Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claims 1, 7, 13, 14, and 19 the limitation “wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft” has not been properly described in the application as filed. There is no disclosure of a machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 7, 13, 14, and 19, The limitation ““wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft” is not clear. It is not clear what encompassed by “without requiring machining to form a piston shaft which is hollow”. How is machining defined? Would a hollow piston shaft formed by a casting process read on the limitation? It is also not clear what is encompassed by “without requiring said fluid flow to occur through said piston shaft”. How is “requiring” defined? The limitation does not appear to positively restrict fluid flow through a piston shaft, only that control is achieved without said requirement. It appears claims 1, 7, 13, 14, and 19 would provide clarity by positively reciting a solid piston shaft.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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 made in 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.
Claims 1-19 are rejected under 35 U.S.C. 102a1 as being anticipated by Applicant provided prior art Kayaba Industry (JP-S5540386 A).
Regarding claim 1, Kayaba Industry discloses a bypass port piston (4, figs 5 and 6) comprising: a main damping piston (4), wherein the main damping piston has a plurality of standard ports (11/13), wherein the main damping piston has at least one bypass port (17, figs 5-6); face shims (22) disposed on at least one side of the main damping piston such that fluid flow through the plurality of standard ports (11/13) is restricted (figs 5-6); at least one check spring (16) coupled to the main damping piston; at least one check shim (14) disposed to cover the at least one bypass port (17) and coupled to the at least one check spring (figs 5-6), wherein the at least one check spring (16) keeps the at least one check shim (14) in an open position (fig 5); and a position sensitive spring (15) disposed to close said at least one check shim (14) as the main damping piston is pressed against the position sensitive spring (fig 5 vs fig 6, English abstract), wherein said face shims (22), said at least one check spring (16), said at least one check shim (14) and said position sensitive spring (15) control said fluid flow only through said main damping piston (at least wherein 22/16/14/15 control the fluid flow in through the piston), and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft (Abstract, at least when fluid in the lower chamber flows into the upper chamber 6, when the piston is sunk, through a passage 8 and a damper valve 10. The by-pass 17 is open, when the load is large, as the sleeve 14 is in contact with the undersurface of piston 4 by the action of a spring 15, so that the fluid from the upper chamber 6 flows to the lower chamber 7 through a damper valve 22 set with a high pressure and, on the other hand, the fluid from the lower chamber 7 flows into the upper chamber 6 through an orifice 25.
Regarding claim 2, Kayaba Industry discloses a plurality of springs (at least 21, 16, and 15) of differing spring constants.
Regarding claim 3, Kayaba Industry discloses wherein the at least one check spring (16) with a light spring constant will close (fig 5 vs fig 6) as a result of a pressure differential. It has been interpreted that a valve or opening biased by a spring will inherently open or close as a result of a pressure differential so long as the pressure overcomes that of the spring constant of the spring.
Regarding claim 4, Kayaba Industry discloses whereinat least one of said plurality of check springs (16) with a stiff spring constant will close said at least one bypass port as a result of pressure from the position sensitive spring ( 15, figs 5 vs fig 6).
Regarding claim 5, Kayaba Industry discloses wherein, the face shims (22) restrict fluid flow through the at least one bypass port (17) to a single direction (figs 5, at least when 17 is blocked).
Regarding claim 6, Kayaba Industry discloses wherein, a lift area (17 at or near 14) is disposed at an end of said at least one bypass port where the face shims are disposed (figs 5-6 wherein it has been interpreted that shims 22 are at the end at or near 17/14).
Regarding claim 7, Kayaba Industry discloses wherein a bypass port piston (4, figs 5-6) comprising: a main damping piston (4), wherein the main damping piston has a plurality of standard ports (13), wherein the main damping piston has at least one bypass port (17, English abstract); face shims (22) disposed on at least one side of the main damping piston such that fluid flow through the plurality of standard ports is restricted (figs 5-6); at least one check spring (16) coupled to the main damping piston (figs 5-6), said at least one check spring has a light spring constant and will close as a result of a pressure differential (fig 5 vs fig 6, it has been interpreted that a valve or opening biased by a spring will inherently open or close as a result of a pressure differential so long as the pressure overcomes that of the spring constant of the spring); and at least one check shim (14) disposed to cover the at least one bypass port (17) and coupled to the at least one check spring (figs 5-6), wherein the at least one check spring keeps the at least one check shim in an open position, wherein said face shims (22), said at least one check spring (16), said at least one check shim (14) and said position sensitive spring (15) control said fluid flow only through said main damping piston (at least wherein 22/16/14/15 control the fluid flow in through the piston), and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft (Abstract, at least when fluid in the lower chamber flows into the upper chamber 6, when the piston is sunk, through a passage 8 and a damper valve 10. The by-pass 17 is open, when the load is large, as the sleeve 14 is in contact with the undersurface of piston 4 by the action of a spring 15, so that the fluid from the upper chamber 6 flows to the lower chamber 7 through a damper valve 22 set with a high pressure and, on the other hand, the fluid from the lower chamber 7 flows into the upper chamber 6 through an orifice 25.
Regarding claim 8, Kayaba Industry discloses a plurality springs (at least 21, 16, and 15) of differing spring constants.
Regarding claim 9, Kayaba Industry discloses a position sensitive spring (15) disposed to close said at least one check shim as the main damping piston is pressed against the position sensitive spring (figs 5-6).
Regarding claim 10, Kayaba Industry discloses wherein at least one of said plurality of check springs (16) has a stiff spring constant will close said at least one bypass port as a result of pressure from the position sensitive spring ( 15, figs 5 vs fig 6).
Regarding claim 11, Kayaba Industry discloses wherein, the face shims (22) restrict fluid flow through the at least one bypass port (17) to a single direction (figs 5, at least when 17 is blocked).
Regarding claim 12, Kayaba Industry discloses wherein, a lift area (17 at or near 14) is disposed at an end of said at least one bypass port where the face shims are disposed (figs 5-6 wherein it has been interpreted that shims 22 are at the end at or near 17/14).
Regarding claim 13, Kayaba Industry discloses a main damping piston (4), wherein the main damping piston has a plurality of standard ports (13), wherein the main damping piston has at least one bypass port (17); face shims (22) disposed on at least one side of the main damping piston such that fluid flow through the plurality of standard ports is restricted (figs 5-6); at least one position sensitive spring (15); at least one ring (14a) coupled to the position sensitive spring disposed to restrict bypass ports as the main damping piston is pressed against the ring (fig 5), wherein said face shims (22), said at least one check spring (16), said at least one check shim (14) and said position sensitive spring (15) control said fluid flow only through said main damping piston (at least wherein 22/16/14/15 control the fluid flow in through the piston), and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft (Abstract, at least when fluid in the lower chamber flows into the upper chamber 6, when the piston is sunk, through a passage 8 and a damper valve 10. The by-pass 17 is open, when the load is large, as the sleeve 14 is in contact with the undersurface of piston 4 by the action of a spring 15, so that the fluid from the upper chamber 6 flows to the lower chamber 7 through a damper valve 22 set with a high pressure and, on the other hand, the fluid from the lower chamber 7 flows into the upper chamber 6 through an orifice 25.
Regarding claim 14, Kayaba Industry discloses a shock absorber (fig 1) comprising: a cylinder (1), the cylinder comprising a cylinder inner diameter; a rod (6); a main damping piston (4), the main damping piston coupled to the rod and configured for operation within the cylinder (fig 1), the main damping piston configured to divide the cylinder into a compression chamber and a rebound chamber (6/7 figs 1, 5, and 6), wherein the main damping piston has a plurality of standard ports (13), wherein the main damping piston has at least one bypass port (17); face shims (22) disposed on at least one side of the main damping piston such that fluid flow through the plurality of standard ports is restricted (figs 5-6); at least one check spring (16) coupled to the main damping piston, wherein said at least one check spring has a light spring constant and will close said at least one bypass port as a result of a pressure differential (fig 5 vs fig 6, it has been interpreted that a valve or opening biased by a spring will inherently open or close as a result of a pressure differential so long as the pressure overcomes that of the spring constant of the spring); at least one check shim (14) disposed to cover the at least one bypass port (17) and coupled to the at least one check spring (16), wherein the at least one check spring keeps the at least one check shim in an open position (fig 6); and a position sensitive spring (15) disposed to close said at least one check shim as the main damping piston is pressed against the position sensitive spring (fig 5 vs fig 6, English abstract), wherein said face shims (22), said at least one check spring (16), said at least one check shim (14) and said position sensitive spring (15) control said fluid flow only through said main damping piston (at least wherein 22/16/14/15 control the fluid flow in through the piston), and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft (Abstract, at least when fluid in the lower chamber flows into the upper chamber 6, when the piston is sunk, through a passage 8 and a damper valve 10. The by-pass 17 is open, when the load is large, as the sleeve 14 is in contact with the undersurface of piston 4 by the action of a spring 15, so that the fluid from the upper chamber 6 flows to the lower chamber 7 through a damper valve 22 set with a high pressure and, on the other hand, the fluid from the lower chamber 7 flows into the upper chamber 6 through an orifice 25.
Regarding claim 15, Kayaba Industry discloses a plurality of springs (at least 21, 16, and 15) of differing spring constants.
Regarding claim 16, Kayaba Industry discloses wherein at least one of said plurality of check springs (16) has a stiff spring constant will close as a result of pressure from the position sensitive spring ( 15, figs 5 vs fig 6).
Regarding claim 17, Kayaba Industry discloses wherein, the face shims (22) restrict fluid flow through the at least one bypass port (17) to a single direction (figs 5, at least when 17 is blocked).
Regarding claim 18, Kayaba Industry discloses wherein, a lift area (17 at or near 14) is disposed at an end of said at least one bypass port where the face shims are disposed (figs 5-6 wherein it has been interpreted that shims 22 are at the end at or near 17/14).
Regarding claim 19, Kayaba Industry discloses a bypass port piston (4, figs 5-6) comprising: a main damping piston (4), wherein the main damping piston has a plurality of standard ports (13), wherein the main damping piston has at least one bypass port (17); face shims (22) disposed on at least one side of the main damping piston such that fluid flow through the plurality of standard ports is restricted (figs 5-6); at least one check shim (14) disposed to cover the at least one bypass port (17), said at least one check shim, and coupled to the main damping piston (4), wherein the at least one check shim (14) is in an open position; and a position sensitive spring (15) disposed to close said at least one check shim as the main damping piston is pressed against the position sensitive spring (fig 5), wherein said face shims (22), said at least one check spring (16), said at least one check shim (14) and said position sensitive spring (15) control said fluid flow only through said main damping piston (at least wherein 22/16/14/15 control the fluid flow in through the piston), and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft (Abstract, at least when fluid in the lower chamber flows into the upper chamber 6, when the piston is sunk, through a passage 8 and a damper valve 10. The by-pass 17 is open, when the load is large, as the sleeve 14 is in contact with the undersurface of piston 4 by the action of a spring 15, so that the fluid from the upper chamber 6 flows to the lower chamber 7 through a damper valve 22 set with a high pressure and, on the other hand, the fluid from the lower chamber 7 flows into the upper chamber 6 through an orifice 25.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive. Applicant has argued that the prior art of record lacks “wherein said face shims, said at least one check spring, said at least one check shim and said position sensitive spring control said fluid flow only through said main damping piston, and wherein said control of said fluid flow is achieved without requiring machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft”, Examiner respectfully disagrees. It appears that the amendments to at least claims 1, 7, 13, 14, and 19 have raised the issue of new matter. There is no disclosure of a machining to form a piston shaft which is hollow, and without requiring said fluid flow to occur through said piston shaft. As set forth above, the amendments also appear to raise 112 2nd paragraph issues as well. Examiner has maintained the position that Kayaba Industry (JP-S5540386 A) anticipates the subject matter of claims 1-19.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES K HSIAO whose telephone number is (571)272-6259. The examiner can normally be reached 9-5, Monday-Friday.
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/J.K.H/Examiner, Art Unit 3616
/Robert A. Siconolfi/Supervisory Patent Examiner, Art Unit 3616
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