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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/049,911
`
`10/22/2020
`
`Mitsumasa MIZUNO
`
`065933-0795
`
`9388
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`LEEDS, DANIEL JEREMY
`
`3731
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/22/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-4 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-4 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)() The specification is objected to by the Examiner.
`11) The drawing(s) filed on 10/22/2020 is/are: a)[¥) accepted or b)(. objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20211214
`
`Application No.
`Applicant(s)
`17/049,911
`MIZUNO etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL J LEEDS
`3731
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/22/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013,
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`is being examined
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`under the first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`invention is not identicallydisclosed as set forth insection 102, if the differences between the
`claimed invention and the prior artare 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
`ordinaryskill inthe art to which the claimed invention pertains. Patentabilityshall notbe
`negated by the manner in whichthe invention was made.
`
`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hornschuch,
`
`(US 3,150,725) in view of Geiras, (US 2019/0199164),
`
`in view of Gelfand, (US,
`
`3,952,814).
`
`Regarding claim _1, the first embodiment of Hornschuch (Figs. 1-4) discloses: An
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`electric power tool (Figure 1, impact wrench in its entirety shown) comprising:
`
`a driving shaft (Figs. 1-4. Drive shaft 42) that is driven into rotation by a motor (Figure
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`1, motor 40);
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`

`

`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 3
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`an output shaft (Figs. 1-4. Anvil member 10) on which a front-end tool is attachable
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`(Figs. 1-4.square coupling end 12);
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`a torque transmission mechanism (Figs. 1-4. Rotational magnet member 22 and
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`Hammer mechanism 14) that includes a magnet coupling including a driving magnet
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`member(Figs. 1-4. Rotational magnet member 22) coupled to the driving shaft side
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`and a driven magnet member (Figs. 1-4. Hammer mechanism 14) coupled to the
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`output shaft side.
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`Hornschuch does not explicitly disclose: a momentof inertia on the side of the
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`driven magnet member being larger than a momentof inertia on the side of the driving
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`magnet member;
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`a clutch mechanism provided between the motor and the torque transmission
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`mechanism.
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`Examiner’s Note Regarding Mathematical Concept and Explanation
`
`In the following Geiras example, it could be noted thatit is the massof the rotor and
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`stator that are compared, not the momentof inertia. This, however, is irrelevant once
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`the remaining variables of the equations for momentof inertia are input. The various
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`formulae for momentofinertia of different shapes can be seen in the following chart,
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`Examiner’s Illustration A - (the chart is taken from the following weblink, which is self-
`
`

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`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 4
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`dated as 3/24/2014 https :/Avww.quora.com/How-do-l-calculate-the-moment- of-inertia-
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`about-a-rotated-axis. The Examiner notes that the date is in fact irrelevant, as this is a
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`scientific law and has always, and will always exist. The Examiner chose this link due
`
`to the neat and orderly pictorial representation of the concept, rather than any form of
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`uniqueness to the formulae.).
`
`
`
`
`aNSERS:
`
`onLN
`3<et
`See
`IA SSTly
`
`Examiner’s Illustration A
`
`As can be seen, the relevant formula for the arrangement of parts as shown in
`
`Hornschuchis that for a solid cylinder or disk,
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`J = = MR? (the Examiner notes that this
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`is irrelevant, as the use of another formula, such as hoop/shell or cylinder arrives at the
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`same result, as the radius is the same and therefore cancels out in each case). As the
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`radius of both the driven and driving member can be seen to be the same, the R
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`cancels out, leaving nothing but the Momentof Inertia,
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`|, equal to ’2 the mass. As this
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`

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`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 5
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`applies to both sides of the equation (the driven and the driving member), the 1 is
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`irrelevant, and the mass is left equal to the Momentof Inertia. Therefore, the equations
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`and comparisons described by Geiras apply to both mass and Momentof Inertia.
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`Geiras teaches: a momentofinertia on the side of the driven magnet memberbeing
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`larger than a momentof inertia on the side of the driving magnet member (The
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`theoretical and practical applications of the science taught in Geiras is best seen
`
`in paragraph’s 23-25. Beginning in paragraph 23, the specifically relevant ratio of
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`the massof the rotor to the stator (equivalent to the driving and driven magnet
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`memberof the current application) is discussed in detail, with specific focus on
`
`the fact that this ratio should be greater than 1 ([0023], “In the illustrated
`
`embodiment, m.sub.rotor/m.sub.stator is greater than 1. In some embodiments,
`
`m.sub.rotor/m.sub.stator is greater than 10. In other embodiments,
`
`m.sub.rotor/m.sub.stator can be a value between 50 and 100.”). Based upon the
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`quotedcitations, it is clear that the mathematical and practical knowledge being
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`claimed in the current application is clearly anticipated and taught by Geiras, as
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`they had mathematic equations analyzing the effect of the various ratios of mass
`
`and momentof inertia of the driving and driven member. While the mass of an
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`object is in fact directly related to the momentofinertia, this relationship is
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`explicitly disclosed in paragraph [0024], “Equation 1 under the description of FIG.
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`1 applies to IFES system 20, whereby the stored kinetic energy is directly related
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`to the rotational momentof inertia and to the square of the rotational speed.”
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`

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`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 6
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`Finally, further discussion of these relationships are discussed in paragraph
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`[0025], all of which is relevant); and
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`Therefore,
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`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 ratio of moments of
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`inertia of both the driving and driven magnet members in accordance with the teachings
`
`of Geiras, thereby combining prior art elements to achieve a predictable and desirable
`
`result. The benefit of utilizing these mathematical models during the design phase of
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`the project is described in paragraph [0025] of Geiras — “Therefore, a design
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`objective may be to minimize the massof all components which do not contribute
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`significantly to the rotational momentofinertia (I). Increasing the ratio of
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`m.sub.rotor/m.sub.stator, as noted above, can help to achieve this goal.
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`Important design parameters that may be used include, for example, the ratio of
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`rotational momentofinertia (I) to total system mass (m), and theratio of
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`maximum energy storage capacity to total system mass (lm). Therefore, IFES
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`system 20 of the present disclosure can allow a system designer to attain values
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`for these design parameters that greatly exceed values for FES systems of the
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`prior art.”.
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`The modified Hornschuch doesnot explicitly disclose: a clutch mechanism
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`provided between the motor and the torque transmission mechanism.
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`

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`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 7
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`Gelfand teaches: a clutch mechanism (Fig. 2, friction clutch 21) provided between
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`the motor (Fig. 2, drive 8) and the torque transmission mechanism (Col. 12, line 63,
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`“The embodiments of the impact wrench shownin FIGS. 2, 6, 11, 16, 20 have a
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`commonfeature residing in that the hammer4 is made composite of a driven part
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`17 and a driving part 18,”).
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`Therefore,
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`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 magnetically operated
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`tool of Hornschuch with the additional friction clutch of Gelfand, thereby combining prior
`
`art elements to achieve a predictable result. The benefit of this addition are detailed in
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`the extreme in Col. 1, line 1 — Col. 10, line 60 of Gelfand, which provide an in depth
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`analysis of prior clutch devices (impact clutch) vs the current clutch device (friction
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`Clutch).
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`In the interest of brevity, the Examinerwill not provide a complete citation from
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`the Gelfand disclosure. Put succinctly, however, Col. 7, line 30 sums up the applicant’s
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`intent — “Such an embodiment provides for a highly efficient impact wrench in which the
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`hammeris brought into engagement with the anvil with minimum energy losses so that
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`the overall efficiency of the wrench is improved.”
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`Regarding claim 2, the modified Hornschuch further discloses: the momentof inertia
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`on the side of the driven magnet memberis less than 100 times the momentofinertia
`
`on the side of the driving magnet member ([0023], “In the illustrated embodiment,
`
`m.sub.rotor/m.sub.stator is greater than 1. In some embodiments,
`
`m.sub.rotor/m.sub.stator is greater than 10. In other embodiments,
`
`

`

`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 8
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`m.sub.rotor/m.sub.stator can be a value between 50 and 100.” — all three of these
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`options can be readto fall within the claimed limitation. Further discussion of
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`choosing the appropriate values can be read in paragraphs [0023-0025].).
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`Regarding claim 3, the modified Hornschuch (based upon the embodiment shown
`
`in Figures 1-4) does not explicitly disclose: “the driving magnet memberis an inner
`
`rotor, and the driven magnet member is an outer rotor”.
`
`The second embodiment of Hornschuch, figures 5-8, discloses: “the driving
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`magnet (Figs. 5-8, actuating member 23) memberis an inner rotor, and the driven
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`magnet (Figs. 5-8, hollow hammer 15) member is an outer rotor’.
`
`Therefore,
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`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 arrangement of the
`
`driven and driving magnetic elements between the various embodiments of
`
`Hornschuch, thereby utilizing a simple substitution of one embodiment with another
`
`embodiment, combining prior art elements to achieve a predictable and desirable result.
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`The benefit of this secondary arrangement is disclosed in Col. 4, line 59, “This
`
`arrangement has the advantage of being slightly more compact inasmuch as actuating
`
`member 23 fits within hammer 15.”
`
`

`

`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 9
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`Regarding claim 4, the modified Hornschuch (based upon the embodiment_shown
`
`in Figures 1-4) does not explicitly disclose: “the driving magnet memberis an inner
`
`rotor, and the driven magnet member is an outer rotor”.
`
`The second embodiment of Hornschuch, figures 5-8, discloses: “the driving
`
`magnet (Figs. 5-8, actuating member 23) memberis an inner rotor, and the driven
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`magnet (Figs. 5-8, hollow hammer 15) member is an outer rotor’.
`
`Therefore,
`
`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 arrangement of the
`
`driven and driving magnetic elements between the various embodiments of
`
`Hornschuch, thereby utilizing a simple substitution of one embodiment with another
`
`embodiment, combining prior art elements to achieve a predictable and desirable result.
`
`The benefit of this secondary arrangement is disclosed in Col. 4, line 59, “This
`
`arrangement has the advantage of being slightly more compact inasmuch as actuating
`
`member 23 fits within hammer 15.”
`
`Conclusion
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`The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure. Ohtsu, (US 7,216,723) discloses a similar type of toolutilizing a
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`magnetic torque transfer system, while Limberg, (US 9289886) discloses an impacttype
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`tool with an adjustable clutch.
`
`

`

`Application/Control Number: 17/049,91 1
`Art Unit: 3731
`
`Page 10
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DANIEL JEREMY LEEDS whosetelephone numberis
`
`(571)272-2095. The examiner can normally be reached Mon-Thurs, 0730-1730.
`
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`
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`
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`
`/DANIEL JEREMY LEEDS/
`Examiner, Art Unit 3731
`
`