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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 .
Status of Claims
This office action is in response to Applicant’s Amendment/Request for Reconsideration filed on 20 March 2026.
Claims 1 – 16 and 19 – 20 are pending. Claims 17 – 18 are cancelled,
Examiner’s Interpretation
Regarding claims 4 and 12, the claims describes a percent comparison between a hardness of a core and a hardness of a sleeve, however this percent comparison greatly varies depending on the scale used for determining the hardness of a material (i.e., Rockwell, Vickers, Brinell, Mohs, Knoop, and Shore). The examiner notes that the specification consistently uses Rockwell Hardness Scale C or HRC, thus the examiner interprets, in light of the specification, that the hardness of the core and the sleeve and the comparisons between hardness are measured using a Rockwell Hardness Scale C or HRC.
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 is incorrect, any correction of the statutory basis 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.
Claims 1, 5, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu (US 2018/0272510 A1), in view of Satoshi (JP 2017094462 A).
Regarding claim 1, Muramatsu discloses an impact tool comprising:
a housing (2, fig. 1);
a motor (10, fig. 1) supported within the housing;
a drive assembly ([0025]; “the rotary impact mechanism” shown in the apparatus of fig. 2 and 22, fig. 1) configured to convert a continuous rotational input from the motor to intermittent applications of torque on a workpiece; and
a first impact member (20, 21, fig. 1) and a second impact member (22, fig. 1) each supported on the drive assembly (As shown in figs. 1, 2) and configured to deliver rotational impacts to one another, the first impact member including
a core (20, fig. 1) made of a first material having a first hardness ([0026] describes a primary hammer 20 made of steel wherein steel has an inherent hardness), and
a sleeve (21, fig. 1) surrounding the core and made of a second material having a second hardness ([0026] describes a secondary hammer 21 made of steel wherein steel has an inherent hardness. Please note, steel refers to a carbon steel wherein the carbon steel has a hardness 9 HRC – 71 HRC. See MatWeb – Overview of Materials for High Carbon Steel, Medium Carbon Steel, and Low Carbon Steel. MatWeb describes the three types of carbon steel wherein the combined set of the ranges of hardness of the high, medium, and low carbon steel shows the carbon steel as having an inherent hardness of 9 HRC – 71 HRC).
Muramatsu further discloses the core comprising a pair of lugs (20a, fig. 2) that directly undergo repeated impacts with an anvil (22, fig. 1) ([0047] – [0051]).
Muramatsu does not explicitly disclose a sleeve made of a second material having a second hardness different than the first hardness wherein the first hardness is less than the second hardness.
However, Satoshi, which is reasonably pertinent to the problem faced by the inventor, teaches an impact tool having a first element (42, fig. 1) that directly undergoes repeated impacts ([0025] describes a second hammer 55 provided in a retainer sleeve 42 wherein the second hammer 55 impacts an inclined surface 53 of the retaining sleeve 42) wherein this first element is made of a heat-treated molybdenum steel ([0018], l. 209 and ll. 216 – 218) to increase the strength/impact resistance of the first element. One having ordinary skill in the art would recognize that this first element of Satoshi is analogous to the core of Muramatsu, in that both first element and the core directly undergo repeated impacts. One having ordinary skill in the art would also recognize that with the incorporation of the teachings of Satoshi with the invention of Muramatsu, the core of Muramatsu would be made of the molybdenum steel as described in Satoshi, which would have a first hardness of 26 HRC – 67 HRC (MatWeb – Overview of Materials for Chrome-moly Steel describes the molybdenum steel inherently having a hardness of 26 HRC – 67 HRC). Thus, the first hardness of the heat-treated molybdenum steel as described in Satoshi (say, 36 HRC from the range of 26 HRC – 67 HRC) would be less than the second hardness of the carbon steel of Muramatsu (say, 41 HRC from the range of 9 HRC – 71 HRC).
Satoshi is evidence that using steels having different properties, such molybdenum steel, in the impact tool was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, one having ordinary skill in the art would have had a reasonable expectation of success of modifying the type or types of steel used in Muramatsu to the molybdenum steel used in Satoshi. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the type of steel used to make the core of Muramatsu to the molybdenum steel of Satoshi with the motivation to provide increased strength/impact resistance to the core.
Regarding claim 5, Muramatsu, as modified by Satoshi, discloses the invention as recited in claim 1.
Muramatsu discloses (20, 21, fig. 1) (20, fig. 1), and wherein (22, fig. 1) includes an anvil (22, fig. 1).
Regarding claim 6, Muramatsu, as modified by Satoshi, discloses the invention as recited in claim 1.
Muramatsu discloses the core (20, fig. 1) and the sleeve (21, fig. 1) are formed as separate parts.
Claims 7 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu (US 2018/0272510 A1), in view of Nishikawa (WO 2015/182512 A1).
Regarding claim 7, Muramatsu discloses an impact tool comprising:
a housing (2, fig. 1);
a motor (10, fig. 1) supported within the housing;
a drive assembly ([0025]; “the rotary impact mechanism”, shown in the apparatus of fig. 2, and 22, fig. 1) configured to convert a continuous rotational input from the motor to intermittent applications of torque on a workpiece; and
a first impact member (20, 21, fig. 1) and a second impact member (22, fig. 1) supported on the drive assembly (As shown in figs. 1, 2) and configured to deliver impacts to one another.
Muramatsu does not explicitly disclose the first impact member having a surface hardness and an internal hardness less than the surface hardness, wherein the surface hardness is configured to be between 57 HRC and 65 HRC, and wherein the internal harness is configured to be between 35 HRC and 38 HRC.
However, Nishikawa, in the same field of endeavor, teaches a first impact member (330, fig. 9a, 9b) having lugs (30e, figs. 9a, 9b) wherein the lugs undergo a surface hardening treatment (ll. 521 – 523). One having ordinary skill in the art would recognize that with the incorporation of the teachings of Nishikawa with the invention of Muramatsu, the steel lugs on the first impact member of Muramatsu would undergo the surface hardening treatment such that a surface hardness of the steel lugs would be between 58 HRC – 64 HRC and an internal surface would be between 25 HRC – 50 HRC (Encyclopedia of Material: Science and Technology - Bearing Steels describes in paragraph I, “Types of Bearing Steel”, that after a heat treatment, that is, after the carburized carbon steel is quenched and tempered, the carbon steel would inherently consist of a surface hardness of about 58 HRC – 64 HRC and an internal hardness of about 25 HRC – 50 HRC wherein the range of the surface hardness of about 58 HRC – 64 HRC is within the claimed surface hardness of 57 HRC – 65 HRC and the range of the internal hardness of about 25 HRC – 50 HRC contains the entirety of the claimed internal hardness of 35 HRC – 38 HRC). Thus, the steel lugs of the first impact member would have the internal hardness (say, 36 HRC in the range of 25 HRC – 50 HRC) which would be less than the surface hardness (say, 60 HRC in the range of 57 HRC – 65 HRC).
Nishikawa is evidence that having the first impact member with lugs that undergo the surface hardening treatment was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, one having ordinary skill in the art would have had a reasonable expectation of success of modifying the lugs on the first impact member of Muramatsu to undergo the surface hardening treatment as taught by Nishikawa. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the lugs as taught by Nishikawa with the motivation to increase the strength of the lugs (ll. 442 – 445).
Regarding claim 8, Muramatsu, as modified by Nishikawa, discloses the invention as recited in claim 7.
Muramatsu discloses (20, 21, fig. 1) (20, fig. 1), and wherein (22, fig. 1) includes an anvil (22, fig. 1).
Regarding claim 9, Muramatsu, as modified by Nishikawa, discloses the invention as recited in claim 7.
Muramatsu discloses the first impact member (20, 21, fig. 1) includes an impact portion (portion of the primary hammer 20 having lugs 20a, fig. 2) and a drive portion (portion of the primary hammer 20 having rear part 20b, fig. 2).
Regarding claim 10, Muramatsu, as modified by Nishikawa, discloses the invention as recited in claim 9.
Muramatsu discloses (20, 21, figs. 1, 2) (20b, fig. 2) configured to receive a camshaft (19, fig. 1).
Claims 12 – 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu (US 2018/0272510 A1), in view of Satoshi (JP 2017094462 A), in further view of Nishikawa (WO 2015/182512 A1).
Regarding claim 12, Muramatsu discloses an impact member for use with a power tool, the impact member comprising:
a core (20, fig. 1);
a sleeve (21, fig. 1) surrounding the core, the sleeve having a generally uniform hardness ([0026] describes a secondary hammer 21 made of steel wherein steel has an inherent and generally uniform hardness. Please note, steel refers to a carbon steel wherein the carbon steel has a hardness 9 HRC – 71 HRC. See MatWeb – Overview of Materials for High Carbon Steel, Medium Carbon Steel, and Low Carbon Steel. MatWeb describes the three types of carbon steel wherein the combined set of the ranges of hardness of the high, medium, and low carbon steel shows the carbon steel as having an inherent hardness of 9 HRC – 71 HRC) and
an impact portion (portion of primary hammer 20 having a pair of hammer claws 20a, figs. 1, 2) and a drive portion (portion of primary hammer 20 having engagement grooves 20b, figs. 1, 2), wherein (20b, figs. 1, 2);
a plurality of lugs (20a, fig. 2) integrally formed with ([0047] – [0051]), the plurality of lugs including a first lug (20a, figs. 1, 2) and a second lug (20a, figs. 1, 2) extending radially inwardly towards the recess (Figure 2 shows a pair of hammer lugs 20a extending from the outer circumference of the primary hammer 20 towards the engagement grooves 20b).
Muramatsu does not explicitly disclose a core having a surface hardness and an internal hardness less than the surface hardness and the sleeve having a generally uniform hardness that is at least 10% less than the surface hardness of the core and at least 10% greater than the internal hardness of the core.
However, Satoshi, which is reasonably pertinent to the problem faced by the inventor, teaches an impact tool having a first element (42, fig. 1) that directly undergoes repeated impacts ([0025] describes a second hammer 55 provided in a retainer sleeve 42 wherein the second hammer 55 impacts an inclined surface 53 of the retaining sleeve 42) wherein this first element is made of a heat-treated molybdenum steel ([0018], l. 209 and ll. 216 – 218) to increase the strength/impact resistance of the first element. One having ordinary skill in the art would recognize that this first element of Satoshi is analogous to the core of Muramatsu, in that both first element and the core directly undergo repeated impacts. One having ordinary skill in the art would also recognize that with the incorporation of the teachings of Satoshi with the invention of Muramatsu, the core of Muramatsu would be made of the molybdenum steel as described in Satoshi, which would have a first hardness of 26 HRC – 67 HRC (MatWeb – Overview of Materials for Chrome-moly Steel describes the molybdenum steel inherently having a hardness of 26 HRC – 67 HRC). Thus, the first hardness of the heat-treated molybdenum steel as described in Satoshi (say, 36 HRC from the range of 26 HRC – 67 HRC) would be less than the second hardness of the carbon steel of Muramatsu (say, 41 HRC from the range of 9 HRC – 71 HRC).
Satoshi is evidence that using steels having different properties, such molybdenum steel, in the impact tool was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, one having ordinary skill in the art would have had a reasonable expectation of success of modifying the type or types of steel used in Muramatsu to the molybdenum steel used in Satoshi. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the type of steel used to make the core of Muramatsu to the molybdenum steel of Satoshi with the motivation to provide increased strength/impact resistance to the core.
Furthermore, Nishikawa, in the same field of endeavor, teaches a first impact member (330, fig. 9a, 9b) having lugs (30e, figs. 9a, 9b) wherein the lugs undergo a surface hardening treatment (ll. 521 – 523). One having ordinary skill in the art would recognize that with the incorporation of the teachings of Nishikawa with the invention of the modified Muramatsu, the molybdenum steel lugs on the first impact member of Muramatsu would undergo a surface hardening treatment such that a surface hardness of the molybdenum steel would be between 59 – 63 HRC and an internal surface would be above 30 HRC (Fuhong Forge – SAE 8620 describes a type of nickel, chromium-molybdenum alloy steel and further describes a surface hardening treatment of this steel inherently provides a surface hardness in the range between 59 – 63 HRC and an internal/core hardness of above 30 HRC).
Nishikawa is evidence that having the lugs on the first impact member that undergo the surface hardening treatment was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, one having ordinary skill in the art would have had a reasonable expectation of success of modifying the lugs on the first impact member of the modified Muramatsu to undergo the surface hardening treatment, as taught by Nishikawa. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the lugs on the first impact member of the modified Muramatsu to undergo the surface hardening treatment, as taught by Nishikawa, with the motivation to increase the strength of the lugs (ll. 442 – 445).
Thus, the modified Muramatsu would comprise a core made of molybdenum steel, as taught by Satoshi, having the surface hardness between 59 HRC – 63 HRC and an internal hardness above 30 HRC, as taught in Nishikawa, and a sleeve made of carbon steel having a hardness of 9 HRC – 71 HRC. Therefore, the core would have the internal hardness less than the surface hardness and the sleeve would have a generally uniform hardness (say, 41 HRC from the range of 9 HRC – 71 HRC) which is at least 10% less than the surface hardness of the core (say, 60 HRC from the range of 59 HRC – 63 HRC) and at least 10% greater than the internal hardness of the core (say, 36 HRC from the range of above 30 HRC).
Regarding claim 13, Muramatsu, as modified by Satoshi, as further modified by Nishikawa, discloses the invention as recited in claim 12.
Muramatsu discloses the plurality of lugs (20a, fig. 2) is integrally formed with the core (20, fig. 2).
Regarding claim 14, Muramatsu, as modified by Satoshi, as further modified by Nishikawa, discloses the invention as recited in claim 13.
The modified Muramatsu discloses the core (20, fig. 1, 2) is made of a nickel, chromium, and molybdenum case hardening alloy steel (MatWeb – Overview of Materials for Chrome-Moly Steel describes the molybdenum steel inherently having carbon, chromium, iron, manganese, molybdenum, nickel, silicon, sulfur, and vanadium).
Regarding claim 20, Muramatsu, as modified by Satoshi, as further modified by Nishikawa, discloses the invention as recited in claim 12.
Muramatsu discloses the impact force is experienced by the plurality of lugs (20a, fig. 2) through torque imparted by the plurality of lugs ([0047] – [0051]).
Claims 2 – 4 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu (US 2018/0272510 A1), in view of Satoshi (JP 2017094462 A), in further view of Interlloy (“1045 Medium Tensile Carbon Steel Bar”).
Regarding claim 2, Muramatsu, as modified by Satoshi, discloses the invention as recited in claim 1.
Muramatsu discloses the sleeve (21, fig. 1) being made of steel ([0026], ll. 11 – 13); however, the term, “steel”, represents a broad genus of carbon steel and Muramatsu does not specify the specific species of carbon steel used.
The modified Muramatsu does not explicitly disclose the sleeve is heat treated.
However, Interlloy, which is reasonably pertinent to the problem faced by the inventor, teaches using 1045 medium tensile carbon steel for shafts/cylinders wherein the 1045 medium tensile carbon steel is heat treated (Interlloy describes 1045 medium tensile carbon steel used in shafts/cylinders and further describes a heat treatment of hardening and tempering to produce a low through hardening of the 1045 medium tensile carbon steel).
Bunty is evidence using the 1045 medium tensile carbon steel to produce shafts/cylinders wherein the 1045 medium tensile carbon steel is heat treated was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, one having ordinary skill in the art would have had a reasonable expectation of success of modifying the steel of the sleeve of the modified Muramatsu to be the 1045 medium tensile carbon steel, as taught by Interlloy. Additionally, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the steel of the sleeve of the modified Muramatsu to be the 1045 medium tensile carbon steel, as taught by Interlloy, with the motivation to use a steel with increased strength/toughness and wear resistance (As described by Interlloy). Additionally, Muramatsu does not specify the specific species of steel used to construct the sleeve of Muramatsu thus one having ordinary skill in the art may look to Interlloy to determine the specific species of steel.
Regarding claim 3, Muramatsu, as modified by Satoshi, as further modified by Interlloy, discloses the invention as recited in claim 2.
The modified Muramatsu discloses the core (Muramatsu – 20, fig. 1) is made of alloy steel (Satoshi – “a heat-treated molybdenum steel”) and the sleeve (Muramatsu – 21, fig. 1) is made of medium carbon steel (Interlloy – “1045 medium tensile carbon steel”).
Regarding claim 4, Muramatsu, as modified by Satoshi, as further modified by Interlloy, discloses the invention as recited in claim 3.
The modified Muramatsu discloses the second hardness (Interlloy – 54 HRC – 60 HRC; say 55 HRC) is at least 10% greater than the first hardness (Satoshi and MatWeb – 26 HRC – 67 HRC; say 36 HRC).
Allowable Subject Matter
Claims 11, 15 – 16 and 19 are objected 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 11, upon examination of the art of record, it has been decided that the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the claimed limitation, “a second annular wall made of a second material different than the first material and surrounding the first annular wall, the second material having a second hardness greater than the first hardness.” The closest prior art is Muramatsu (US 2018/0272510 A1), in view of Nishikawa (WO 2015/182512 A1), in further view of Satoshi (JP 2017094462 A). Muramatsu discloses a core 20 with lugs 20a axially oscillating within a sleeve 21. This oscillation of the core 20 with lugs 20a allows the impact tool to make repeated impacts on an anvil 22 via the lugs 20a. Satoshi teaches that the element that experiences impacts would be made of molybdenum steel and the element that supports the element that experiences impacts would be made of carbon steel. Thus, with the incorporation of the teachings of Satoshi with the invention of Muramatsu, the first material of the core would have a hardness greater than the second material of the sleeve – contrary to the claimed limitation. One having ordinary skill in the art would not be motivated to have the hardness of the sleeve be greater than the hardness of the core since it is the core that experiences the impacts. Thus, it is examiner's opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at Applicant's invention as claimed.
Regarding claim 15, upon examination of the art of record, it has been decided that the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the claimed limitation, “the lug is integrally formed with the sleeve.” The closest prior art is Muramatsu (US 2018/0272510 A1), in view of Nishikawa (WO 2015/182512 A1). Muramatsu discloses a first impact member 20, 21 having a core 20 with lugs 20a axially oscillating within a sleeve 21. This oscillation of the core 20 with lugs 20a allows the impact tool to make repeated impacts on an anvil 22 via the lugs 20a. If the lugs were integrally formed on the sleeve, the impact tool would be unsatisfactory for its intended purpose. That is, the lugs would not axially oscillate to make repeated impacts on an anvil 22 via the lugs 20a. Thus, it is examiner' s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at Applicant's invention as claimed.
Regarding claim 19, upon examination of the art of record, it has been decided that the art considered as a whole, alone or in combination, neither anticipates nor renders obvious the claimed limitation, “the first lug and the second lug extend radially inwardly from the annular wall.” The closest prior art is Muramatsu (US 2018/0272510 A1), in view of Nishikawa (WO 2015/182512 A1). Muramatsu discloses a pair of lugs 20a extending radially outward from a portion of the recess 20b. The prior art of record does not anticipate or render obvious an impact tool having an impact member comprising a core, a sleeve surrounding the core, and the first lug and the second lug extend radially inwardly from the annular wall. Thus, it is examiner' s opinion that it would not have been obvious to one having ordinary skill in the art at the time of the invention to combine or modify the prior art in order to arrive at Applicant's invention as claimed.
Response to Arguments
Applicant’s arguments, filed 3 July 2025, with respect to the rejection of claims 1 – 20 under 35 USC 103 have been fully considered but are not persuasive.
Applicants argue:
The rejection of claim 1 relies on Muramatsu in view of Satoshi. Muramatsu admittedly does not disclose any hardness relationship between a core and a surrounding sleeve, nor does it disclose a sleeve having a hardness greater than the core. The Office Action instead relies on generalized statements regarding the possible hardness ranges of various steels, and then selects hypothetical values from those ranges to satisfy the claimed hardness ordering.
Such an approach is insufficient to establish obviousness. Obviousness must be supported by an articulated reasoning with rational underpinning, not by hindsight reconstruction through arbitrary selection of numerical values. See MPEP §2143 and §2142. The Office Action does not identify any teaching or suggestion in the applied references that would have led a person of ordinary skill in the art to intentionally configure the sleeve to be harder than the core in a rotary impact member.
Independent claim 7 requires a first impact member having a surface hardness between 57 HRC and 65 HRC and an internal hardness between 35 HRC and 38 HRC.
The Office Action acknowledges that Muramatsu does not disclose any surface-to-core hardness gradient, let alone the claimed narrow hardness ranges. To supply these limitations, the Office relies on Nishikawa for the general concept of surface treatment and on generalized metallurgy references for purported inherent hardness outcomes.
This rejection suffers from the same defect as the rejection of claim 1: the Office Action relies on broad, unrelated ranges and then selects values within those ranges to reconstruct the claimed invention. The cited ranges for core hardness (e.g., 25-50 HRC) are far broader than the claimed internal hardness range of 35-38 HRC, and the Office Action provides no teaching or motivation that would have led a person of ordinary skill to target that specific, narrow range. Range picking of this nature does not establish prima facie obviousness. See MPEP §2144.05
.
Moreover, inherency cannot be invoked without evidence that the claimed hardness values necessarily and inevitably result from the teachings of the applied art. See MPEP §2112.
Independent claim 12 recites an impact member having (i) a core with a surface/core hardness gradient, (ii) a sleeve surrounding the core with a generally uniform hardness that is bounded above and below relative to the core hardnesses by specific percentage relationships, and (iii) a plurality of lugs extending radially inwardly toward a recess.
The applied combination of Muramatsu, Satoshi, and Nishikawa does not teach or suggest this bounded three-way hardness relationship. As with claims 1 and 7, the Office Action again relies on selecting convenient numerical examples from broad hardness ranges to satisfy the percentage limitations. This approach reflects impermissible hindsight reconstruction rather than a teaching or suggestion in the applied art. See MPEP §2142.
In response to applicant’s argument that relying on the possible hardness ranges of various steels is insufficient to establish obviousness, obviousness is based on the combination of Muramatsu and Satoshi – not the possible hardness ranges of various steels. However in this combination, the sleeve of the modified Muramatsu would be made of steel and the core of the modified Muramatsu would be made of a heat-treated molybdenum steel. Since the claim is also is directed towards the hardness of the core and sleeve wherein the hardness is an inherent characteristic of materials, reference must be made as to the hardness of steel and the hardness of heat-treated molybdenum steel wherein the hardnesses of these materials is a range and the hardnesses can be selected to read on the claim. In the case where the 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). Therefore, the applicant’s argument is unpersuasive.
Additionally, the Examiner's Reasons for Allowance for claim 19 expressly recognize that Muramatsu discloses lugs extending radially outward, and does not teach lugs extending radially inwardly toward a recess. That same structural deficiency applies to independent claim 12. The Office's own analysis therefore confirms that Muramatsu does not disclose or suggest key structural limitations of claim 12.
In response to applicant’s argument that the same structural deficiency of allowable claim 19 applies to claim 12, the reasons for allowance for claim 19 is directed towards the limitation, “the first lug and the second lug extend inwardly from the annular wall” in claim 19 wherein claim 12 does not claim an annular wall thus claim 12 does not have same structural deficiency as allowable claim 19.
Finally, the same inconsistency identified with respect to claim 1 applies here as well. The rejection of claim 12 depends on asserting that a sleeve hardness positioned above the core interior hardness would have been obvious, while the Reasons for Allowance state that a person of ordinary skill would not be motivated to harden the sleeve relative to the core because the core experiences impacts. These positions cannot be reconciled on the present record.
In response to applicant’s argument that the sleeve hardness positioned above the core interior hardness was an assertion, Satoshi teaches a heat-treated molybdenum steel wherein heat treatment causes an outer surface to have a different hardness than its interior.
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 DAVID G SHUTTY whose telephone number is (571)272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
31 May 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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