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 .
Response to Amendment
Receipt is acknowledged of an amendment, filed 16 July 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-20 are pending.
Claims 17-20 are amended.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 16 July 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 9 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is inadequate written description of the subject matter of claim 9. Claim 9 recites a carbon content between “about 0.26% to about 0.060.% by weight”. As disclosed in paragraph [0030] of the written description, “[a] medium-carbon steel may be a steel alloy that has a carbon content between, for example, 0.26% to 0.60% by weight”. There is no disclosure in the originally filed application for a medium-carbon steel having a carbon content between about 0.26% to about 0.060.% by weight.
Accordingly, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
The subject matter of these elements has not been described in the specification in such a way as to reasonably convey to one skilled in the art how to make and use the invention, and comprise new matter.
While no prior art has been applied with respect to claim 9, this is not an indication of allowable subject matter in claim 9.
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.
Claim 9 is 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 9 is ambiguous as the meaning of “about 0.26% to about 0.060.% by weight” is unclear. In this case, the use of the term “about” is unclear. It is not clear exactly what ranges or values applicant intends to claim. Neither the claims nor the written description defines exactly what ranges are defined by “about 0.26% to about 0.060.% by weight”.
While no prior art has been applied with respect to claim 9, this is not an indication of allowable subject matter in claim 9.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 10-11 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 10, 14, and 20 of U.S. Patent No. 12,285,852.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4, 10, 14, and 20 of the reference patent “anticipate” application claims 1-3, 10-11, and 15-16. It is apparent that the application claims differ from the reference patent claims in that the patent claims are more specific. Here, reference patent claim 4 requires an anvil comprising a shank having a head, a ram lug comprising an impact surface and an impact layer formed via a treatment process, the impact layer having a first hardness and an interior region having a second hardness, the first hardness greater than the second hardness, the anvil formed of medium carbon steel having a carbon content between 0.26% to 0.60% by weight or a chromium-nickel-molybdenum steel having a carbon content of 0.26% to 0.44% by weight, while application claim 1 requires only an anvil comprising a shank having a head, a ram lug comprising an impact surface and an impact layer formed via a treatment process, the impact layer having a first hardness and an interior region having a second hardness, the first hardness greater than the second hardness, the anvil formed of medium carbon steel. Any remaining differences are only differences in verbiage without any difference in meaning. Application claims 1-3, 10-11, and 15-16 are not patentably distinct from reference patent claims 4, 10, 14, and 20 because the more specific reference patent claims anticipate the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
The application claims and reference application claims match up as follows:
Application Claims
Reference Patent Claims (US Patent No. 12/285,582)
1
4
2
4
3
4
10
10
11
14
15
10
16
20
Claims 1-3, 10-11, and 15-16 would be allowable if a proper Terminal Disclaimer and the requisite fee is filed.
Response to Arguments
With respect to the rejection of claim 9 under 35 U.S.C. 112(a), applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that the claimed “about 0.26% to about 0.060.% by weight” is supported by “medium-carbon steel may be a steel alloy that has a carbon content between, for example, 0.26% to 0.60% by weight” in paragraph [0030] of the specification. Applicant argues that the “specification's use of the phrase "for example" signals that the disclosed range is approximate and non-limiting, such that one of ordinary skill in the art would recognize that the inventor possessed a medium-carbon steel having a carbon content in that approximate range. Support for claimed subject matter need not be verbatim or ipsis verbis; rather, the test is whether the specification reasonably conveys to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Here, the specification's disclosure of an exemplary range of 0.26% to 0.60% by weight reasonably conveys possession of a medium-carbon steel having a carbon content of about 0.26% to about 0.60% by weight.”
In response, the phrase “for example” introduces a specific instance, an illustration. The word “about” means approximately, around, or close to. Thus, the phrase “for example” and the word “about” do not have the same meaning, and there is nothing in the specification to indicate that the specific example of “0.26% to 0.60% by weight” would “signal” that the disclosed range is approximate and non-limiting. Thus, one of ordinary skill in the art would not recognize that the inventor possessed a medium carbon steel have a carbon content of “about 0.26% to about 0.060.% by weight”; and the specification would not reasonably convey to one skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
Accordingly, claim 9 contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. The subject matter of claim 9 has not been described in the specification in such a way as to reasonably convey to one skilled in the art how to make and use the invention, and comprises new matter.
In view of all of the above, the rejection of claim 9 under 35 U.S.C. 112(a) is still deemed proper.
With respect to the rejection of claim 9 under 35 U.S.C. 112(b), applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that “about” is a common term of approximation that is definite where the specification provides context for its meaning, and that, since the specification discloses that as the carbon content of steel increases the steel becomes stronger and harder, then in this context, one of ordinary skill in the art would have reasonable certainty as the scope of claim 9.
In response, this argument is inapposite. The disclosure of the specification that steel becomes stronger and harder at the carbon content increases does not define “about” at all. There is no definition or any indication of how much “about” is in this instance. Applicant has failed to define what is and what is not “about 26% to about 0.060.%”. In this case, the use of the term “about” is unclear. It is not clear exactly what ranges or values applicant intends to claim. Neither the claims nor the written description defines exactly what ranges are defined by “about 0.26% to about 0.060.% by weight”.
In view of all of the above, the rejection of claim 9 under 35 U.S.C. 112(b) is still deemed proper.
With respect to the rejection of claims 1, 4-5, 10, 13, and 16 under 35 U.S.C. 103 as being unpatentable over Bodine et al. (US Patent Publ. No. 2006/0151188) in view of Stack et al. (US Patent No. 5,136,905), applicant’s arguments have been fully considered and are persuasive.
Applicant argues that Bodine et al. disclose an anvil comprising a ram lug having an impact layer with a first hardness, an interior region having a second hardness, the first hardness being greater than the second hardness, and in which the anvil is formed of a steel having less than 0.15% carbon. Applicant further argues that Bodine et al. expressly teach away from an anvil formed of a medium carbon steel, as Bodine et al. disclose that increases in the amount of carbon inhibits strength and leads to fatigue failures.
Applicant’s arguments are persuasive. The rejection of claims 1, 4-5, 10, 13, and 16 under 35 U.S.C. 103 over Bodine et al. in view of Stack et al. is hereby withdrawn.
With respect to the rejection of claims 1-3, 10-11 and 15-16 on the ground of nonstatutory double patenting as being unpatentable over claims 4, 10, 14, and 20 of U.S. Patent No. 12,285,852, applicant’s arguments have been fully considered but are not persuasive.
Applicant requests that the double patenting rejection be held in abeyance.
In response, the rejection of 1-3, 10-11 and 15-16 on the ground of nonstatutory double patenting as being unpatentable over claims 4, 10, 14, and 20 of U.S. Patent No. 12,285,852 is still deemed proper.
Allowable Subject Matter
Claims 4-8, 12-14, and 17-20 are objected to 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:
With respect to claim 4, the prior art fails to disclose or teach the apparatus of claim 1, wherein the shank further comprises a sloped drive transition area disposed proximate to the head.
Claims 4-7 depend from claim 4, and would likewise be allowable.
With respect to claim 8, the prior art fails to disclose or teach the apparatus of claim 1, wherein the first hardness is within a range from about HV 585 to about HV 750 or within a range from about HRA 78.4 to about HRA 82.5; and wherein the second hardness is within a range from about HV 370 to about HV 550 or within a range from about HRA 69 to about HRA 77.
With respect to claim 12, the prior art fails to disclose or teach the apparatus of claim 10, wherein the first hardness is within a range from about HV 585 to about HV 750 or within a range from about HRA 78.4 to about HRA 82.5; and wherein the second hardness is within a range from about HV 370 to about HV 550 or within a range from about HRA 69 to about HRA 77.
With respect to claim 13, the prior art fails to disclose apparatus of claim 10, wherein the shank further comprises a sloped drive transition area disposed proximate to the head.
With respect to claim 14, the prior art fails to disclose the apparatus of claim 10, wherein the first hardness is within a range from about HRC 55 to about HRC 62 and the second hardness is within a range from about HRC 38 to about HRC 52.
With respect to claim 17, the prior art fails to disclose the apparatus of claim 16, wherein the impact layer depth is within a range from about 0.5 millimeters to about 2.5 millimeters.
With respect to claim 18, the prior art fails to disclose the apparatus of claim 16, wherein the impact layer depth is within a range from about 1.4 millimeters to about 2.0 millimeters.
Claims 19-20 depend from claim 18, and would likewise be allowable.
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 Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LINDA J. HODGE/Primary Examiner, Art Unit 3731
