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 .
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statement(s) (IDS), filed 25 March 2025, which have been placed of record in the file. An initialed, signed, and dated copy of each PTO-1449 or PTO-SB-08 form is attached to the Office action.
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(s) 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.
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, 4-5, 10, 13, and 16 are rejected 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).
With respect to claim 1, Bodine et al. disclose an anvil 10, 100 (fig. 2) for use with a power tool 8 (fig. 1), the anvil 100 comprising a shank 30 extending along a longitudinal axis of the anvil and having first and second ends (fig. 2), the first end having a head configured to receive an end effector (head 32 to be inserted into a tool piece, fig. 2, [0016]), and a ram lug (locking wings 38) extending radially from the second end of the shank 30 along a radial axis, the radial axis orthogonal to the longitudinal axis (fig. 2), the ram lug comprising an impact surface configured to receive an impact force from a hammer of the power tool (the surface of the locking wings 38, the locking wings 38 receive the impact from the impactor 20, fig. 1, [0014]-[0015]), an impact layer comprising the impact surface (the body of the anvil has an exterior layer, [0006]), the impact layer having been formed via a treatment process to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug (the exterior layer is formed by carburization, and a plurality of heat treatment and quenching cycles, [0006], the microstructure of the carburized case is refined, [0021]), wherein the impact layer has a first hardness and the interior region has a second hardness, wherein the first hardness is greater than the second hardness. Bodine et al. disclose forming an anvil having a hardened outer layer. Since an outer layer is formed by the treatment process, an interior region remains unhardened, and a transitional material interface is considered to be defined between the outer layer and the interior region. Since only the outer layer is hardened and the interior region remains unhardened, the first hardness of the impact layer is considered to be greater than the second hardness of the interior region. Bodine et al. disclose the anvil 100 is subjected to carburization and heat treatment to form an outer hardened layer ([0021]), and therefore, in the absence of any disclosure that any portion of the anvil is not subjected to carburization and heat treatment, is considered to disclose the entire anvil is subjected to carburization and heat treatment to form an outer hardened layer on the entire anvil.
To the extent that Bodine et al. can be considered not to expressly disclose the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, this configuration of the impact layer and the interior region is implicit in the disclosure of Bodine et al. at least because Bodine et al. expressly disclose that an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles ([0006], [0021]). Thus, one of ordinary skill in the art would reasonably draw the inference that the impact layer would be formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, in order for the anvil to operate as disclosed as having an outer hardened layer ([0006], [0021]), improved fatigue properties, and increased operating life expectancy.
Accordingly, it 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 to modify the anvil of Bodine et al. to include the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, since Bodine et al. disclose an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles, and one of ordinary skill in the art would reasonably draw the inference that the anvil would be so configured to operate as disclosed. ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01.
Bodine et al. disclose the anvil is made of steel ([0006]), but fail to disclose the anvil is formed of a medium-carbon steel.
Stack et al. disclose an impact tool (punch 10, fig. 1) comprising an anvil with a hardened surface, the anvil formed of medium carbon steel (anvil 18 which is struck by a hammer, anvil 18 is formed of medium carbon steel and case hardened to resist damage from impact, fig. 1, col. 3, l. 63 - col. 4, l. 34).
It 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 to modify the anvil of Bodine et al. to form the anvil of medium carbon steel, as taught by Stack et al., as the selection of an art-recognized material suitable for the intended purpose of providing an impact component, especially since both Bodine et al. and Stack et al. disclose anvils comprising an impact component with a hardened surface layer. MPEP 2144.07.
With respect to claims 4 and 13, Bodine et al. disclose the shank further comprises a sloped drive transition area disposed proximate to the head (transition zone 34 including a tapered ramp 52 proximate the head 32, fig. 3, [0017]-[0018]).
With respect to claim 5, Bodine et al. disclose the head (head 32) further comprises a drive (side faces 42 and front face 44 for engagement with a tool piece, the apparatus is an impact wrench 8, figs. 1 and 2, [0014], [0016]), the drive further comprises an engaging layer (the body of the anvil has an exterior layer, [0006]), the engaging layer having been formed via a treatment process to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive (the exterior layer is formed by carburization, and a plurality of heat treatment and quenching cycles, [0006], the microstructure of the carburized case is refined, [0021]), wherein the engaging layer has the first hardness and the interior region of the drive has the second hardness. Since an outer layer is formed by the treatment process, an interior region remains unhardened, and a transitional material interface is considered to be defined between the outer layer and the interior region. Since only the outer layer is hardened and the interior region remains unhardened, the first hardness of the impact layer is considered to be greater than the second hardness of the interior region. Bodine et al. disclose the anvil 100 is subjected to carburization and heat treatment to form an outer hardened layer ([0021]), and therefore, in the absence of any disclosure that any portion of the anvil is not subjected to carburization and heat treatment, is considered to disclose the entire anvil is subjected to carburization and heat treatment to form an outer hardened layer on the entire anvil.
To the extent that Bodine et al. can be considered not to expressly disclose the engaging layer being formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness greater and the interior region having the second hardness, this configuration of the engaging layer and the interior region is implicit in the disclosure of Bodine et al. at least because Bodine et al. expressly disclose that an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles ([0006], [0021]). Thus, one of ordinary skill in the art would reasonably draw the inference that the engaging layer would be formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness and the interior region having the second hardness, in order for the anvil to operate as disclosed as having an outer hardened layer ([0006], [0021]), improved fatigue properties, and increased operating life expectancy.
Accordingly, it 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 to modify the anvil of Bodine et al. to include the engaging layer being formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness and the interior region having the second hardness, since Bodine et al. disclose an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles, and one of ordinary skill in the art would reasonably draw the inference that the anvil would be so configured to operate as disclosed. ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01.
With respect to claim 10, Bodine et al. disclose an anvil 10, 100 (fig. 2) for use with a power tool 8 (fig. 1), the anvil 100 comprising a shank 30 extending along a longitudinal axis of the anvil and having first and second ends (fig. 2), the first end having a head configured to receive an end effector (head 32 to be inserted into a tool piece, fig. 2, [0016]), and a ram lug (locking wings 38) extending radially from the second end of the shank 30 along a radial axis, the radial axis orthogonal to the longitudinal axis (fig. 2), the ram lug comprising an impact surface configured to receive an impact force from a hammer of the power tool (the surface of the locking wings 38, the locking wings 38 receive the impact from the impactor 20, fig. 1, [0014]-[0015]), an impact layer comprising the impact surface (the body of the anvil has an exterior layer, [0006]), the impact layer having been formed via a treatment process to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug (the exterior layer is formed by carburization, and a plurality of heat treatment and quenching cycles, [0006], the microstructure of the carburized case is refined, [0021]), wherein the impact layer has a first hardness and the interior region has a second hardness, wherein the first hardness is greater than the second hardness. Bodine et al. disclose forming an anvil having a hardened outer layer. Since an outer layer is formed by the treatment process, an interior region remains unhardened, and a transitional material interface is considered to be defined between the outer layer and the interior region. Since only the outer layer is hardened and the interior region remains unhardened, the first hardness of the impact layer is considered to be greater than the second hardness of the interior region. Bodine et al. disclose the anvil 100 is subjected to carburization and heat treatment to form an outer hardened layer ([0021]), and therefore, in the absence of any disclosure that any portion of the anvil is not subjected to carburization and heat treatment, is considered to disclose the entire anvil is subjected to carburization and heat treatment to form an outer hardened layer on the entire anvil.
To the extent that Bodine et al. can be considered not to expressly disclose the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, this configuration of the impact layer and the interior region is implicit in the disclosure of Bodine et al. at least because Bodine et al. expressly disclose that an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles ([0006], [0021]). Thus, one of ordinary skill in the art would reasonably draw the inference that the impact layer would be formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, in order for the anvil to operate as disclosed as having an outer hardened layer ([0006], [0021]), improved fatigue properties, and increased operating life expectancy.
Accordingly, it 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 to modify the anvil of Bodine et al. to include the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, since Bodine et al. disclose an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles, and one of ordinary skill in the art would reasonably draw the inference that the anvil would be so configured to operate as disclosed. ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01.
Bodine et al. disclose the anvil is made of steel ([0006]), but fail to disclose the anvil is formed of a chromium-nickel-molybdenum steel.
Stack et al. disclose an impact tool (punch 10, fig. 1) comprising an anvil with a hardened surface, the anvil formed of a chromium-nickel-molybdenum (anvil 18 which is struck by a hammer, anvil 18 is formed of chromium-nickel-molybdenum steel and case hardened to resist damage from impact, fig. 1, col. 3, l. 63 - col. 4, l. 34).
It 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 to modify the anvil of Bodine et al. to form the anvil of chromium-nickel-molybdenum steel, as taught by Stack et al., as the selection of an art-recognized material suitable for the intended purpose of providing an impact component, especially since both Bodine et al. and Stack et al. disclose anvils comprising an impact component with a hardened surface layer. MPEP 2144.07.
With respect to claim 16, Bodine et al. disclose an impact driver (impact wrench 8, fig. 1) comprising a motor 14 configured to output rotational movement in response to operation of a control switch (trigger 22, fig. 1), a hammer operably coupled to the motor to generate rotational movement of the hammer (impactor 20, fig. 1), and an anvil 10, 100 (fig. 2) configured to receive an end effector for acting upon a work piece (for engagement with a tool piece, figs. 1 and 2, [0014], [0016]), the anvil 100 comprising a shank 30 extending along a longitudinal axis of the anvil and having first and second ends (fig. 2), the first end having a head configured to receive an end effector (head 32 to be inserted into a tool piece, fig. 2, [0016]), and a ram lug (locking wings 38) extending radially from the second end of the shank 30 along a radial axis, the radial axis orthogonal to the longitudinal axis (fig. 2), the ram lug comprising an impact surface configured to receive an impact force from the hammer (the surface of the locking wings 38, the locking wings 38 receive the impact from the impactor 20, fig. 1, [0014]-[0015]), an impact layer comprising the impact surface (the body of the anvil has an exterior layer, [0006]), the impact layer having been formed via a treatment process to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug (the exterior layer is formed by carburization, and a plurality of heat treatment and quenching cycles, [0006], the microstructure of the carburized case is refined, [0021]), wherein the impact layer has a first hardness and the interior region has a second hardness, wherein the first hardness is greater than the second hardness. Bodine et al. disclose forming an anvil having a hardened outer layer. Since an outer layer is formed by the treatment process, an interior region remains unhardened, and a transitional material interface is considered to be defined between the outer layer and the interior region. Since only the outer layer is hardened and the interior region remains unhardened, the first hardness of the impact layer is considered to be greater than the second hardness of the interior region. Bodine et al. disclose the anvil 100 is subjected to carburization and heat treatment to form an outer hardened layer ([0021]), and therefore, in the absence of any disclosure that any portion of the anvil is not subjected to carburization and heat treatment, is considered to disclose the entire anvil is subjected to carburization and heat treatment to form an outer hardened layer on the entire anvil.
To the extent that Bodine et al. can be considered not to expressly disclose the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, this configuration of the impact layer and the interior region is implicit in the disclosure of Bodine et al. at least because Bodine et al. expressly disclose that an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles ([0006], [0021]). Thus, one of ordinary skill in the art would reasonably draw the inference that the impact layer would be formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, in order for the anvil to operate as disclosed as having an outer hardened layer ([0006], [0021]), improved fatigue properties, and increased operating life expectancy.
Accordingly, it 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 to modify the anvil of Bodine et al. to include the impact layer being formed to have an impact layer depth to an impact layer transitional material interface with an interior region of the ram lug, and the impact layer having a first hardness greater than a second hardness of the interior region, since Bodine et al. disclose an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles, and one of ordinary skill in the art would reasonably draw the inference that the anvil would be so configured to operate as disclosed. ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01.
Bodine et al. disclose the anvil is made of steel ([0006]), but fail to disclose the anvil is formed of a medium-carbon steel.
Stack et al. disclose an impact tool (punch 10, fig. 1) comprising an anvil with a hardened surface, the anvil formed of medium carbon steel (anvil 18 which is struck by a hammer, anvil 18 is formed of medium carbon steel and case hardened to resist damage from impact, fig. 1, col. 3, l. 63 - col. 4, l. 34).
It 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 to modify the anvil of Bodine et al. to form the anvil of medium carbon steel, as taught by Stack et al., as the selection of an art-recognized material suitable for the intended purpose of providing an impact component, especially since both Bodine et al. and Stack et al. disclose anvils comprising an impact component with a hardened surface layer. MPEP 2144.07.
Claims 2-3, 6, 11, 12, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bodine et al. in view of Stack et al. as applied to claims 1 and 16 above, and further in view of Baumann et al. (DE 102011007699).
With respect to claims 2, 11, and 17, Bodine et al. disclose an impact layer depth, but fail to disclose an impact layer depth within a range from about 0.5 mm to about 2.5 mm.
Baumann et al. disclose an impact driving device (fig. 1) including a hammer pin (fig. 3) that has a case hardened surface layer having a depth of at least 1 millimeter (pg. 2, third full paragraph).
It 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 to modify the anvil of Bodine et al. to include the impact layer having a depth within a range from about 0.5 mm to about 2.5 mm, as a matter of optimization through routine experimentation, in the absence of any unexpected results of the depth within a range from about 0.5 mm to about 2.5 mm, especially since Baumann et al. teaches an impact driving device having an impact component with a hardened surface layer with a depth of at least 1 mm. MPEP 2144.05 I and II. A. The particular dimensions do not patentably distinguish Applicant’s claimed device from the prior art where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and a device having the claimed dimensions would not perform differently than the prior art device. MPEP 2144.04 IV. A.
With respect to claims 3, 12, and 18, Bodine et al. disclose an impact layer depth, but fail to disclose an impact layer depth within a range from about 1.4 mm to about 2.0 mm.
Baumann et al. disclose an impact driving device (fig. 1) including a hammer pin (fig. 3) that has a case hardened surface layer having a depth of at least 1 millimeter (pg. 2, third full paragraph).
It 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 to modify the anvil of Bodine et al. to include the impact layer having a depth within a range from about 1.4 mm to about 2.0 mm, as a matter of optimization through routine experimentation, in the absence of any unexpected results of the depth within a range from about 1.4 mm to about 2.0 mm, especially since Baumann et al. teaches an impact driving device having an impact component with a hardened surface layer with a depth of at least 1 mm. MPEP 2144.05 I. and II. A. The particular dimensions do not patentably distinguish Applicant’s claimed device from the prior art where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and a device having the claimed dimensions would not perform differently than the prior art device. MPEP 2144.04 IV. A.
With respect to claims 6 and 20, Bodine et al. disclose an engaging layer depth, but fail to disclose an engaging layer depth within a range from about 0.5 mm to about 2.5 mm.
Baumann et al. disclose an impact driving device (fig. 1) including a hammer pin (fig. 3) that has a case hardened surface layer having a depth of at least 1 millimeter (pg. 2, third full paragraph).
It 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 to modify the anvil of Bodine et al. to include the engaging layer having a depth within a range from about 0.5 mm to about 2.5 mm, as a matter of optimization through routine experimentation, in the absence of any unexpected results of the depth within a range from about 0.5 mm to about 2.5 mm, especially since Baumann et al. teaches an impact driving device having an impact component with a hardened surface layer with a depth of at least 1 mm. MPEP 2144.05 I and II. A. The particular dimensions do not patentably distinguish Applicant’s claimed device from the prior art where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and a device having the claimed dimensions would not perform differently than the prior art device. MPEP 2144.04 IV. A.
With respect to claim 19, Bodine et al. disclose the head (head 32) further comprises a drive (side faces 42 and front face 44 for engagement with a tool piece, the apparatus is an impact wrench 8, figs. 1 and 2, [0014], [0016]), the drive further comprises an engaging layer (the body of the anvil has an exterior layer, [0006]), the engaging layer having been formed via a treatment process to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive (the exterior layer is formed by carburization, and a plurality of heat treatment and quenching cycles, [0006], the microstructure of the carburized case is refined, [0021]), wherein the engaging layer has the first hardness and the interior region of the drive has the second hardness. Since an outer layer is formed by the treatment process, an interior region remains unhardened, and a transitional material interface is considered to be defined between the outer layer and the interior region. Since only the outer layer is hardened and the interior region remains unhardened, the first hardness of the impact layer is considered to be greater than the second hardness of the interior region. Bodine et al. disclose the anvil 100 is subjected to carburization and heat treatment to form an outer hardened layer ([0021]), and therefore, in the absence of any disclosure that any portion of the anvil is not subjected to carburization and heat treatment, is considered to disclose the entire anvil is subjected to carburization and heat treatment to form an outer hardened layer on the entire anvil.
To the extent that Bodine et al. can be considered not to expressly disclose the engaging layer being formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness greater and the interior region having the second hardness, this configuration of the engaging layer and the interior region is implicit in the disclosure of Bodine et al. at least because Bodine et al. expressly disclose that an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles ([0006], [0021]). Thus, one of ordinary skill in the art would reasonably draw the inference that the engaging layer would be formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness and the interior region having the second hardness, in order for the anvil to operate as disclosed as having an outer hardened layer ([0006], [0021]), improved fatigue properties, and increased operating life expectancy.
Accordingly, it 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 to modify the anvil of Bodine et al. to include the engaging layer being formed to have an engagement layer depth to an engaging layer transitional material interface with an interior region of the drive, and the engaging layer having the first hardness and the interior region having the second hardness, since Bodine et al. disclose an exterior layer is formed by carburization and a plurality of heat treatment and quenching cycles, and one of ordinary skill in the art would reasonably draw the inference that the anvil would be so configured to operate as disclosed. ("[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). MPEP 2144.01.
Claims 7-8 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bodine et al. in view of Stack et al. as applied to claims 1 and 16 above, and further in view of Li et al. (US Patent Publ. No. 2021/0362308).
With respect to claims 7 and 14, Bodine et al. disclose a first hardness that is harder than the second hardness, but fail to disclose the first hardness is within the range from about HRC 55 to about HRC 62 and the second hardness is within the range from about HRC 38 to about HRC 52.
Li et al. disclose an impact driver tool comprising a hammer with a hardened surface provided by carburizing and quenching, in which the hardened surface layer has a surface hardness between 57 and 65 HRC, and an interior region hardness between 35 and 38 HRC.
It 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 to modify the anvil of Bodine et al. to include the first hardness is within the range from about HRC 55 to about HRC 62 and the second hardness is within the range from about HRC 38 to about HRC 52, as a matter of optimization through routine experimentation, in the absence of any unexpected results of the first hardness is within the range from about HRC 55 to about HRC 62 and the second hardness is within the range from about HRC 38 to about HRC 52, especially since Li et al. teach an impact driving device having an impact component with a hardened surface layer with a surface hardness between 57 and 65 HRC, and an interior region hardness between 35 and 38 HRC. MPEP 2144.05 I. and II. A.
With respect to claim 8, Bodine et al. disclose a first hardness that is harder than the second hardness, but fail to disclose the first hardness is within the range from about HV 585 to about HV 750 and the second hardness is within the range from about HV 370 to about HV 550.
Li et al. disclose an impact driver tool comprising a hammer with a hardened surface provided by carburizing and quenching, in which the hardened surface layer has a surface hardness between 57 and 65 HRC (HV 670 – 870), and an interior region hardness between 35 and 38 HRC (HV 330 – 370).
It 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 to modify the anvil of Bodine et al. to include the first hardness is within the range from about HV 585 to about HV 750 and the second hardness is within the range from about HV 370 to about HV 550, as a matter of optimization through routine experimentation, in the absence of any unexpected results of the first hardness is within the range from about HV 585 to about HV 750 and the second hardness is within the range from about HV 370 to about HV 550, especially since Li et al. teach an impact driving device having an impact component with a hardened surface layer with a surface hardness 57 and 65 HRC (HV 670 – 870), and an interior region hardness between 35 and 38 HRC (HV 330 – 370). MPEP 2144.05 I. and II. A.
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
Claim 15 would be allowable if a proper Terminal Disclaimer and the requisite fee is filed.
Conclusion
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/LINDA J. HODGE/Examiner, Art Unit 3731