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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 2, 2026 has been entered.
Status of Claims
This office action is in reply to the request for continued examination filed on June 2, 2026. Claims 10, 19 and 20 have been amended. No additional claims have been added. No further claims have been cancelled. Claim interpretation previously made under 35 USC 112(f) is maintained. The previous 112 rejection with respect to claim 1 has been withdrawn and the previous rejection with respect to amended claims 10, 19 and 20 has been overcome and thus has also been withdrawn however the examiner maintains the previous 103 rejection of claims 1-9 and 18, which is discussed in greater detail below. Claims 1-10 and 12-20 are currently pending and have been fully examined.
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.
Claims 1-9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Lombardi (2014/0165787) in view of Holland-Letz (EP 2045046, previously cited).
In reference to claim 1, Lombardi discloses a hand tool (10) comprising:
a head (14, Figure 8) having a bell and a face (40) for delivering an impact; and
a handle (12) operably coupled to the head and extending linearly away from the head along an axis (A, Figure 8),
wherein the handle comprises a grip portion (24) proximate to a distal end (i.e. lower end thereof) of the handle,
wherein the grip portion comprises a core material (20), an anti-vibration layer (26) disposed around a periphery of the core material in a radial direction substantially perpendicular to the axis, and an outer layer (28) disposed around a periphery of the anti-vibration layer,
wherein the anti-vibration layer is made of a first elastomeric polymeric material having a Shore A hardness between about 42 and about 48 (see paragraph 62 for disclosing “a Shore A durometer of about 30 to about 60”, which meets the entire range of about 42 and about 48);
wherein the outer layer is made of a second elastomeric polymeric material having a Shore A hardness between about 50 and about 65 (see paragraph 64 for disclosing “a Shore A durometer of about 60 to about 80”, which meets the claimed Shore A durometer range of between 60 and about 65); and
wherein a thickness of the anti-vibration layer is thicker than a thickness of the outer layer (see Figures 8 and 10 for showing anti-vibration layer 26 being thicker than outer layer 28 at least thicker than portion 220 of outer layer, see Figure 8).
Lombardi lacks;
providing the entire range of outer layer (i.e. having a Shore A hardness between about 50 and about 60); and
providing a hardness ratio between the first elastomeric polymeric material and the second elastomeric polymeric material is a minimum of 0.65 and a maximum of 0.96.
However, Holland-Letz teaches that it is old and well known in the art at the time the invention was made to provide an outer layer (6) having a Shore A hardness between about 30 and 60 (see Claim 1). Thus, Lombardi as modified by Holland-Letz provide the entire range of the Shore A hardness being between about 50 and about 65.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the range of the Shore A hardness of the outer layer, of Lombardi, with the known technique of providing an outer surface having Shore A hardness between about 50 and about 60, as taught by Holland-Letz, and the results would have been predictable. In this situation, one could provide a more advantageous and versatile device that more effectively transmits a torsional moment or a compressive force, in which the migration of the plasticizer is avoided or is limited to a tolerable extent (see paragraph under the title “OBJECT OF THE INVENTION”).
In addition, Lombardi disclose of providing a Shore A durometer of about 60 to about 80 needs to be optimized to, “…chemically and permanently bond to the soft rubber material of the first elastomeric material layer 26. This hard rubber material of the second elastomeric material layer 28 not only helps reduce vibration but also provides wear resistance greater than the softer rubber material of the first elastomeric material layer 26 underneath it.” (paragraph 64) and as such the Shore A durometer of the outer layer being between about 50 and about 60 is disclosed to be a result effective variable in that changing the Shore A durometer of the outer layer changes the bond, the vibration and/or wear resistance. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Lombardi device to have a Shore A durometer of the outer layer being between about 50 and about 60, as it involves only adjusting the Shore A durometer of the outer layer. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the Shore A durometer of the outer layer, of Lombardi, with a Shore A durometer of the outer layer being between about 50 and about 60, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Further, it appears that applicant places no criticality on the range claimed, indicating simply that the Shore A hardness “may” be within the claimed ranges (paragraph 5) and offering other acceptable ranges (e.g., 65 paragraph 35) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Thus, the combination as a whole provide that the first elastomeric polymeric material has a Shore A hardness between about 30 to about 60 (which overlaps the range of 42 to 48) and the second elastomeric polymeric material has a Shore A hardness between about 50 to about 80 (which overlaps the range of 50 to 65).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Shore A hardness of the first elastomeric polymeric, of Lombardi, to be between 42 to 48 and to modify the Shore A hardness of the second elastomeric polymeric to be between 50 to 65, as applicant appears to have placed no criticality on the claimed range (see paragraph 5 indicating the hardness values “may” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Finally, because the entire range of the first elastomeric polymeric material having a Shore A hardness between about 42 and about 48, and because the entire range of the second elastomeric polymeric material having a Shore A hardness between about 50 and about 65 has been met (see above), the examiner notes that depending on the particular Shore A hardness values selected, one could provide the claimed hardness ratios. For example, if the first elastomeric polymeric material has a Shore A hardness value of 42 and the second elastomeric polymeric material has a Shore A hardness value of 65, the resulting hardness ratio would be 42/65=0.65 thereby meeting the claimed lower hardness ratio of 0.65. Additionally, if the first elastomeric polymeric material has a Shore A hardness value of 48 and the second elastomeric polymeric material has a Shore A hardness value of 50, the resulting hardness ratio would be 48/50=0.96 thereby meeting the claimed higher hardness ratio of 0.96.
In reference to claim 2, Lombardi discloses an intermediate layer (22 in Figure 8) is disposed between the core and the anti-vibration layer (Figure 8).
In reference to claim 3, Lombardi discloses that the intermediate layer comprises one or more retention members (see the rounded inner “protrusion” in the annotated figure below that engages within cavity 230 of core 20, which is similar to the “geometrically shaped protrusions” as described for forming the retention members, see paragraph 38) that extend in the radial direction (i.e. horizontal direction) to provide inter-layer bonding with one or both of the core (20) and the anti-vibration layer.
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In reference to claim 4, Lombardi discloses that the intermediate layer (22) is molded onto the core (paragraph 31), the anti-vibration layer (26) is molded onto the intermediate layer (paragraph 31), and the outer layer (28) is over-molded onto the anti-vibration layer (paragraphs 5 and 31 and Figure 10).
In reference to claim 5, Lombardi discloses that the core is metallic material (see paragraph 75) having one or more cavities (230) formed therein to enable material from the intermediate layer to penetrate the one or more cavities to mechanically fasten the core to the intermediate layer (paragraph 53 and Figure 11).
In reference to claim 6, Lombardi discloses that the core is polymeric material containing fiber reinforcement (i.e. when it is formed from fiberglass the fibers therein meet the fiber reinforcement limitation, paragraph 45) having one or more cavities (230) formed therein to enable material from the intermediate layer to penetrate the one or more cavities to mechanically fasten the core to the intermediate layer (paragraph 53 and Figure 11).
In reference to claim 7, Lombardi discloses that the outer layer is over-molded onto the anti-vibration layer to encapsulate the anti-vibration layer (paragraph 31 and Figure 10).
In reference to claim 8, Lombardi discloses the claimed invention as previously mentioned above and further shows that thickness of the anti-vibration layer (26) is thicker than at least a thickness of the outer layer (28, see Figures 8 and 10 for showing anti-vibration layer 26 being thicker than outer layer 28, at least thicker than portion 220 of outer layer), but lacks,
the thickness of the anti-vibration layer is up to about 1 mm thicker than the thickness of the outer layer.
Lombardi discloses that anti-vibration layer (26) needs to be optimized to reduce vibration, “…layer 26 is constructed and arranged to reduce the vibration” (paragraph 62) and as such the thickness of the anti-vibration layer is disclosed to be a result effective variable in that changing the thickness of the anti-vibration layer changes the vibration that is reduces during normal operation. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying the Lombardi device to have a thickness of the anti-vibration layer being up to about 1 mm thicker than the thickness of the outer layer, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the thickness of the anti-vibration layer, of Lombardi, to be up to about 1 mm thicker than the thickness of the outer layer, as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The examiner also notes that this concept is further evidenced by Holland-Letz which teaches of providing different thicknesses (see following portion of translation “Of course, different layer thicknesses are possible.”) and it appears that the modification would not substantially change the operation of the Lombardi device. Finally, it appears that applicant places no criticality on the range claimed, indicating simply that the thickness of the anti-vibration layer “may” be within the claimed ranges (paragraph 52) and offering other acceptable ranges (e.g., 3mm, paragraph 52) and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
In reference to claims 9 and 18, Lombardi discloses that the anti-vibration layer and the outer layer are mechanically fastened to each other (at 240, see Figure 10), or bonded to each other via adhesives to provide inter-layer bonding between the outer layer and the anti-vibration layer (Figure 10).
Allowable Subject Matter
Claims 10, 12-17, 19 and 20 are allowed.
The following is an examiner's statement of reasons for allowance: The present invention pertains to a hand tool. It is the examiner's opinion that the art of record considered as a whole, alone or in combination, neither anticipates nor renders obvious of providing that; penetration of the intermediate layer through the anti-vibration layer and the outer layer, the intermediate layer provides inter-layer bonding (as in claim 10), nor renders obvious of providing that; the intermediate layer comprises one or more retention members that extend through respective channels in the anti-vibration layer and the outer layer in the radial direction to provide inter-layer bonding with one or both of the outer layer and the anti-vibration layer (as in claims 19 and 20), together in combination with the rest of the limitations of the independent claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see pages 7-8 with respect to the previous 112 rejection of claim 1 has been fully considered and is persuasive. The previous 112 rejection has been withdrawn.
Applicant’s arguments, see pages 10-13 with respect to amended claims 10, 19 and 20 have been fully considered and are persuasive. The previous rejections of these claims has also been withdrawn.
Applicant's arguments with respect to the art based rejections of claims 1-9 and 18 have been fully considered but they are not persuasive.
Applicant contends that, “The Examiner argues that the claimed hardness ratio range of 0.65 to 0.96 is obviously derivable from a combination of hardness ranges provided by the prior art, namely Lombardi and Holland-Letz. Applicants respectfully disagree…If the same calculation is made on the values provided by Lombardi, the first elastomeric material has a hardness range from 20-60, and the second elastomeric material has a hardness range from 60-80 (see paragraph [0003]). Applying those values, a hardness ratio between the elastomeric layers provided by Lombardi falls at 0.25 to 1 which is a significantly more expansive range than the defined ratio. A range of 0.25 to 1 displays significantly different properties compared with those found within the narrow critical range defined in claim 1 and allows for hardness ratios not exhibiting the advantages discussed in the present application specification in paragraphs [0050] - [0051]. Applicants note that simply selecting arbitrary values from the large range disclosed by Lombardi (possibly in combination with Holland-Letz) that would result in the claimed hardness ratios is ignoring the criticality of the claimed range. MPEP 2144.05 III (a) states "Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." (In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) Applicants respectfully submit that the claimed durometer range ratio is a critical range of values that was discovered by the inventors to provide significantly improved benefits described in paragraphs [0050] to [0051] of the Applicant's specification. In this regard, specific testing described in [0051] and shown in FIG. 5 of the present application demonstrates the superiority of the selected values. There would be no reason that one of skill in the art, upon reading Lombardi, would be motivated to select the Shore A hardness values for the first elastomeric material and the second elastomeric material that would lead them to develop the exact claimed hardness range ratio currently disclosed by claim 1.
However, the examiner respectfully disagrees with this statement. The examiner has reviewed paragraphs 50-51 and Figure 5 and note that criticality has not been properly established. Merely disclosing that, “A ratio of maximum acceleration at the handle 540 to maximum acceleration at the head 520 has been shown to be below 0.075, which is about a 25% reduction relative to other hammers tested with the test rig.” (as in paragraph 51) is not sufficient to properly establish criticality. Furthermore, it is not clear who or what were the “other hammers” that were tested? Where are the results of those hammers that were tested? Was Lombardi one of those hammers tested and compared? Where is the evidence that the alleged claimed durometer range ratio is a critical range of values as compared to the prior art? Since, the applicant fails to properly provide any evidence to support the claim for criticality, the examiner maintains that criticality has not been properly established.
Next, as discussed in the rejection above, the examiner notes that it would have been obvious to one having ordinary skill in the art to be motivated to select the Shore A hardness values for the first elastomeric material and the second elastomeric material that would lead them to develop the exact claimed hardness range ratio currently disclosed by claim 1, especially in order to “helps reduce vibration but also provides wear resistance greater than the softer rubber material of the first elastomeric material layer 26 underneath it.” (paragraph 64). Again, as previously discussed above, the combination provides that the first elastomeric polymeric material has a Shore A hardness between about 30 to about 60 (which overlaps the range of 42 to 48) and the second elastomeric polymeric material has a Shore A hardness between about 50 to about 80 (which overlaps the range of 50 to 65). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the Shore A hardness of the first elastomeric polymeric, of Lombardi, to be between 42 to 48 and to modify the Shore A hardness of the second elastomeric polymeric to be between 50 to 65, as applicant appears to have placed no criticality on the claimed range (see paragraph 5 indicating the hardness values “may” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The examiner recommends amending claim 1 similar to the amendments currently made in claims 10, 19 or 20 in order to overcome the rejection above.
Applicant contends that, “Further, as discussed above, the durometer range ratio between the anti-vibration layer and the outer layer is a function of relative thicknesses of the anti-vibration layer and the outer layer. In other words, the relative thickness of the layers informs the choice of Shore A hardness for each of the anti-vibration layer and the outer layer. In Lombardi, FIG. 8, it can be seen that the thickness of the first elastomeric material layer 26 and the second elastomeric material layer 28 is variable within the embodiment. In the region "R", the second elastomeric material layer 28 is obviously thicker than the first elastomeric material layer 26, but in the rest of the handle region below "R" the second elastomeric material layer 28 appears visibly thinner than the first elastomeric material layer 26. Lombardi does not even discuss how thickness of the layers may affect Shore A hardness values. Thus, the skilled person, when presented with Lombardi, would not be motivated to select Shore A hardness values in the claimed range, let alone Shore A hardness ratios for the layers informed by the thickness of the layers themselves.”
However, the examiner respectfully disagrees with this statement. Lombardi does not need to “discuss how thickness of the layers may affect Shore A hardness values” in order to be modified with the hardness values as previously explained above. The combination as a whole, provides overlapping ranges for the first elastomeric polymeric material and the second elastomeric polymeric material. Since, the applicant has not properly established criticality on the claimed range (see paragraph 5 indicating the hardness values “may” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), one having ordinary skill in the art could select the hardness values within the claimed ranges for the first elastomeric polymeric material and the second elastomeric polymeric material, especially depending on the wear resistance and the reduction in vibration as desired by the user (see paragraph 64). Since, all of the limitations of the claims have been met the examiner believes that the rejection is proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J SCRUGGS whose telephone number is (571)272-8682. The examiner can normally be reached M-F 6-2.
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/ROBERT J SCRUGGS/Primary Examiner, Art Unit 3723
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