DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Species A – Figures 2A-3B, 4A, 4B in the reply filed on 1/20/26 is acknowledged.
Claims 9,10,19-36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/20/26.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “compression side” of the damping housing and the “rebound side” of the damping housing, as claimed in claims 1,11, the “end zone flow”, as claimed in claims 2 and 12 must be shown and numerically identified or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 2,12 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.
Claims 2,12 it is not clear from the specification and drawings what applicants mean by the limitation of “end zone flow”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3,6,16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Awano WO 2020/179676 (for which Awano U.S. 12,173,774 is relied upon for a translation).
Regarding claims 1,11 as broadly claimed, WO ‘676 (Awano) shows in figure 4 (turn upside-down and oriented as per applicant’s figure 2B):
A valve assembly for a shock assembly, said valve assembly comprising: a first valve VR disposed along a compression bypass flow path 3a extending between a compression side La of a damping housing 1R and a rebound side Lb of said damping housing, said first valve VR configured to control flow of fluid from at least one bypass valve 50a of said compression side La of said damping housing into said rebound side Lb of said damping housing.
Re- claim 11 note specifically the piston 21 and the fluid reservoir at 16R.
Regarding claims 2,12 subject to the drawing and 112 1st objections/rejection above (and as best understood) these limitations are capable of being met.
Regarding claims 3,13 Awano shows a second valve 41 disposed along a rebound flow path 4b – (connecting to flow path extending to chamber La) extending between said rebound side Lb of said damping housing and said compression side La of said damping housing 1R, said second valve 41 configured to (i.e. capable of) control flow of fluid from said rebound side Lb of said damping housing into said compression side La of said damping housing.
Regarding claims 6,16 Awano states at the top of col 11:
“… manual valve 41 (i.e. second valve) [is] capable of changing the opening area of a discharge passage 4b for communicating the compression side chamber Lb and the liquid storage chamber RR by manual operation…”.
Therefore the limitation that the “.. second valve is adjustable..” is considered to be met, as broadly claimed.
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.
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(s) 7,17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO ‘676 (Awano) in view of Shimauchi et al. WO 2020/179683 (for which U.S. PAT 11,879,517 to Shimauchi et al. is relied upon for a translation).
Regarding claims 7,17 Awano lacks specifically showing a ‘non-static’ valve -- however as broadly claimed – second valve 41 may be considered as such.
Nevertheless the Shimauchi indicates in col 19 lines 5-26 the solenoid valve V as shown in figure 3 is adjustable.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have used an electrically adjustable valve for either of the first or second valves VR and/or 41 for more precise control over the damping characteristics of the shock absorber as the vehicle travels over the road.
Claim(s) 8,18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO ‘676 (Awano) in view of Spyche 9,1333,902.
Regarding claims 8,18 Awano lacks specifically showing a plurality of ‘bypass valves’ (described as holes 112 in applicants specification).
However the reference to Spyche discloses such ‘bypass valves’, as broadly claimed in the several different embodiments at 145, 320,420 in the several different embodiments.
It would have been obvious to have provided such ‘bypass valves’ (as broadly claimed) in the wall of the housing 1R in Awano, as taught by Spyche, and to better compensate for changes in conditions of operation, including variations in load and impact velocity over the terrain of the vehicle.
Allowable Subject Matter
Claims 4,5,14,15 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER P SCHWARTZ whose telephone number is (571)272-7123. The examiner can normally be reached 10:00 A.M.-7:00P.M..
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/CHRISTOPHER P SCHWARTZ/Primary Examiner, Art Unit 3616
3/18/26