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
`
`11/15/2022
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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)
`
`

`

`Office Action Summary
`
`Application No.
`17/054,436
`Examiner
`DAVID G SHUTTY
`
`Applicant(s)
`MURAKAM| etal.
`Art Unit
`AIA (FITF) Status
`3731
`Yes
`
`-- The MAILING DATEof this 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 10/21/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() 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.
`
`Disposition of Claims*
`1-2,6-7 and 9 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj} Claim(s)
`is/are allowed.
`Claim(s) 1-2,6-7 and 9 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://Awww.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 10/21/2022 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.
`3.4.) 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)
`
`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)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20221103
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 2
`
`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 21 October 2022.
`
`3.
`
`Claims 1 — 2, 6 — 7, and 9 are pending.
`
`Continued Examination
`
`4.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`applicationis eligible for continued examination under 37 CFR 1.114, and the fee set forth
`
`in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been
`
`withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 October 2022
`
`has been entered.
`
`5.
`
`The drawings were received on 21 October 2022. These drawings are acceptable.
`
`Drawings
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 3
`
`Claim Objections
`
`6.
`
`Applicant is advised that should claim 6 be found allowable, claim 9 will be objected
`
`to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an
`
`application are duplicates or else are so close in content that they both cover the same
`
`thing, despite a slight difference in wording, it is proper after allowing one claim to object
`
`to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
`
`Claim Rejections - 35 USC § 102
`
`7.
`
`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.
`
`8.
`
`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 —
`
`(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.
`
`9.
`
`Claims 1, 6, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Andel (US 2010/0000749 A1).
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 4
`
`
`
`
`
`
`
`Please and_Fits:note, in accordance to MPEP 2131.01, Velling (Limits
`
`
`
`
`
`
`
`
`
`https://fractory.com/limits-and-fits/) is used to show that a circumferential clearance not
`
`disclosed in the referenceis inherent.
`
`
`
`Andes GUS SOULE TRS AT} ~ig. t
`
`HyDr>
`
`ed,
`
`10.
`
`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; an anvil (36,
`
`fig. 2) disposedin front of the spindle in a rotation axis direction (26, fig. 1); a first hammer
`
`(20, fig. 1) structured to apply a rotation force to the anvil in a circumferential direction
`
`about a rotation axis of the spindle ([0039], Il.
`
`1 — 4); and 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 (in the direction about the axis of 26,
`
`fig. 1); wherein, the first hammer is rotatable around a rotation axis (rotation axis of 26,
`
`fig. 1) of the spindle ([0032], Il. 12 — 15 describes control part 20 rotates about the rotation
`
`axis of 26 as shownin fig. 1) and is movable in the rotation axis direction ([0032], Il. 12 —
`
`15 describes control part 20 moving in axial direction 26 as shownin fig. 1), the second
`
`hammer has an internal space (The interior or internal space of rotating mass 22, best
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 5
`
`shownin fig. 4) for accommodating the first hammer, and the first hammer is connected
`
`to the second hammer by a connection structure (The connection or engagement
`
`structure of the impact cheeks 24 of the control part 20 and the grooves 28 ofthe 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) wherein the connection structure is a structure in which
`
`a convex portion provided on an outer circumferential surface of the first hammer (the
`
`convex portion of impact cheeks 24 of control part 20, fig. 1) movably disposed in a
`
`concave portion provided on an inner circumferential surface of the second hammer (the
`
`concave portion of grooves 28).
`
`Andel does not specify that the first hammer is connected to the second hammer
`
`by a connection structure having a circumferential clearance.
`
`However, it is inherent that the first hammer is connected to the second hammer
`
`by aconnection structure having a circumferential clearance in order for the first hammer
`
`to move relative to the second hammer as evidencedin Velling (Limits and Fits).
`
`In the
`
`section, “Limits and Fits’,
`
`Il.
`
`1 — 3 of Velling describes an engineering fit referring to the
`
`clearance between two mating parts and a clearancefit is the engineering fit wherein the
`
`two parts can moverelative to each other and in the section, “ClearanceFits’, ll. 1-2
`
`describes that with the clearancefit, the shaft is always smaller than the hole leaving
`
`room for sliding and rotational movement.
`
`In the instant application, [0033] of Andel
`
`describes the impact cheeks 24 of the control part 20 engaging the grooves 28 of the
`
`rotating mass 22 suchthat 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 clearance or
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 6
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`clearancefit inherently exists 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
`
`clarification purposes, the examiner illustrates the circumferential clearance or clearance
`
`fit 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 clearance fit between the control part 20 and the rotating mass 22 would
`
`likewise include a circumferential clearance or clearancefit between the impact cheeks
`
`24 of the control part 20 and the grooves 28 of the rotating mass 22.
`
`Andel does not specify that the circumferential clearance is determined according
`
`to a motor rotation speed during a tightening work.
`
`However, it is inherent that the circumferential clearance is determined according
`
`to a motor rotation speed during a tightening work as evidencedin Velling (Limits and
`
`Fits).
`
`In the section, “Clearance Fits”, the subsections, “Free Running Fit” and “Close
`
`Running Fit’, describes two different sizes of clearance fit wherein a free running fit is
`
`suitable for high running speeds and a close running fit is good at withstanding moderate
`
`running speeds. Thus, the selection of the clearancefit between twoparts(i.e. the control
`
`part 20 and the rotating mass 22 of Andel) is determined, in part, according to the running
`
`speed or the motor rotation speed of the motor.
`
`Since the first hammer is connected to the second hammer by a connection
`
`structure having an inherent circumferential clearance as reasoned above, the second
`
`hammer 22 has an impact on the first hammer 20 in contact with the anvil 36. [0032]
`
`describes the control part 20 can move, relative to the drive shaft 10, both in an axial and
`
`a rotational, oscillating motion due to the grooves 14 and the ball guides 18 and [0039]
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 7
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`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 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 clearancefit between the impact cheeks 24 of the control part 20 and the
`
`grooves 28 of the rotating mass 22, the rotating mass 22 would impact the control part
`
`20.
`
`[0039] describes rotating mass 22 provides impact energy to anvil 36 in addition to
`
`the impact energy provided by control part 20 wherein the examiner deems in order for
`
`the rotating mass 22 to provide impact energy to anvil 36, rotating mass 22 must impact
`
`control part 20 while control part 20 is in contact with anvil 36 to transfer the impact energy
`
`of rotating mass 22 to anvil 36.
`
`11.
`
`Regarding claim 6, Andel discloses
`
`the circumferential clearance (The
`
`circumferential clearance or clearancefit 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) is set so that the
`
`second hammer (22,
`
`fig. 1) has an impact on the first hammer (20,
`
`fig. 1) after a
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 8
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`predetermined time elapses from when the first hammer has an impact on the anvil (36,
`
`fig. 2) ([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 clearancefit between the impact cheeks 24 of the control
`
`part 20 and the grooves 28 of the rotating mass 22, the rotating mass 22 would impact
`
`the control part 20 in the same direction as control part 20 impacted anvil 36).
`
`12.
`
`Regarding claim 9, Andel discloses
`
`the circumferential clearance (The
`
`circumferential clearance or clearancefit 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) is set so that the
`
`second hammer (22,
`
`fig. 1) has an impact on the first hammer (20,
`
`fig. 1) after a
`
`predetermined time elapses from when the first hammer has an impact on the anvil (36,
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 9
`
`fig. 2) ((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 clearancefit between the impact cheeks 24 of the control
`
`part 20 and the grooves 28 of the 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.—In the event the determination of the status of the application as subject to AIA 35
`
`Claim Rejections - 35 USC § 103
`
`U.S.C. 102 and 103 is incorrect, any correction of the statutory basis for the rejection will
`
`not be considered a new ground of rejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same under either status.
`
`14.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousnessrejections setforth in this Office action:
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 10
`
`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.
`
`15.
`
`Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Andel (US 2010/0000749 A1), in view of Otani et al. (JP 2015—193062), hereinafter Otani.
`
`16.
`
`Regarding claim 2, Andel discloses the invention as disclosed in claim 1.
`
`Andel doesnot explicitly disclose after the first hammer has an impact on the anvil
`
`to reduce a circumferential clearance between the anvil and a tightened member, the
`
`second hammer has an impact on the first hammer.
`
`However, Otani teaches a rectangular shaft portion (31, fig. 1) on an anvil (3, fig.
`
`1) and a socket(4, fig. 1) having a square hole (41, fig. 1) for attachment to the rectangular
`
`shaft portion of the anvil wherein when the first hammer (2, fig. 1) has an impact on the
`
`anvil, a circumferential clearance ([0028], Il. 278 — 279; “a clearance between the angular
`
`shaft portion 31 of the output shaft 3 and the angular hole 41 of the socket 4”) between
`
`the anvil and a tightened member ([0024], Il. 239 — 242; “a bolt’) is reduced ([0028], Il.
`
`286 — 288 describes when or at the same time anvil 3 is hit by hammer 2, the corners of
`
`rectangular shaft portion 31 of output shaft 3 strikes the inner surface of square hole 41
`
`of socket 4 wherein the examiner deems when the cornersof rectangular shaft portion 31
`
`of output shaft 3 strikes the inner surface of square hole 41 of socket 4 as shownin fig.
`
`10, the a circumferential clearance between the anvil and the bolt retained in the socket
`
`is reduced) (One having ordinary skill in the art would recognize that with the incorporation
`
`of the teachings of Otani with the invention of Andel, such that anvil 36 of Andel would
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 11
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`acquire a rectangular shaft portion and a socket having a square hole for attachment to
`
`the rectangular shaft portion of the anvil, when control part 20 of Andel has an impact on
`
`anvil 36 of Andel, the circumferential clearance between the anvil and the bolt retained in
`
`the socket would be reduced as described in Otani. Moreover, when or at the same time
`
`control part 20 of Andel impacts the anvil 36 of Andel and causes the corners of the
`
`rectangular shaft portion of anvil 36 to strike the inner surface of the square hole of the
`
`socket as described in Otani, control part 20 of Andel would be temporarily stopped
`
`wherein the rotating mass 22 of Andel would continue to rotate due to inertia. After a
`
`predetermined time corresponding to the travel time of rotating mass 22 as rotating mass
`
`22 travels across the circumferential clearance or clearance fit between control part 20
`
`and rotating mass 22, rotating mass 22 would impact control part 20. Thus, rotating mass
`
`22 impacts control part 20 after control part 20 has an impact on anvil 36 to reduce a
`
`circumferential clearance between the anvil 36 andthe bolt).
`
`Therefore, it would have been obvious to one having ordinary skill in the art before
`
`the effectivefilling date of the claimed invention to have modified the impactrotary tool,
`
`as disclosed by Andel, with a rectangular shaft portion on an anvil and a socket having a
`
`squarehole for attachment to the rectangular shaft portion of the anvil wherein when the
`
`first hammer has an impact on the anvil, a circumferential clearance between the anvil
`
`and a tightened member is reduced, as taught by Otani, with the motivation to provide a
`
`socket and an attachment means between the socket and the anvil of the rotary impact
`
`tool to couple the rotary impact tool and the tightened member suchthat rotational impact
`
`energy is applied to the tightened member from the anvil through the socket.
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 12
`
`17.
`
`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, Otani teaches a torque sensor (7, fig. 1) structured to detect a torque of
`
`the anvil or the first hammer ([0025], Il. 246 - 247 describes torque sensor 7 detects the
`
`torque of output shaft 3).
`
`Therefore, it would have been obvious to one having ordinary skill 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
`
`the first hammer, as taught by Otani, with the motivation to deactivate the impact
`
`mechanism when the torque value detected by the torque sensor reaches a set torque
`
`value so that the tightened member is not overly tightened ([0027], Il. 269 — 272).
`
`Responseto Arguments
`
`18.
`
`Applicant's arguments, filed 21 October 2022, with respect to the rejection of
`
`claims 1 — 6 and 8 - 9 under 35 USC §103 have been fully considered but they are not
`
`persuasive.
`
`Applicant argues:
`
`At a minimum, 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 concave portion or a convex portion provided on an inner circumferential surface of the
`second hammer with the circumferential clearance which is determined according to a motor rotation
`speed during a tightening work, when viewed from the axial direction, and the second hammer has
`an impacton the first hammer in contact with the anvil, as recited by claim 1.
`
`In responseto Applicant's argument that Andel fails to disclose the limitation, “the
`
`circumferential clearance which is determined according to a motor rotation speed during
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 13
`
`a tightening work’, the examiner maintains the circumferential clearance or clearancefit
`
`between the convex portion of impact cheeks 24 and concave portion of grooves 28 in
`
`Andel is inherent to the structure due to how the convexportion of impact cheeks 24 and
`
`concave portion of grooves 28 moverelative to each other in the rotary impact tool of
`
`Andel. Moreover
`
`"To establish inherency, the extrinsic evidence ‘must make clear that the missing
`
`descriptive matter is necessarily present in the thing described in the reference, and that
`
`it would be so recognized by persons of ordinary skill." In re Robertson, 169 F.3d 748,
`
`745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999).
`
`It is old and well known in engineering practices that engineering fits are used as
`
`part of geometric dimensioning and tolerancing when a part or assembly is designed for
`
`the part or assembly to function. In engineering terms, the engineering fit is the clearance
`
`between two mating parts, and the size of this clearance determines whether the parts
`
`can, at one end of the spectrum, moveor rotate independently from each other or, at the
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`other end, are temporarily or permanently joined.
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`In the instant case, impact cheeks 24
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`and grooves 28 would have a clearancefit so that the two parts could move independently
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`of each other, wherein without the clearance fit between the convex portion of impact
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`cheeks 24 and concave portion of grooves 28 in Andel, the impact tool of Andel would
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`not function. Thus, the clearance fit is inherent between the convex portion of impact
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`cheeks 24 and concaveportion of grooves 28 in Andel in order for the impacttool of Andel
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`to function. Moreover, the type of clearancefit is determined, in part, by the running
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`speed or, in the case of Andel, by the motor rotation speed. As shown in Velling and the
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`ANSI B4.2-1978, different sizes of clearance fit are used depending on the running speed
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`

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`Application/Control Number: 17/054,436
`Art Unit: 3731
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`Page 14
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`of the two part moving relative to each other.
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`Thus, the selection of the clearancefit
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`between two parts (i.e.
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`the control part 20 and the rotating mass 22 of Andel)
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`is
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`determined, in part, according to the running speed or the motor rotation speed of the
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`motor that moves the two parts relative to each other.
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`Conclus
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`ion
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`19.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DAVID G SHUTTY whosetelephone number is 571-272-
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`3626. The examiner can normally be reached 7
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`30am-5
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`30 pm, Monday- Friday.
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`

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`Application/Control Number: 17/054,436
`Art Unit: 3731
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`Page 15
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`20.
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`Examiner
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`interviews
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`are
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`available
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`via
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`telephone,
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`in-person,
`
`and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR)
`_Savi
`at fit
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`21.
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`‘If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, THANH TRUONG canbe reached on 571-272-4472. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`22.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`center for more information about Patent Center and https://www.uspto.gov/patents/docx
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`for
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`information about
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`filing in DOCX format. For additional questions, contact
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`the
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`Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance
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`from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
`
`/DAVID G SHUTTY/
`Examiner, Art Unit 3731
`4 November 2022
`
`/THOMAS M WITTENSCHLAEGER/
`Examiner, Art Unit 3731
`
`