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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-18 in the reply filed on July 15, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-5 and 7-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites the limitation first through third toughness, wherein the third toughness is between the first and the second, rendering the claim indefinite. Whild a specific HRC value of hardness, clearly defines the limitations, it is not clear how “toughness” is measured. It seems the higher the hardness the less toughness is achieved per paragraph [0005] of the instant application. However, the range recited in paragraph [0012], discloses a hardness for the third tip, e.g. of e.g., 46 that is higher than that of the first hardness 44 of the drive portion.
Same terminology, “toughness” used in claim 3, renders it ambiguous.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1-4, 8- are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Strauch et al. (5,704,261).
Strauch discloses all of the limitations of claim 1, i.e., a tool accessory comprising:
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a drive portion 3 configured to be engaged by an output shaft of a tool, the drive portion having a first hardness drive region 3 has the hardness of the working area I, i.e., 60-63, 05:1-3;
a tip 1 configured to engage a workpiece, the tip having a second hardness different than the first hardness 60-63, 05:1-3; and
a shank 4 interconnecting the drive portion and the tip Fig. 1, the shank having a third hardness 50, 05:03 different than the first hardness and different than the second hardness,
wherein the third hardness 60-63, e.g., 62 is between the first hardness 50 and the second hardness e.g., 63, and wherein the drive portion, the shank, and the tip are formed as a unitary body from a common material Fig. 1. Please note that Strauch discloses a range for the first and third zones, which would encompass hardnesses within the disclosed zone, yet different within the range, anticipating the claim. However, in the alternative and in order to expedite the prosecution, it may be considered not to explicitly disclose for the third hardness to be different that the first.
It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Struch with a first hardness of 62 (within the range) and a third hardness of 63, all within the range disclosed by Strauch, and depending on the intended use and working environments, requiring routine experimentations with predictable results.
Regarding claim 2, PA (prior art, Strauch alone or as modified) meets the limitations, as best understood, i.e., tool accessory of The tool accessory of wherein the drive portion has a first toughness inversely to the first hardness 62, wherein the tip has a second toughness defined by the second hardness 63 different than the first toughness, wherein the shank 4 has a third toughness result first hardness 50 different than the first toughness and different than the second toughness, and wherein the third toughness is between the first toughness and the second toughness i.e., disclosure that the shank hardness is not sudden and continuous, thus at least a portion that in the transition zone from 63, e.g., 59 reads on the claim.
Regarding claim 3, PA meets the limitations, as best understood, i.e., the tool accessory of claim 2, wherein the drive portion, the tip, and the shank are initially subjected to a first heat treatment preheated tool, 02:20 to temporarily unify the hardness and the toughness of the tool accessory, and wherein one of the drive portion and the tip are subsequently subjected to a second heat treatment annealing and cooling liquid 04:06 different than the first heat treatment.
It is also noted that Stauch meets all the limitations, since product-by-process claims are not limited to the manipulations of the process steps, only the structure implied by the steps, thus a device produced by the method of prior art, known in the art would meet all the structural limitations, i.e., different hardness for different zones. (See MPEP 2113 [R-1]).
Regarding claims 4, 5 and 8, PA meets the limitations, meets all the limitations, since product-by-process claims are not limited to the manipulations of the process steps, only the structure implied by the steps, thus a device produced by the method of prior art, known in the art would meet all the structural limitations, i.e., different hardness for different zones. (See MPEP 2113 [R-1]) and since tempering and/or second heat treatments are known in the art.
CLAIM 11
Strauch discloses all of the limitations of claim 11, i.e., a tool accessory comprising:
a unitary body including a first end I, a second end III opposite the first end, and an intermediate portion II extending axially between the first end and the second end, the first
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end, the second end, and the intermediate portion being formed from a common material Fig. 1;
a first zone extending between the first end and a first side of the intermediate portion Fig. 1, the first zone having a first hardness e.g., 63, 05:1-3;
a second zone extending between the second end and a second side the intermediate portion Fig. 1, the second zone having a second hardness different than the first hardness e.g., 60, 05:1-3; and
a transition zone II between the first zone and the second zone, at least a portion the transition zone having a hardness gradient e.g., 50 HRC continuous gradient form one zone to the other between the first hardness and the second hardness,
wherein the first side has undergone a first material treatment heat configured to provide the first hardness, and
wherein the second side has undergone a second material treatment that is different than the first material treatment subsequent heating and configured to provide the second hardness.
Please note that Strauch discloses a range for the first and third zones, which would encompass hardnesses within the disclosed zone, yet different within the range, anticipating the claim. However, in the alternative and in order to expedite the prosecution, it may be considered not to explicitly disclose for the third hardness to be different that the first.
It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of Struch with a first hardness of 62 (within the range) and a third hardness of 63, all within the range disclosed by Strauch, and depending on the intended use and working environments, requiring routine experimentations with predictable results.
Regarding claims 12 and 13, PA (prior art, Strauch alone) meets the limitations, i.e., the tool accessory of claim 11, wherein the entire unitary body has undergone the first material treatment heat 02:5-20, as indicated above the method of forming the device is not germane to the issue of patentability of the device itself. PA meets the claim, since product-by-process claims are not limited to the manipulations of the process steps, only the structure implied by the steps, thus a device produced by the method of prior art, known in the art would meet all the structural limitations, i.e., different hardness for different zones.
Regarding claim 14, PA meets the limitations, i.e., the tool accessory of claim 11, further comprising a drive portion 3 formed at the first end, the drive portion configured to be engaged by an output shaft of a tool; and a tip 1 formed at the second end, the tip configured to engage a workpiece, wherein a desired hardness for the drive portion 60 is different than a desired hardness for the tip 63.
Regarding claim 15, PA meets the limitations, i.e., the tool accessory of claim 14, wherein a transverse cross-section of the unitary body at the drive portion 3 is different than the cross-section at the tip 3 such that the cross-section of the intermediate portion 4 varies between the drive portion and the tip, and wherein the hardness gradient varies by different amounts at a center of the cross-section and at a periphery of the cross-section continuous gradient of hardness change.
Regarding claim 16, PA meets the limitations, i.e., the tool accessory of claim 15, wherein at least a portion of a profile of the hardness gradient is generally parabolic continuous gradient.
Regarding claim 17, PA meets the limitations, i.e., the tool accessory of claim 11, wherein the first material treatment heat includes heat treatment and the second material treatment includes induction tempering cooling liquid 04:06.
Claim 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over PA in view of Eggert (2010/00083795).
PA (prior art, Strauch alone or as modified) meets all of the limitations of claim 6, as described above, except for a socket in the drive portion.
Eggert teaches a tool produced by differential heat treatment, defining a drive 14 having a socket 18. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with the socket as taught by Eggert to adapt the tool for use with a male driving tool.
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[AltContent: arrow][AltContent: textbox (DETENT)]Regarding claim 7, PA (prior art, Strauch alone or modified further modified by Eggert) meets the limitations, i.e., the wherein one of the output shaft and the drive portion includes a detent ball, and the other of the output shaft and the drive portion includes a recess not numbered, annotated Fig. 3 for receiving the detent ball, and wherein the socket has a substantially square cross- section.
Claims 9, 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over PA in view of Allen (9,676,041).
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PA (prior art, Strauch alone or as modified) meets all of the limitations of claim 9, as best understood, i.e., the tool accessory of claim 3, including for the second hardness to be approximately 57-62 HRC e.g., 60 and wherein the third hardness is approximately 46-62 HRC 50, except for the first hardness to be approximately 44-52 HRC.
Allen teaches a tool accessory, wherein the shank or a drive portion 102 to a range of 50-54 HRC. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with a shank having a hardness of about 50, as taught by Allen providing further strength to the drive and to adjust the impact resistance.
Regarding claim 10, PA (prior art, Strauch alone or modified further modified by Allen) meets the limitations, as best understood, except for a hardness of about 48 HRC. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with a hardness of about 60 for the tip region, between the disclosed range of 60-63 and harden the drive portion to about 48, nearly within the range of Allen, in adapting for a particular application and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 18, PA (prior art, Strauch alone or modified further modified by Allen) meets the limitations, as best understood, including a continuous transition of hardness from about 48 modified by Allen to 62 disclosed range Stauch except for a graduate transition of hardness between about 46. It would have been obvious to one of ordinary skill in the art, before the effective date of the invention, to modify the invention of PA with a hardness of about 60 for the tip region, between the disclosed range of 60-63 and harden the drive portion to about 46, nearly within the range of Allen, in adapting for a particular application and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
Prior art made of record and not relied upon at this time, are considered pertinent to applicant’s disclosure. Breitbach et al. and Eggert`611 are cited to show related inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HADI SHAKERI whose telephone number is (571)272-4495. The fax phone number for forwarding unofficial documents for discussion purposes only is (571) 273-4495. The examiner can normally be reached on M-F.
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/Hadi Shakeri/
September 22, 2026 Primary Examiner, Art Unit 3723
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