DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 20(13), is being examined under the first inventor to file provisions of the AIA .
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 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 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Machida (JP H08-4818 A) (cited on the IDS of 1/26/2023).
Regarding claim 1, Machida discloses (figs. 1 and 3) A damping valve (1) comprising:
a disk (3) with a port (one of 6, 7) and a valve seat (one of 8, 10) surrounding the port;
a leaf valve (one of 9,11) that opens and closes the port by causing a front side (e.g. down in fig. 1) to sit on and leave the valve seat;
a tubular housing (one of 14,15) provided on a back side (up in fig. 1) of the leaf valve;
an annular spool (one of 16,17) that abuts on the back side of the leaf valve and is slidably inserted into inner circumference of the housing (as shown) to form a back pressure chamber (one of 20,21) that causes back pressure to act on the leaf valve inwardly together with the housing;
an annular spring support portion (area of radially extending wall of 14,15 that contacts 18,19) that is located on the back side of the leaf valve (as shown), faces inside of the back pressure chamber (as shown), and has a smaller outer diameter than an inner diameter of the spool (as shown, contact area with spring 18,19 has a smaller diameter than the inner diameter of 16,17)); and
an annular leaf spring (one of 18,19) that is interposed between one end of the spool that is an opposite side end of the leaf valve (as shown, radially outer side) and the spring support portion (as shown, radially inner side), and presses the spool in a direction of abutting on the leaf valve (“Seal member 16 and 17 are constantly pressed against the disk valves 9 and 11 by the springs 18 and 19”).
wherein, an inner circumferential end of the leaf spring abuts only on the spring support portion (as shown, e.g., the bottom side of spring 18 only contacts the spring support portion as identified above, at least, and not the retainer (12) due to the shown gap), and
the inner circumferential end of the leaf spring is not fixedly supported by the spring support portion (as shown, spring 18 is provided by itself without other means to fixedly support it on the spring support portion).
Regarding claim 5, Machida discloses (figs. 1 and 3) a pilot passage (one of 25, 26) that causes inside of the back pressure chamber to communicate with an upstream side of the port (via 32, 6 and 7 at least), and a control valve (32) that controls pressure in the back pressure chamber.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Machida (JP H08-4818 A) in view of Naito et al. (JP 2010-15(12)72 A) (cited on the IDS of 1/26/2023).
Regarding claim 3, Machida discloses (figs. 1 and 3) first-end outer circumferential portion (portion that abuts the leaf spring) that is an outer circumferential portion of the one end (as shown, at the end, it is the “outer circumferential portion), and the leaf spring abuts on the spool only at the first-end outer circumferential portion (as shown, the leaf spring doesn’t abut 16,17 anywhere else other than the end). However, Machida does not appear to disclose the spool including a tapered portion inside this first end outer circumferential portion. In the field of endeavor, Naito teaches (fig. 9) an equivalent spool (67) interposed between a leaf spring (66A) and leaf valve (60), where the spool includes a tapered portion (as shown) inside (i.e. axially further away from the end contacting the leaf spring) the first-end outer circumferential portion
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have tapered the spool of Machida as suggested by Naito to maximize the pressure exerted by the leaf spring on the spool, as well as to reduce the weight of the spool to at least some extent. The taper effectively reduces the pressing area of the leaf spring, and for a given unit of force, if the area is decreased, then the exerted pressure increases. As such, the modification is an optimization of the device of Machida.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Machida (JP H08-4818 A) in view of Gomi et al. (WO 2018/155293 A1). (cited on the IDS of 1/26/2023).
Regarding claim 4, Machida discloses (figs. 1 and 3) the spool having a second-end outer circumferential portion (portion contacting 9,11) that is an outer circumferential portion at a second-end that is a leaf valve side end (as shown, at the end, it is the “outer circumferential portion”), and the leaf valve abuts only on the second-end outer circumferential portion of the spool (as shown, the leaf valve doesn’t abut 16,17 anywhere else other than the end). However, Machida does not appear to disclose the spool including a tapered portion inside this second end outer circumferential portion. In the same field of endeavor, Gomi teaches (fig. 3) an equivalent spool (Sp) pressing on a leave valve (Vp), the spool having a tapered portion (near 18) inside (i.e. further away from the axial end, as well as radially within) the second end-outer circumferential portion.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have tapered the spool of Machida as suggested by Gomi to maximize the pressure exerted by the spool on the leaf valve, as well as to reduce the weight of the spool to at least some extent. The taper effectively reduces the pressing area of the spool, and for a given unit of force, if the area is decreased, then the exerted pressure increases. Such a modification also maximizes the volume in the chamber that would otherwise be taken up by the physical space of the spool. As such, the modification is an optimization of the device of Machida.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP 2010-025186 A) (cited on the IDS of 1/26/2023) in view of Machida (JP H08-4818 A).
Regarding claim 6, Kobayashi discloses (fig. 1) A shock absorber comprising: a cylinder (10); a piston (11) that is movably inserted into the cylinder and divides the cylinder into an extension side chamber (R1) and a compression side chamber (R2) filled with liquid (“The rod side chamber R1, the piston side chamber R2, and the reservoir R are filled with fluid such as hydraulic oil.”); a rod (12) connected to the piston; a reservoir (R) that stores the liquid; a rectifying passage (17) that allows only a flow of the liquid from the compression side chamber to the extension side chamber (via check valve); a suction passage (16) that allows only a flow of the liquid from the reservoir to the compression side chamber (via check valve); a discharge passage (15) that causes the extension side chamber to communicate with the reservoir; and a damping valve (V3) that is provided in the discharge passage with the extension side chamber as upstream of the port and the reservoir as downstream of the port (as shown).
Kobayashi does not appear to disclose the damping valve having all the structure of the damping valve according to claim 1. Nevertheless, Machida disclose the damping valve of claim 1 (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the damping valve of Machida within the shock absorber construction of Kobayashi to control the damping force regardless of piston speed, thereby reducing controller load (pgh. 0043 of translation, provided in IDS of 1/26/2023).
Allowable Subject Matter
Claims 2 and 7-11 are allowable.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § (13)02.14.
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive.
The primary question is whether Machida discloses the following limitations of claim 1:
“wherein, an inner circumferential end of the leaf spring abuts only on the spring support portion, and
the inner circumferential end of the leaf spring is not fixedly supported by the spring support portion.”
For reference, the enlarged figure of Machida is provided. Response to arguments begins on the following page.
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Applicant contends on page 6 of the remarks that the retainer (12) of Machida contacts the spring (18) at its radial inner end because the passage (12a) is formed by a pair of notches, citing to paragraph 0037, reproduced below, thus Machida would allegedly not disclose “an inner circumferential end of the leaf spring abuts only on the spring support portion” as claimed. Applicant further attempts to describe this construction with a figure at the top of page 7 of the remarks.
[0037]The valve member 50 is provided with a back pressure passage 51 which communicates with the extension-side back pressure chamber 20 and the contraction-side back pressure chamber 21 via passages 12 a and 13 a provided in the retainer 12,13. The back pressure passage 51 communicates with the chamber 2 a via an orifice 52, and the chamber 48 a communicates with the cylinder lower chamber 48 b via a check valve 53 which permits only the flow of the oil from the cylinder lower chamber 2 b toward the chamber 48 a. Orifice 54
Through the chamber 49 a, the chamber 49 a is communicated with the cylinder upper chamber 2 a via a check valve 55 which allows only the circulation of the oil from the cylinder upper chamber 49 a toward the chamber 2 a.
First, as can be seen from pgh. 0037 above, the passages (12a) are not described as being formed as “notches”. Further, it is noted that Applicant’s figure does not appear within Machida.
Second, it is noted that a “passage” need not be located only at 1 or 2 circumferential locations and not others, as Applicant contends. In other words, there is no disclosure within Machida that precludes other constructions of the passage, such as an annular passage, which would carry out the same purposes as the purported “notches”.
Third, paragraph 0037 above refers to two retainers (12,13), and refers to two “passages”, (12a, 13a). Accordingly, there is one passage for each retainer, respectively. However, the passage (12a) is visible on either side of the cross section above. Based on this evidence, it is believed the passage (12a) is a singular annular passage. Further, an annular passage would arguably provide multiple benefits. For example, an annular passage would provide even pressure communication circumferentially between the chamber (20) and the chamber/channel (26). Additionally, an annular passage would be easier to assemble. Supposing the retainer (12) has 2 notches as Applicant alleges, the retainer would have to be aligned circumferentially with the radial portion of the passage (26) during assembly, else it would block the passage. This concern is alleviated with an annular passage.
Applicant contends at the top of page 7 that if the circled portion of Machida (in the annotated figure above) is a (annular) gap, then the retainer (12) will be attached to the outer circumference of the rod (24) in a state of being movable in an axial direction, thus the retainer can move downward and close the opening of the passage (26) and cannot support the inner circumference of the disc valve (9) together with the piston (3). It is agreed that if the retainer (12) could move, this discussion would accurately describe what would happen. However, this is the reason why the retainer (12) does not move, since the purpose of the retainer (12) is to apply pressure to the leaf valve (9) such that the inner end of the leaf valve (9) bears against the radially inner spring seat 8. See paragraph 0018 of Machida. Accordingly, the retainer must appropriately function to “retain” the disc valve (9) against the inner spring seat. This can be done in numerous ways, such as by a press fit connection, but regardless the retainer cannot move relative to the disc valve. Additionally, lack of motion of the retainer (12) does not necessitate the retainer having notches in lieu of an annular passage.
Applicant contends at the bottom of page 7 and the top of page 8 that the cases (14/15) are provided on the back side of the valves (9/11) “via the annular retainers (12) and (13)”, and therefore the retainers determine the arrangement of the case (14) while abutting on the disc valve, and thus the retainers cannot move. It is agreed that the retainer (12) cannot move, as discussed above. However, mounting of the case at the back side of the valve “via” the retainer may simply describe that the cases (14/15) are not provided directly on the back side of the valves (9/11), and instead the retainer and spring has to be placed in between these elements first (i.e. “via”). It is unclear what further distinction is otherwise attempting to be drawn here.
Applicant contends on page 8 paragraph 2 to the top of page 9 that paragraph 0019 describes how the various elements are mounted together and threadedly attached by the nut (25), and accordingly this necessarily means that the springs (18/19) are restricted from moving by all other named components in all directions, which would necessarily include the retainers (12/13), thus there is no gap between the retainer (12) and the spring (18), and thus the retainers sandwich the spring between the case and themselves. First, paragraph 0019 describes how the passage member (22) is connected to the piston (3) via the named components, rather than talking about whether or not the retainers (12/13) are contacting/sandwiching the springs (18/19), so this discussion does not appear to be relevant to the instant issue of whether or not the retainer (12) contacts the spring (18). Notably such a discussion about whether the spring is contacting the retainer is absent from pgh. 0019. As to whether or not this discussion indirectly implies contact, the passage member (22) could be connected to the piston in a non-fixed manner (e.g. axially movable) via the springs.
In sum, based on the totality of evidence present in Machida, the retainers (12/13) do not contact their respective springs (18/19). The specification discusses a single passage provided to each retainer respectively (see pgh. 0037 at least). The figures show hatching for the retainer (12) that ends above the location of the spring, and additionally show the passage on either side of the passage member (22), thus implying a single passage that extends annularly around the passage member (22). This construction would also ease in assembly of the retainer on the passage member (see discussion above). Additionally, nowhere does Machida otherwise disclose that the retainer sandwich, press against, or otherwise contact the spring. Rather, the retainer (12) is described as pressing against the respective disc valve (9) (see e.g. pgh. 0018), which is pressing in the opposite direction from the spring (18). Accordingly, Machida anticipates “the inner circumferential end of the leaf spring abuts only on the spring support portion, and the inner circumferential end of the leaf spring is not fixedly supported by the spring support portion” (as mapped above), as required by claim 1.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.(13)6(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.(13)6(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 DAVID MORRIS whose telephone number is (571)270-3595. The examiner can normally be reached Monday thru Friday; 8:30 AM - 5:00 PM.
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/DAVID R MORRIS/Primary Examiner, Art Unit 3616
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