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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
`
`17/054,436
`
`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
`
`05/22/2023
`
`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 1/27/2023.
`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.
`
`Disposition of Claims*
`1.and 6-7 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) 1and6-7 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://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
`1.2) 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)
`
`(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 20230515
`
`

`

`Application/Control Number: 17/054,436
`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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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under
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`the first inventor to file provisions of the AIA.
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`Status of Claims
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`2.
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`This office action is
`
`in
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`response to Applicant's Amendment/Request
`
`for
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`Reconsideration after a Non-Final Rejection filed on 27 January 2023.
`
`3.
`
`Claims 1 and 6 — 7 and 9 are pending. Claims 2 — 5 and 8 — 9 are cancelled.
`
`Claim Rejections - 35 USC § 112
`
`4.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—The specification shall contain a written description of the invention, and of
`the manner and process of making and usingit, in suchfull, clear, concise, and exact terms as
`to enable any person skilled in the art to which it pertains, or with which it
`is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor or joint inventor of carrying out the invention.
`
`5.
`
`Claims 1 and 6 — 7 are rejected under 35 U.S.C. 112(a) asfailing to comply with
`
`the written description requirement. The claims contain subject matter which was not
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`describedin the specification in such a way as to reasonably conveyto one skilled in the
`
`relevant art that the inventor or a joint inventor had possession of the claimed invention.
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 3
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`6.
`
`Regarding claim 1, lines 22 — 24, the limitation, “the first hammer having applied
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`the rotation force to the anvil does not move awayfrom the anvil and is still in contact with
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`the anvil’, fails to comply with the written description requirement because the limitation,
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`amendedinto the claims after the filing date of the application, constitutes new matter.
`
`The specification is not explicitly or
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`implicitly describe the limitation.
`
`In fact,
`
`the
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`specification ([0040], Il. 3 — 6) states, “[t]hat is, the clearance 21d is designed so that the
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`sub-hammer 21 can apply the rotation force to the main hammer 20, before the main
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`hammer 20 moves awayfrom the anvil 22” (emphasis added), implying the main hammer
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`20 or first hammer moves awayfrom the anvil after applying the rotation force. Moreover,
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`the specification ([0025] — [0026]) describes that the impact rotary tool comprising a cam
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`structure such that the main hammer 20 moves in a rotation axis direction implying that
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`after the main hammer 20 or first hammer applies the rotation force to the anvil, the main
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`hammer 20 or first hammer moves backward away from the anvil, as shownin fig.
`
`1 of
`
`the drawings. Since the limitation, “the first hammer having applied the rotation force to
`
`the anvil does not move away from the anvil and is still
`
`in contact with the anvil’,
`
`Is
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`amendedinto the claims after the filing date of the application and is not supported by the
`
`specification, the limitation constitutes new matter.
`
`Please note, since claims 6 — 7 depend upon claim 1, claims 6 — 7 are likewise
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`rejected under 35 USC §112(a) for failing to comply with the written description
`
`requirement.
`
`7.
`
`Due to the claims failing to comply with the written description requirement under
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`35 U.S.C. §112(a), the claims will not be analyzed as to whether they are patentable over
`
`

`

`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 4
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`the prior art. Normally a claim which fails to comply with §112(a) will not be analyzed as
`
`to whether it is patentable over the prior art since to do so would of necessity require
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`speculation with regard to the meets and bounds of the claimed subject matter, In re
`
`Steele, 308 F .2d 859, 862-63, 134 USPQ 292, (CCPA 1962) and In re Wilson, 424 F
`
`.2d 1382, 1385, 496 USPQ 494, 496 (CCPA 1970).
`
`Responseto Arguments
`
`8.
`
`Applicant's arguments, filed 27 January 2023, with respect to the rejection of
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`claims 1, 6, and 7 under 35 USC §102(a)(1) and the rejection of claims 2 and 7 under 35
`
`USC §103 have been fully considered but they are moot.
`
`The amendments, filed 27 January 2023, constitute new matter. The specification
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`does not support the limitation, “the first hammer having applied the rotation force to the
`
`anvil does not move awayfrom the anvil andis still in contact with the anvil.” Since the
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`claims fail to comply with §112(a), they will not be analyzed as to whether they are
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`patentable over the prior art since to do so would of necessity require speculation with
`
`regard to the meets and boundsofthe claimed subject matter, In re Steele, 308 F .2d
`
`859, 862-63, 134 USPQ 292, (CCPA 1962) and In re Wilson, 424 F .2d 1382, 1385, 496
`
`USPQ 494, 496 (CCPA 1970).
`
`Conclusion
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`9.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
`
`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`

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`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 5
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`10.
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`A shortened statutory period for reply to this final action is set to expire THREE
`
`
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`MONTHS from the mailing date of this action. In the eventafirst replyis filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until
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`after the end of the THREE-MONTH shortened statutory period, then the shortened
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`statutory period will expire on the date the advisory action is mailed, and any extension
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`fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory
`
`action.
`
`In no event, however, will the statutory period for reply expire later than SIX
`
`MONTHS from the date of this final action.
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`11.=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-
`
`3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday- Friday.
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`12. and_videoExaminer interviews are available via telephone, in-person,
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
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`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)
`
`
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`13.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`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 assignedis 571-273-8300.
`
`14.—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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`Application/Control Number: 17/054,436
`Art Unit: 3731
`
`Page 6
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`center for more information about Patent Center and https://www.uspto.gov/patents/docx
`
`for
`
`information about
`
`filing in DOCX format. For additional questions, contact
`
`the
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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
`15 May 2023
`
`/THOMAS M WITTENSCHLAEGER/
`Examiner, Art Unit 3731
`
`