www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/054,436
`
`11/10/2020
`
`Hiroaki MURAKAMI
`
`065933-0796
`
`2601
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`SHUTTY, DAVID G
`
`3731
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/27/2022
`
`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*
`1-3 and 6-9 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`5a) Of the above claim(s) ___ is/are withdrawn from consideration.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) 1-3 and 6-9 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`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 11/10/2020 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
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 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)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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 20220618
`
`Application No.
`Applicant(s)
`17/054,436
`MURAKAMI et al.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DAVID G SHUTTY
`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 6/2/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J 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: 17/054,436
`Art Unit: 3731
`
`Page 2
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`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under
`
`the first inventor to file provisions of the AIA.
`
`Status of Claims
`
`2.
`
`This office action is
`
`in
`
`response to Applicant's Amendment/request
`
`for
`
`Reconsideration after a Non-Final Rejection filed on 2 June 2022.
`
`3.
`
`Claims 1 — 3 and 6 — 9 are pending.
`
`Drawings
`
`4.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
`
`every feature of the invention specified in the claims. Therefore, the following features
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`must be shownor the feature(s) canceled from the claim(s). No new matter should be
`
`entered.
`
`e
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`‘“acircumferential clearance” [between the anvil and the tightened member] — claim
`
`2, line 2. Please note, figures 3, 4 show a circumferential clearance between the first
`
`hammer and the second hammer; however, the drawings do not show a circumferential
`
`clearance between the anvil and the tightened member.
`
`e
`
`“atightened member’ — claim 2, line 3.
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 3
`
`5.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in reply
`
`to the Office action to avoid abandonmentof the application. Any amended replacement
`
`drawing sheet should include all of the figures appearing on the immediate prior version
`
`of the sheet, even if only one figure is being amended. The figure or figure number of an
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`amended drawing should not be labeled as “amended.” If a drawing figure is to be
`
`canceled, the appropriate figure must be removed from the replacement sheet, and where
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`necessary, the remaining figures must be renumbered and appropriate changes made to
`
`the brief description of the several views of the drawings for consistency. Additional
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`replacement sheets may be necessary to show the renumbering of the remaining figures.
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`Each drawing sheet submittedafter the filing date of an application must be labeled in the
`
`top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).
`
`If the changes are not accepted by the examiner, the applicant will be notified and
`
`informed of any required corrective action in the next Office action. The objection to the
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`drawings will not be held in abeyance.
`
`Claim Rejections - 35 USC § 102
`
`6.
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103is incorrect, any correction of the statutory basis for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same under either status.
`
`7.
`
`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 madein this Office action:
`
`A person shall be entitled to a patent unless —
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 4
`
`(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.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the patent
`or application, as the case may be, names another inventor and waseffectively filed before the
`effective filing date of the claimed invention.
`
`8.
`
`Claims 1
`
`-— 6 and 8 - 9 are rejected under 35 U.S.C. 102(a)(1) as being
`
`anticipated by Andel (US 2010/0000749 A1).
`
`PO ay
`
`Andel (UES EI OSNHITSE AL ~Sg.
`
`Fig
`
`9.
`
`Regarding claim 1, Andel discloses an impact rotary tool comprising:
`
`a driver ([0032], Il. 1 — 5; “a drive motor’);
`
`a spindle (10, fig. 1) rotated by the driver ([0032], Il. 1 — 5; “a drive motor’);
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`an anvil (36, fig. 2) disposed in front of the spindle (10) in a rotation axis direction
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`(26, fig. 1);
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`a first hammer (20, fig. 1) structured to apply a rotation force to the anvil (36) ina
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`circumferential direction about a rotation axis of the spindle (10) ([0039], Il. 1 — 4); and
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`a second hammer (22, fig. 1) structured to apply, to the first hammer (20) having
`
`applied the rotation force to the anvil (82), a rotation force in the circumferential direction
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 5
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`(axis of 26, fig. 1) ((0033] describes the impact cheeks 24 of the control part 20 engaging
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`the grooves28 of the rotating mass 22 such that the control part 20 can movein the axial
`
`direction within the rotating mass 22. Since the control part 20 movesin the axial direction
`
`within the rotating mass 22 via the impact cheeks 24/grooves 28, then a circumferential
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`clearance or tolerance must exist between the control part 20 and the rotating mass 22
`
`so that the control part 20 and the rotating mass 22 can moverelative to each other. For
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`clarification purposes, the examiner illustrates the circumferential clearance or tolerance
`
`between the control part 20 and the rotating mass 22 in the examiner's drawing of the
`
`front view of the control part 20 and the rotating mass 22. Please note, the circumferential
`
`clearance or tolerance between the control part 20 and the rotating mass 22 would
`
`likewise include a circumferential clearance or tolerance between the impact cheeks 24
`
`of the control part 20 and the grooves 28 of the rotating mass 22.
`
`[0032] describes the
`
`control part 20 can move, relative to the drive shaft 10, both an axial and a rotational,
`
`oscillating motion due to the grooves 14 and the ball guides 18 and [0039] describes the
`
`control part 20 transmits rotation to the rotating mass 22 wherein one having ordinaryskill
`
`the art would recognize from fig. 4 that the control part 20 transmits rotation to the rotating
`
`mass 22 via the impact cheeks 24 of the control part 20 within the grooves 28 of the
`
`rotating mass 22. Thus, when the control part 20 rotates, impact cheeks 24 of the control
`
`part 20 would press against a side of the grooves 28 of rotating mass 22 to transmit
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`rotation to rotating mass 22. When the impact cheeks 24 of the control part 20 impacts
`
`impact cheeks 34 of the anvil 36, the impact cheeks 24 of the control part 20 would be
`
`temporarily stopped wherein the rotating mass 22 on axial bearing 32 would continue to
`
`rotate due to inertia. After a predetermined time corresponding to the travel time of
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 6
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`rotating mass 22 as the rotating mass 22 travels across the circumferential clearance or
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`tolerance between the impact cheeks 24 of the control part 20 and the grooves 28 of the
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`rotating mass 22, the rotating mass 22 would impact the control part 20 in the same
`
`direction as control part 20 impacted anvil 36); wherein, the first hammer (20) is rotatable
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`around a rotation axis (rotation axis of 26, fig. 1) of the spindle (10) ((0032], Il. 12 —15
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`describes control part 20 rotates about the rotation axis of 26 as shownin fig. 1) and is
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`movable in the rotation axis direction (26) ([0032],
`
`Il. 12 — 15 describes control part 20
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`moving in axial direction 26 as shownin fig. 1), and the first hammer (20) is connected to
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`the second hammer (22) by a connection structure (The connection or engagement
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`structure of the impact cheeks 24 of the control part 20 and the grooves 28 of the rotating
`
`mass 22 best shownin box A of the examiner's drawing of the front view of the control
`
`part 20 and the rotating mass 22) having a circumferential clearance (The circumferential
`
`clearance or tolerance between the impact cheeks 24 of the control part 20 and the
`
`grooves 28 of the rotating mass 22 best shownin box A of the examiner’s drawing of the
`
`front view of the control part 20 and the rotating mass 22),
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`the second hammer (20) has
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`an internal space (The interior or internal space of rotating mass 22, best shownin fig. 4)
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`for accommodating the first hammer (20), and the connection structure (The connection
`
`or engagement structure of the impact cheeks 24 of the control part 20 and the grooves
`
`28 of the rotating mass 22 best shown in box A of the examiner's drawing of the front
`
`view of the control part 20 and the rotating mass 22) is a structure in which a convex
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`portion er-a-cerncave—perier provided on an outer circumferential surface of the first
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`hammer (the convex portion of impact cheeks 24 of control part 20, fig. 1) movably
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`disposed in a concaveportion (the concaveportion of grooves 28) (see reasoning above)
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 7
`
`
`
`10.
`
`Regarding claim 2, Andel discloses after the first hammer (20) has an impact on
`
`the anvil (36) to reduce a circumferential clearance between the anvil and a tightened
`
`member (The examiner interprets the limitation, “to reduce a circumferential clearance
`
`between the anvil and a tightened member’, as a recitation of intended use. A recitation
`
`of the intended use of the claimed invention must result in a structural difference between
`
`the claimed invention and the prior art in order to patentably distinguish the claimed
`
`invention from the prior art.
`
`If the prior art structure is capable of performing the intended
`
`use, then it meets the claim. Since the invention of Andel impacts anvil 36 via first
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`hammer 20 to tighten a tightened member or bolt
`
`in the same way as applicant's
`
`invention, the invention of Andel would likewise be capable of reducing a circumferential
`
`clearance between the anvil and a tightened member in the same way as applicant’s
`
`invention),
`
`the second hammer (22) has an impact on the first hammer (20) (See
`
`reasoning in claim 1).
`
`11.
`
`Regarding claim 3, Andel discloses the second hammer (22) has an impact on
`
`the first hammer (20) in contact with the anvil (36) (See reasoning of claim 1).
`
`12.
`
`Regarding claim 6, Andel discloses
`
`the circumferential clearance (The
`
`circumferential clearance or tolerance between the impact cheeks 24 of the control part
`
`20 and the grooves 28 of the rotating mass 22 best shown in box A of the examiner's
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 8
`
`drawing of the front view of the control part 20 and the rotating mass 22) is set so that the
`
`second hammer (22) has an impact on the first hammer (20) after a predetermined time
`
`elapses from when the first hammer has an impact on the anvil ([(0032] describes the
`
`control part 20 can move, relative to the drive shaft 10, both an axial and a rotational,
`
`oscillating motion due to the grooves 14 andthe ball guides 18 wherein [0039] describes
`
`the control part 20 transmits rotation to the rotating mass 22 wherein one having ordinary
`
`skill the art would recognize from fig. 4 that the control part 20 transmits rotation to the
`
`rotating mass 22 via the impact cheeks 24 of the control part 20 within the grooves 28 of
`
`the rotating mass 22. Thus, when the control part 20 rotates, impact cheeks 24 of the
`
`control part 20 would press against a side of the grooves 28 of rotating mass 22 to
`
`transmit rotation to rotating mass 22. When the impact cheeks 24 of the control part 20
`
`impacts impact cheeks 34 of the anvil 36, the impact cheeks 24 of the control part 20
`
`would be temporarily stopped wherein the rotating mass 22 on axial bearing 32 would
`
`continue to rotate due to inertia. After a predetermined time corresponding to the travel
`
`time of rotating mass 22 as the rotating mass 22 travels across the circumferential
`
`clearance or tolerance between the impact cheeks 24 of the control part 20 and the
`
`grooves 28 ofthe rotating mass 22, the rotating mass 22 would impact the control part 20
`
`in the same direction as control part 20 impacted anvil 36).
`
`13.
`
`Regarding claim 8, Andel discloses the second hammer (22) has an impact on
`
`the first hammer (20) in contact with the anvil (36) (See reasoning of claim 1).
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 9
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`14.
`
`Regarding claim 9, Andel discloses
`
`the circumferential clearance (The
`
`circumferential clearance or tolerance between the impact cheeks 24 of the control part
`
`20 and the grooves 28 of the rotating mass 22 best shown in box A of the examiner's
`
`drawing of the front view of the control part 20 and the rotating mass 22) is set so that the
`
`second hammer (22) has an impact on the first hammer (20) after a predetermined time
`
`elapses from when the first hammer has an impact on the anvil ([0032] describes the
`
`control part 20 can move, relative to the drive shaft 10, both an axial and a rotational,
`
`oscillating motion due to the grooves 14 and the ball guides 18 wherein [0039] describes
`
`the control part 20 transmits rotation to the rotating mass 22 wherein one having ordinary
`
`skill the art would recognize from fig. 4 that the control part 20 transmits rotation to the
`
`rotating mass 22 via the impact cheeks 24 of the control part 20 within the grooves 28 of
`
`the rotating mass 22. Thus, when the control part 20 rotates, impact cheeks 24 of the
`
`control part 20 would press against a side of the grooves 28 of rotating mass 22 to
`
`transmit rotation to rotating mass 22. When the impact cheeks 24 of the control part 20
`
`impacts impact cheeks 34 of the anvil 36, the impact cheeks 24 of the control part 20
`
`would be temporarily stopped wherein the rotating mass 22 on axial bearing 32 would
`
`continue to rotate due to inertia. After a predetermined time corresponding to the travel
`
`time of rotating mass 22 as the rotating mass 22 travels across the circumferential
`
`clearance or tolerance between the impact cheeks 24 of the control part 20 and the
`
`grooves 28 ofthe rotating mass 22, the rotating mass 22 would impact the control part 20
`
`in the same direction as control part 20 impacted anvil 36).
`
`Claim Rejections - 35 USC § 103
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 10
`
`15.—In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103is incorrect, any correction of the statutory basis for the rejection will
`
`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same under either status.
`
`16.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`A patentfor 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 beforethe effectivefiling date of the claimed invention to a person having ordinaryskill
`in the art to which the claimed invention pertains. Patentability shall not be negated by the
`manner in which the invention was made.
`
`17.
`
`Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Andel (US
`
`2010/0000749 Aj),
`
`in view of Hirabayashi et al.
`
`(US 9,205,547 B2), hereinafter
`
`Hirabayashi.
`
`18.
`
`Regarding claim 7, Andel discloses the invention as recited in claim 1.
`
`Andel does not explicitly disclose a torque sensor structured to detect a torque of
`
`the anvil or the first hammer.
`
`However, Hirabayashi teachesa torque sensor (Col. 11, Il. 42 — 46; “torque sensor)
`
`structured to detect a torque of the anvil or the first hammer (Col. 11, Il. 42 — 46 describes
`
`the torque sensor detects the torque of the anvil 10).
`
`Therefore, it would have been obvious to one having ordinaryskill in the art before
`
`the effectivefilling date of the claimed invention to have modified the impactrotary tool,
`
`as disclosed by Andel, with a torque sensor structured to detect a torque of the anvil or
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`the first hammer, as taught by Hirabayashi, with the motivation to deactivate or brake the
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 11
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`driver such that torque transmission from the spindle to the anvil is blocked when the
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`torque value detected by the torque sensor reachesa set torque value set by the operator
`
`(Col. 11, Il. 42 — 46).
`
`Responseto Arguments
`
`19.
`
`Applicant's arguments, filed 2 June 2022, with respect to the objection to the
`
`drawings have been fully considered but they are not persuasive.
`
`Applicant argues:
`
`Applicant notes that, as outlined in MPEP 608.02, the statutory requirement for showing the claimed
`subject matter only requires that the "applicant shall furnish a drawing where necessary for the
`understanding of the subject matter to be patented..." (See 35 U.S.C. § 113, See also 37 CFR
`§1.81(a), which states "[t]he applicant for a patent is required to furnish a drawing of the invention
`where necessaryfor the understanding of the subject matter sought to be patented..."). Emphasis
`added.
`
`In the present disclosure, paragraph [0007] discloses as follows: "However, there is a circumferential
`clearance (play) between the anvil and a tip tool and between the tip tool and a tightened member.
`For this reason, when the hammer has an impact on the anvil and the torque sensor detects the
`strain amount, the tip tool has not yet applied the tightening torque to the tightened member. After
`the impact by the hammer, the anvil rotates the tip tool to close the circumferential clearance, and
`then the tightening torque is applied to the tightened member."
`
`Thus, one of ordinary skill in the art would readily understand what a circumferential clearance(e.g.,
`“play") between the anvil and a tightened member means and whatthe tightened member is, without
`help of the drawings. As such, Applicant respectfully request that the objection to the drawings be
`withdrawn.
`
`In responseto applicant’ s arguments that the claim element(s), the circumferential
`
`clearance and the tighten member, are not required to be shownin the drawings explicitly,
`
`applicant is incorrect in his assertion and cherry-picks the citations in the MPEP that
`
`favors his assertion without considering all of the relevant citations in the MPEP as a
`
`whole. The three pertinent citations in this matter are as follows:
`
`35 U.S.C. §113
`
`The applicant shall furnish a drawing where necessary for the understanding of the subject matter
`sought to be patented...
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`37 CFR §1.81(a)
`
`Page 12
`
`The applicant for a patent is required to furnish a drawing of the invention where necessaryfor the
`understanding of the subject matter sought to be patented...
`
`37 CFR §1.83(a)
`
`The drawing in a non-provisional application must show every feature of the invention specified in
`the claims. However, conventional features disclosed in the description and claims, where their
`detailedillustration is not essential for a proper understanding of the invention, should beillustrated
`in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled
`rectangular box).
`
`In applicant's argument, applicant cites 35 U.S.C. §113 and 37 CFR §1.81 (a) which
`
`states, “the applicant shall furnish a drawing where necessary for the understanding of
`7
`to be patented...”, and alleges that
`
`the subject matter sought
`
`the claim features,
`
`specifically the circumferential clearance and the tightening member, are not required to
`
`be shown in the drawings explicitly because one having ordinary level of skill in the art
`
`would understand these features without their explicit showing in the drawings. However,
`
`Applicant
`
`ignores 37 CFR §1.83(a) which states, “the drawing in a non-provisional
`
`application must show every feature of the invention specified in the claims” (emphasis
`
`added). Thesecitations, 35 U.S.C. §113, 37 CFR §1.81(a), and 37 CFR §1.83(a), are not
`
`read in the alternative but must be read as a whole.
`
`35 USC §112(b) states, “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”, wherein the USPTO defines an invention as “any
`
`art or process, machine, manufacture, design, or composition of matter, or any new
`
`improvement thereof, or any variety of plant, which may be patentable under the patent
`
`laws of the United States.” Furthermore, 35 USC §101 states “whoever invents or
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`discovers any new and useful process, machine, manufacture, or composition of matter,
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 13
`
`or any new and useful improvement thereof, may obtain a patent therefor, subject to the
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`conditions and requirements ofthis title.” When the instant application is read considering
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`35 USC §112(b) and 35 USC §101, applicant’s claims represent an invention, specifically
`
`a machine, which is allegedly new, or in other words, novel and non-obvious in respect
`
`to the prior art.
`
`If the claims represent a machine novel and non-obvious to the prior art,
`
`then one of ordinary skill in the art would not know howthe claim features of the machine
`
`are structurally related to each other and thus each claim feature must be shownin the
`
`drawings because howthe claim features of the machine are structurally related to each
`
`other is necessary for the understanding of the invention sought to be patented as
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`described in 35 U.S.C. §113 and 37 CFR §1.81(a).
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`In this way, 35 U.S.C. §113 and 37
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`CFR §1.81(a) underpins the requirement of 37 CFR §1.83(a) and reconciles the citations
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`of 35 U.S.C. §113 and 37 CFR §1.81(a) with the citation of 37 CFR §1.83(a). Please
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`note, relevant case law supports this reasoning in that “[a]ny structural detail that is of
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`sufficient
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`importance to be described should be shown in the drawing.” (Ex parte
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`Good, 1911 C.D. 43, 164 OG 739 (Comm’r Pat. 1911).
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`Therefore, when considering all the relevant citations in the MPEP and relevant
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`case law, applicant's arguments that the claim elements , the circumferential clearance
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`and the tightening member, are not required to be shownin the drawings explicitly are
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`unpersuasive and the objection to drawings are maintained.
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`20.
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`Applicant’s amendments, filed 2 June 2022, with respect to the rejection of claims
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`1 - 9 under 35 USC §112(b) have been fully considered and are persuasive. The
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`rejection of claims 1 — 9 under 35 USC §112(b) has been withdrawn.
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`

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`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 14
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`21.
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`Applicant's arguments, filed 2 June 2022, with respect to the rejection of claims 1
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`— 6 and 8 —9 under 35 USC §103 have been fully considered but they are not persuasive.
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`Applicant argues:
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`Andel fails to disclose that the connection structure is a structure in which a convex portion or a
`concaveportion provided on an outer circumferential surface of the first hammer movably disposed
`in a concaveportion or a convex portion provided on an inner circumferential surface of the second
`hammer with the circumferential clearance, when viewed from the axial direction.
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`In the rejection of original claims 4 and 5, the Office Action providedthe following figure and asserted
`that there is a circumferential clearance between the convex portion 24 provided on the outer
`circumferential surface of the alleged first hammer 20 and the concaveportion 28 provided on the
`inner circumferential surface of the alleged second hammer 22. However, this figure is merely a
`speculation by the Examiner.
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`In responseto Applicant's argument that Andel fails to disclose the limitation, “the
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`circumferential clearance’,
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`the examiner maintains the tolerance/fit or circumferential
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`clearance between the convex portion of impact cheeks 24 and concave portion of
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`grooves 28 in Andel is inherent to the structure due to how the convexportion of impact
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`cheeks 24 and concave portion of grooves 28 interact.
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`"To establish inherency, the extrinsic evidence ‘must makeclear that the missing
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`descriptive matter is necessarily present in the thing described in the reference, and that
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`it would be so recognized by persons of ordinary skill." In re Robertson, 169 F.3d 748,
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`745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
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`It is old and well known in engineering practices that tolerances/fits are generally
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`used as part of geometric dimensioning and tolerancing when a part or assembly is
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`designed. In engineering terms, the "tolerance/fit" is the clearance between two mating
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`parts, and the size of this clearance determines whether the parts can, at one end of the
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`spectrum, move or rotate independently from each other or, at the other end, are
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`temporarily or permanently joined.
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`In the instant case, impact cheeks 24 and grooves 28
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`

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`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 15
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`would havea sliding fit so that the two parts could move independently of each other.
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`In
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`fact, without the tolerance/fit or circumferential clearance between the convex portion of
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`impact cheeks 24 and concave portion of grooves 28 in Andel, the impact tool of Andel
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`would not function. For example, Andel discloses the convex portion of impact cheeks
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`24 slide within the concave portion of grooves 28 ([0033], Il. 7 — 11, “the rotating mass 22
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`comprises grooves 28, in which the impact cheeks 24 engage, and in which the latter are
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`movable in the axial direction’). When the impact tool of Andel is operated, the convex
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`portion of impact cheeks 24 slides against the concave portion of grooves 28 at a high
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`running rate wherein the resulting friction between the two parts would cause the two
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`parts to thermally expand. Without the tolerance/fit or circumferential clearance between
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`the convexportion of impact cheeks 24 and the concave portion of grooves 28, the sides
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`of the impact cheek 24 would interfere with the sides of grooves 28 resulting in a stoppage
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`of the impact tool. Thus, the tolerance/fit or circumferential clearance must be present
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`between the convex portion of impact cheeks 24 and concave portion of grooves 28 in
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`Andel in order for the impact tool of Andel to function. Moreover, one having ordinaryskill
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`in the art would recognize thatfor a sliding fit the clearance must be large enough so that
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`the sides of the impact cheeks 24 do not interfere with the sides of the grooves else a
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`stoppage will occur. In fact, one having ordinary skill in the art would know this because
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`

`

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`
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`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 16
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`the American National Standards Institute (ANSI) provides a fit table (shown below) to
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`ensure tolerances/fits are standardized and used in manufacturing.
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`
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`Therefore,
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`the tolerance/fit or circumferential
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`clearance between the convex
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`portion of impact cheeks 24 and concaveportion of grooves 28 in Andel is inherent to the
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`structure due to how the convex portion of impact cheeks 24 and concave portion of
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`grooves 28 interact.
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`Applicant further argues
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`Paragraph [0033] of Andel discloses asfollows:
`“The control part 20 is in this case movably guided in the rotating mass 22 in the axial direction, but
`coupledto the rotating mass 22 in a rotationally fixed manner. For this purpose, the rotating mass 22
`comprises grooves 28, in which the impact cheeks 24 engage, and in which the latter are movable
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`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 17
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`In fact,
`in the axial direction and via which the rotary transmission is effected" (emphasis added).
`FIG. 4 of Andel discloses the impact cheeks 24is in contact with the inner wall of the rotating mass
`22 (groove 28) without any gap. Accordingly, contrary to the Examiner's understanding, Andel fails
`to disclose the aforementioned featuresof claim 1.
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`In response to Applicant's argument that Andel discloses that the impact cheeks
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`24 is in contact with the inner wall of the rotating mass 22 (groove 28) without any gap,
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`the examiner agrees. However, Andel does not suggest there is no tolerance/fit or
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`circumferential clearance. Please note Applicant drawings (fig. 3) shows main hammer
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`20 engaging sub-hammer 22 but thereis still a circumferential clearance 21d.
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`Instead,
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`Andel is describing that “the rotating mass 22 comprises grooves 28, in which the impact
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`cheeks 24 engage ... via which the rotary transmission is effected.” That is, the impact
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`cheeks 24 engage grooves 28 to rotate