DETAILED ACTION
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 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.
Claim 3 is 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.
Re: claim 3. The phrase “the elongate piston” lacks proper antecedent basis in the claim.
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for 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 before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, 9, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO-2015105791 (WO’791) in view of US Patent Application to 2018/0355944 to Veltrum.
Re: claim 1. WO’791 shows in figures 2A and 2B a piston, as labeled and particularly shown within the drawn oval, that is configured to move longitudinally within a damper tube, as labeled, and element 150 wherein a radially outermost portion of the piston is configured to be spaced radially apart from an inner wall of the damper tube such that fluid can flow between the piston and the inner wall of the damper tube outside of an end-of-stroke damping event as shown; a valve disc stack-up or the shown valve assembly shown at element 105 disposed longitudinally alongside the piston; and a catch piston 130, 140 with which the piston is configured to engage during the end-of- stroke damping event, the catch piston 130, 140 being configured to be disposed on the inner wall of the damper tube in a longitudinally movable manner, wherein the piston and the catch piston are configured such that as a contact surface of the piston approaches a contact surface of the catch piston during the end-of-stroke damping event, a pocket shown in the area near the base of the fluid flow arrows for fluid is formed longitudinally and radially between the piston and the catch piston,
[AltContent: arrow][AltContent: oval][AltContent: textbox (Damper tube )][AltContent: arrow][AltContent: textbox (Piston )][AltContent: arrow]
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but is silent with regard to the fluid being hydraulic.
Veltum et al. teach in the first line of the abstract the use of a damper in which the fluid used is hydraulic to result in hydraulic damping.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the fluid of the assembly of WO'791 to have been hydraulic, in view of the teachings of Veltum et al., in order to provide a fluid that achieves higher damping forces, fine tuning and adjustability, and better performance at low speeds.
Re: claim 2. WO’791, as modified, teaches in figures 2A and 2B of WO’791 comprising a piston band shown at the end of the arrow of the piston label on pg. 3 of the instant Office action that is disposed on the piston and at least partially surrounds the piston, wherein the piston band is configured to engage a sidewall i.e. the top of the inclined sidewall of the catch piston during the end-of-stroke damping event as shown.
Re: claim 9. WO’791 shows in figures 2A and 2B an end-stop control valve comprising: a piston, as labeled and particularly shown within the drawn oval, that is configured to move longitudinally within a damper tube, as labeled, and element 150, wherein an entirety of the piston is radially spaced apart from an inner wall of the damper tube such that fluid can flow around the piston when the piston is not engaged with a catch piston 130, 140, the piston including: passages or the openings in which are drawn the flow arrows that extend from a first or bottom longitudinal side of the piston to a second or upper longitudinal side of the piston, and a valve seat or surface shown below the valve portion of the valve assembly at 105 disposed at the second or upper longitudinal side of the piston; a valve disc stack-up or valve assembly of element 105 that covers the passages at the second longitudinal side of the piston, wherein a radially outer portion of the valve disc stack-up is supported on the valve seat of the piston as shown; the catch piston 130, 140 with which the piston is configured to engage during an end-of-stroke damping event, the catch piston being movable longitudinally within the damper tube and being disposed on the inner wall of the damper tube as shown; a piston band shown at the end of the lead line of 105 in figure 2A that is disposed on the piston and at least partially surrounds the piston as shown, wherein the piston band is configured to engage the catch piston during the end-of-stroke damping event as shown in figure 2B, wherein the piston and the catch piston are configured such that prior to engagement of a contact surface of the piston with a contact surface of the catch piston during the end-of-stroke damping event, a pocket for hydraulic fluid that extends annularly is formed longitudinally between the contact surface of the piston and the contact surface of the catch piston and radially between a first segment of the piston and a sidewall of the catch piston as shown below,
[AltContent: textbox (Portion of figure 2B of WO’791)]
[AltContent: arrow][AltContent: textbox (Sidewall of catch piston )][AltContent: arrow][AltContent: textbox (First segment of piston )][AltContent: arrow][AltContent: textbox (Radially between first segment of piston and a sidewall of catch piston prior to the touching of the contact surfaces)][AltContent: arrow][AltContent: arrow]
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[AltContent: textbox (Pocket )]
but is silent with regard to the fluid being hydraulic.
Veltum et al. teach in the first line of the abstract the use of a damper in which the fluid used is hydraulic to result in hydraulic damping.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the fluid of the assembly of WO'791 to have been hydraulic, in view of the teachings of Veltum et al., in order to provide a fluid that achieves higher damping forces, fine tuning and adjustability, and better performance at low speeds.
Re: claim 13. WO’791, as modified, teaches in figures 2A and 2B of WO’791 wherein while the contact surface of the piston is engaged with the contact surface of the catch piston the only way for hydraulic fluid to pass from the first longitudinal side of the piston to the second longitudinal side of the piston is to travel through the passages of the piston and between the valve seat of the piston and the valve disc stack-up, which is deflected away from the valve seat as shown in figure 2B of WO’791.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/991003 and 17/952989 in view of WO'791.
Claim 1 of the instant invention and applications 17/991003 and 17/952989 recite an end stop control valve comprising a piston, a valve disc stack up, and a catch piston.
With respect to the detailed limitations in 17/991003 and 17/952989, Examiner notes that in In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993), the court held that for the purposes of obvious double patenting a later genus (broad) claim is not patentable over an earlier species (narrow) claim.
With regard to the pocket limitation, Examiner notes that WO’791 teaches in figures 2A and 2B the use of a pocket as recited as labeled in the annotated figures in the instant Office action (pg. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the end stop control valve of 17/991003 and 17/952989 to have included a pocket as recited, in view of the teachings of WO’791, in order to provide an available body of fluid to provide immediate damping capacity to result in cushioned stoke movements which may be used to prevent unwanted damage between moving parts.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 4-8, 10-12, and 14-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 17-20 are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN-108757811, 2018/0223942, and 2021/0115998 teach the use of similar dampers including a stroke stage in which a piston portion enters a catch piston portion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELODY M BURCH whose telephone number is (571)272-7114. The examiner can normally be reached Monday - Friday 6:30AM-3PM, generally.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Mmb
December 27, 2025
/MELODY M BURCH/Primary Examiner, Art Unit 3616