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 .
Continued Examination Under 37 CFR 1.114
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 application is 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 7, 2025 has been entered.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,869,360 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The March 22, 2023 consent form does not establish that Justin Smith is authorized to act on behalf of Shock Therapy Suspension (the title Manager is not seen to have apparent authority). Applicant should submit a new consent or state that Justin Smith has such authority with the response to this Office action.
The error statement of the March 22, 2023 declaration, “Applicant seeks to broaden claim 1”, is not sufficient. For a broadening reissue it is required to state at least one claim that is being broadened as well as claim language that is not seen as necessary for patentability.
Claims 1-3,5 and 6 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
It is noted that the claims are currently not patentably distinct to the claims that were rejected and the rejection affirmed by the PTAB in parent application 16/001,546. The following rejections were copied from the February 22, 2021 final rejection in the ‘546 application and amended in regard to the phrase added in the July 7, 2025 amendment. Applicant is precluded from seeking a claim that is not patentably distinct from a claim that was finally refused by the PTAB under the doctrine of res judicata. See MPEP 2190 (II). Amending claim 1 to add the spring divider is in direct contact with the first and second spring is not seen to patentably distinguish the current claims from those decided by the PTAB.
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.
Claims 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over FOA Coilover Reservoir Shocks – Surprisingly Economical, by Christian Lee, (hereinafter “FOA”) in view of US Patent No. 3,951,391 to Papousek (hereinafter “Papousek”).
FOA discloses a multi-piece nut (the stop ring with screw) and coil over shock (the figure on the first page). The reference further shows a nut member having inner threads, a first spring and a second spring. The nut member is shown with an aperture when coupled around a shock with a connector. The shock is shown extending through the aperture of the nut and engaging the inner threads of the nut. The figures show a first spring (the upper coil spring) and a second spring (the lower coil spring) coupled around the shock with the first spring coupled around the nut member. The springs are separated with a spring divider which contacts the nut member to change the spring rate of the apparatus, seen on the first figure. This spring divider ensures that the spring does not directly contact the nut members. FOA does not disclose a second nut member having inner threads such that the first and second inner threads correspond when the first and second nut members are coupled together, forming an aperture that is coupled around a shock. Papousek discloses in figure 7 a multi-piece nut with a first nut member 20 which is coupled to second nut member 21, each with inner thread 40. Connector 24 is used to fasten (removably couple) the nut members (20 and 21) together around shock 10 within shock spring 15. Papousek states in lines 40-43 of column 5 that the clamping member formed by the nut members may be moved along housing 10 to adjust the tension of spring 15. It is considered obvious that such a two part connector could be coupled to the shock without disassembling the shock. The picture on page 2 shows two springs around the cylinder of a shock absorber with a spring divider in contact with the upper and lower springs. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Papousek to modify the adjustable multiple spring shock disclosed in FOA by using a multi-piece nut to make an adjustment device that can quickly be attached, but forms a tight hold that can easily be adjusted. In regard to claim 2, Papousek’s connector 24 removably couples the first and second nut members (20 and 21). In regard to claims 3 and 6, both references teach nuts that are connected to threads on the outer surface of the shock so the nuts can be turned to change the position of the nut to adjust the tension in springs and FOA adjusts the relative distance of the two springs to adjust the overall compression required to move the shock assembly.
Claims 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bill Ansell, “The Coilover Bible –Part 1” 2008, Pirate4X4.com (http://www.pirate4x4.com:80/tech/billavista/coilovers/Part_1/>, (hereinafter “Pirate 4x4”) in view of Papousek.
Pirate 4x4 discloses a combination multi-piece nut (a stop ring with a grub screw) and coil spring over shock on pages 12 and 15. The figure on page 15 shows the stop ring and the threads on the cylinder it travels on. The figure on page 13 labels the upper coil spring and the lower coil spring. The slider is shown with an axially extended ring portion to contact the upper and lower rings. The description of the bottom figure on page 15 states that the slider moves with the springs until it hits the stop ring to become the upper spring seat. The second figure on page 15 shows the nut (stop ring) coupled around a shock using a grub screw as well as threads on the outer surface of the cylinder and states, “In addition to allowing adjustability of the top spring seat, the threaded portion of the cylinder also allows the position of the stop ring to be adjusted.” The figure on page 13 shows the stop ring and a dual rate slider (spring divider) around the cylinder with an upper and lower spring separated by the slider and the upper spring coupled around the nut member. On page 15, Pirate 4x4 states (at the bottom figure), “The dual-rate slider “floats” on the body of the shock. It is positioned between the main and tender springs. As the springs compress and rebound, the dual rate slider slides up and down the cylinder. When the springs compress far enough, the dual rate slider slides up until it hits the stop ring and is prevented from sliding further. At this point, the dual rate slider effectively becomes the upper spring seat, locking out the tender spring as ensuring that the spring and the stop ring do not directly contact each other. At this point, remaining spring/shock travel occurs at the rate of main spring alone.” As discussed above, Pirate 4x4 discloses a combination multi-piece nut (a stop ring with a grub screw) and coil spring over shock on pages 12 and 15. Pirate 4x4 does not disclose a second nut member having inner threads such that the first and second inner threads correspond when the first and second nut members are coupled together, forming an aperture that is coupled around a shock. Papousek discloses in figure 7 a multi-piece nut with a first nut member 20 which is coupled to second nut member 21, each with inner thread 40. Connector 24 is used to fasten the nut members (20 and 21) together around shock 10 within shock spring 15. Papousek states in lines 40-43 of column 5 that the clamping member formed by the nut members may be moved along housing 10 to adjust the tension of spring 15. It is considered obvious that such a two part connector could be coupled to the shock without disassembling the shock. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Papousek to modify the adjustable multiple spring shock disclosed in Pirate 4x4 by using a multi-piece nut to make an adjustment device that can quickly be attached, but forms a tight hold that can easily be adjusted. In regard to claim 2, Papousek’s connector 24 removably couples the first and second nut members (20 and 21). In regard to claims 3 and 6, both references teach nuts that are connected to threads on the outer surface of the shock so the nuts can be turned to change the position of the nut to adjust the tension in springs and Pirate 4x4 adjusts the relative distance of the two springs to adjust the overall compression required to move the shock assembly.
Claims 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over the ATV Podium X Owner’s Manual by Fox Racing Shox (2009), (hereinafter “Fox”) in view of Papousek.
Fox discloses a combination multi-piece nut and coil spring over shock shown first on page III. Fox discloses a crossover ring (a nut) having inner threads (page 4). The shock spring comprises a first spring (the tender coil spring) and a second spring (the main coil spring). The crossover ring has an aperture which is coupled around the shock using a set-screw. Fox shows the tender coil spring coupled around the nut member (page III) with a spring divider (the spring coupler) separating the tender coil spring from the main coil spring. The crossover ring is adjusted in step 6 on page 14. This is seen to be done with threads. The spring coupler contacts the crossover ring to stop the compression of one of the springs to control the compression of the assembly. The figure on page 18 shows the crossover ring of Fox in contact with the upper and lower springs. Fox does not disclose a second nut member having inner threads such that the first and second inner threads correspond when the first and second nut members are coupled together, forming an aperture that is coupled around a shock. Papousek discloses in figure 7 a multi-piece nut with a first nut member 20 which is coupled to second nut member 21, each with inner thread 40. Connector 24 is used to fasten the nut members (20 and 21) together around shock 10 within shock spring 15. Papousek states in lines 40-43 of column 5 that the clamping member formed by the nut members may be moved along housing 10 to adjust the tension of spring 15. It is considered obvious that such a two part connector could be coupled to the shock without disassembling the shock. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Papousek to modify the adjustable multiple spring shock disclosed in Fox by using a multi-piece nut to make an adjustment device that can quickly be attached, but forms a tight hold that can easily be adjusted. In regard to claim 2, Papousek’s connector 24 removably couples the first and second nut members (20 and 21). In regard to claims 3 and 6, both references teach nuts that are connected to threads on the outer surface of the shock so the nuts can be turned to change the position of the nut to adjust the tension in springs and Fox adjusts the relative distance of the two springs to adjust the overall compression required to move the shock assembly.
Response to Arguments
Applicant's arguments filed July 7, 2025 have been fully considered but they are not persuasive. Applicant is wasting the time and resources of the Office. No attempt was made to correct the ADS or the declaration. While claim 1 was amended to claim that the spring divider is in direct contact with the first spring and the second spring, the pictures of each of the base references clearly show spring dividers that contact both springs. None of the arguments presented pertain to any language of the claims that was not part of the claims when the PTAB decision affirmed the rejections of any of the three base references in view of Papousek. Applicant restates arguments that the PTAB has already found lacking in the April 15, 2022 decision in parent application 16/001,546. See MPEP 2190 (II) dealing with res judicata barring the prosecution of claims that have been found unpatentable by the PTAB.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached on M-F, 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle, can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993