered Trade Mark) is an ionomer resin and according to the specification is very commonly used as a golf ball cover material.  With regard to claims 3 and 4, the description of the invention on page 6 reads:

"Because of the relatively unstable nature of fluorescent pigments and dyes, and especially because of the outside use to which golf balls are put, it is preferred that a U.V. stabilizer be added to the cover composition.  If either the fluorescent material or the cover material comes with sufficient U.V. stabilizer, it is obviously not beneficial to add more.  However, whether present in the cover materials or added thereto, it is preferred that a U.V. stabilizer be present in the amount of from about 0.1% to about 3.0% by weight of the cover, more preferably from about 0.5% to about 2.0%."

The reference to either the fluorescent material or the cover material possibly coming with sufficient U.V. stabilizer clearly points to the use of such materials being well‑known, and in fact, this merely confirms my own unspecialised knowledge;  thus I see no novelty in claims 3 and 4.  The arguments applicable to claim 1 about to the ranges of materials are equally applicable to claim 5, which therefore also lacks novelty.  The Spalding ball comprised a solid core and titanium dioxide opacifying agent in the cover, thus the additional features recited in claims 6, 9 and 10 add no novelty.  Applying indicia to the cover prior to the application of the clear coating is common practice in the art, so I view claim 8 also as being not novel.
         I come now to the consideration of claim 7.  In its broadest form, this is a claim to the improvement in the ball as defined in claim 1 wherein the core is white, the cover is clear and identifying indicia are applied directly to the core so as to be visible through the cover and through the substantially clear over‑coat.  What the specification has to say about such an arrangement is this ‑

"Where a white core is used with a clear cover, the stamping can be put directly on the core and can be seen through the cover.  This is true even where a fluorescent dye is used to colour the golf ball cover material.  This is of very great advantage since it ensures a long lasting and, indeed, relatively permanent retention of the trademark and identification number and any other markings put on the ball.  This also overcomes one of the more difficult problems of high quality golf ball manufacture, poor stamping.  It advantageously permits the use of a low quality foil for the stamping since the foil is not required to have durability characteristics."

In my view, if claim 1 as presently drafted were to incorporate the features recited in claim 7, novelty would be clearly established.  On the question of obviousness, I need not say much;  having regard to my comments about the percentage ranges and UV stabilizer, I think that the situation is little changed from what it was at the time of issue of the earlier decision.  There is, however, no expert evidence before me about the arrangement that would result from properly combining the features recited in claim 7 with the improvement in a golf ball as defined in claim 1.
         Mr Royal suggested that the applicant should not be given any further opportunity to amend its specification and that the application ought to be refused.  I think that such an action would be unnecessarily harsh on the applicant as I have found that there is patentable subject‑matter in its specification.  On the other hand, there is a need to finish the matter expeditiously in the public interest; the opposition proceedings began on 3 February 1984.  Thus I allow the applicant 30 days from the date of this decision to propose amendments in accordance with the comments I have set out above.
         I award costs against Acushnet.

(J.L. ROVETA)

Patent Attorneys for the applicant: Davies & Collison, Melbourne
Patent Attorneys for the opponent : Phillips, Ormonde & Fitzpatrick,