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 .
Status of the Claims
Applicant’s response filed April 21, 2026 (hereinafter Response) has been entered. Claims 1, 2, and 4 have been amended. Claims 6 – 10 have been cancelled.
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, 2, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coaplen et al (US 2018/0043960 A1), hereinafter Coaplen.
Regarding claim 1, Coaplen discloses a headset (16, Fig. 1 and para 0029) of a bicycle (para 0001 discloses the use of headsets with bicycles), comprising:
a bearing base (30, Fig. 1, described by Coaplen as a “coupling ring” in para 0029) adapted to be sleeved on a fork tube (Fig. 1 and para 0029 disclose the bearing base sleeved on a fork or “steerer” tube 14; para 0024: “steerer tube 14 …of a fork”);
a bearing cup (60, Fig. 1) adapted to be abutted against an end (24, Fig. 1), close to the fork tube, of a head tube (Fig. 1 illustrates the bearing cup abutted against the end of a head tube 12), and a gap (184, Fig. 9; an equivalent embodiment of the headset described above) being formed between the bearing cup and the bearing base (para 0050 discloses the gap is formed between the bearing cup and the bearing base.);
at least two sealing elements (186 is shown in two instances, Fig. 9) disposed between the bearing cup 60 and the bearing base 30 (Fig. 9 depicts the at least two sealing elements disposed between the bearing cup 60 and the bearing base 30), and the at least two sealing elements, the bearing cup and the bearing base sealing the gap to form a damping section (Para 0001 discloses headsets which include damping features. Para 0050 and Fig. 9 disclose the gap is sealed by the at least two sealing elements. Para 0051 discloses that a damping effect occurs within the gap, thus forming a damping section);
a damping fluid (188, Fig. 9 and para 0051) disposed in the damping section to provide damping force (Para 0051 discloses that the damping fluid is disposed in the damping section and that there is frictional communication through the damping fluid, which provides a damping force in the damping section); and
a bearing (50, Fig. 9, para 0031) disposed between the bearing base and the bearing cup, and the bearing being abutted against the bearing base and the bearing cup (Fig. 9 depicts the bearing is disposed between the bearing base and the bearing cup. Fig. 9 also depicts that the bearing is abutted against the bearing base and the bearing cup);
wherein the bearing base has a first tube portion (“ft”, Annotated Fig. 9a, below) and a first base ring portion (“fb”, Annotated Fig. 9a) connected to the first tube portion (Annotated Fig. 9a shows “ft” and “fb” are connected), the bearing cup has a second tube portion (“st”, Annotated Fig. 9a) and a second base ring portion (“sb”, Annotated Fig. 9a) connected to the second tube portion (Annotated Fig. 9a shows “st” and “sb” are connected), the second tube portion is sleeved on the first tube portion (Annotated Fig. 9a depicts the second tube portion is sleeved on the first tube portion), the first base ring portion is surrounded by the second base ring portion (Annotated Fig. 9a depicts the first base ring portion is surrounded by the second base ring portion), the gap is formed between the first tube portion and the second tube portion (Annotated Fig. 9a depicts the gap 184 is formed between the first tube portion and the second tube portion, e.g. vertically);
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wherein the first tube portion (“ft”, Annotated Fig. 9b, below) has an outer circumferential surface (“ocs”, Annotated Fig. 9b), the second tube portion (“st”, Annotated Fig. 9b) has an inner circumferential surface (“ics”, Annotated Fig. 9b), the outer circumferential surface is opposite to the inner circumferential surface (Depicted in Annotated Fig. 9b);
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wherein the damping section is between the outer circumferential surface and the inner circumferential surface (Para 0050 discloses and Annotated Fig. 9b illustrates that the damping section is between “ocs” and “ics”), the damping section has an axial direction (AX, Annotated Fig. 9b) and a radial direction (RD, Annotated Fig. 9b), and a width (WD, Annotated Fig. 9b) of the damping section in the radial direction is smaller than a height (HD, Annotated Fig. 9b) of the damping section in the axial direction (the width WD of the damping section in the radial direction is smaller than the height HD of the damping section in the axial direction, as depicted in Annotated Fig. 9b and a partial enlarged view of Annotated Fig. 9b, below).
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Regarding claim 2, depending on claim 1, Coaplen further discloses the headset of the bicycle, wherein the gap has a first opening (“o1”, Annotated Fig. 9a) and a second opening (“o2”, Annotated Fig. 9a) opposite to the first opening (Annotated Fig. 9a depicts that “o2” is opposite to “o1”), the second opening is located between the first base ring portion and the first opening (Annotated Fig. 9a depicts that “o2” is located between “fb” and “o1”, e.g. radially), and the sealing elements respectively seal the first opening and the second opening (Annotated Fig. 9a depicts the sealing elements 186 respectively seal the first opening and the second opening).
Regarding claim 4, depending on claim 2, Coaplen further discloses the headset of the bicycle, wherein at least one of the outer circumferential surface and the inner circumferential surface has a plurality of sealing grooves (Sealing grooves are the generally square shapes surrounding 186. Annotated Fig. 9b depicts at least one of “ocs” and “ics” has a plurality of sealing grooves), and the sealing elements (186, Annotated Fig. 9b) are disposed in the sealing grooves (Depicted in Annotated Fig. 9b).
Regarding claim 5, depending on claim 2, Coaplen further discloses the headset of the bicycle, wherein the bearing is disposed between and abutted against the first base ring portion and the second base ring portion (Annotated Fig. 9a depicts that the bearing 50 is disposed and abutted against the first base ring portion “fb” and the second base ring portion “sb”).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Coaplen.
Regarding claim 3, depending on claim 2, Coaplen does not explicitly mention an intermediate sealing element disposed in the gap which seals the gap between the at least two sealing elements. Coaplen teaches in para 0050 sealing elements (186) may generally seal the gap (184) and prevent leakage therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the embodiment disclosed by Coaplen in Fig. 9 to include a duplicate sealing element disposed in the gap between the at least two sealing elements which seals the gap between the at least two sealing elements to further prevent leakage. Doing so could be readily and easily performed by a person of ordinary skill in the art with a reasonable expectation of success and without undue experimentation or risk of unexpected results. Also see MPEP 2144.04. – VI – B Duplication of Parts.
Claims 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Coaplen in view of Smith et al (US 2022/0402570 A1), hereinafter Smith.
Regarding claim 11, depending on claim 1, Coaplen does not explicitly disclose that the viscosity of the damping fluid is larger than 160 cSt (160 cSt is equivalent to 1.6 cm2/s).
Smith teaches in para 0045 that the viscosity of the damping fluid (90) is 150 cm2/s (15,000 cSt), which is larger than 160 cSt.
It would have been obvious to one of ordinary skill in the art before the effective filing date with a reasonable expectation of success and without undue experimentation or risk of unexpected results to modify Coaplen in view of Smith to use the damping fluid from Smith with the viscosity larger than 160 cSt.
Additionally, recognizing that viscosity of a damping fluid is directly correlated to its ability to dampen shocks/impact and thus customize the comfort characteristics of a bicycle rider, which is a desirable characteristic (as result effective variable), it would have been obvious to one having ordinary skill in the art at the time the application was filed, to further modify the Coaplen/Smith headset above to the specific claimed viscosity range of 160 cSt or higher, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Also see MPEP 2144.05 – II Routine Optimization. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claim 12, depending on claim 11, Coaplen as modified by Smith above does not explicitly disclose that the viscosity of the damping fluid is between 200 cSt (2 cm2/s) and 200,000 cSt (2,000 cm2/s).
However, similar considerations apply, as discussed in the routine optimization rejection over 35 USC 103 rejection of parent claim 11, see above.
Regarding claim 13, depending on claim 11, Coaplen further discloses wherein the damping fluid comprises grease or damping grease (188, Fig. 9 and para 0051 “ viscous fluid such as grease …to facilitate …damper elements”).
Response to Arguments
Applicant's arguments filed in the Response directed toward the 35 U.S.C. 102(a)(1) rejection of claim 1 have been fully considered but they are not persuasive. See Response pp. 5 – 9.
In response to applicant's argument that the references fail to show certain features of the invention (i.e., a width of the damping section in the radial direction is smaller than a height of the damping section in the axial direction, page 5 of the Response) , the examiner points out that these limitations are anticipated by the prior art, as detailed in the updated rejection above (see Annotated Fig. 9b in particular, specifically the enlarged inset figure).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that enlarging surface areas contacting the damping fluid to make the damping fluid be thinner/more uniform so that the damping fluid provides stable and uniform damping force, and that the damping fluid can be directly coated to simplify the assembling process of the headset, see p. 5) are not recited in the rejected claim. Examiner points out that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant's arguments filed in the Response directed toward the 35 U.S.C. 103 rejection of claims 3 and 12 on p. 9 have been fully considered but they are not persuasive. See Response pp. 9 - 14.
In response to applicant’s argument on p. 9 that Coaplen does not disclose the feature, “ the intermediate sealing element seals the gap between the at least two sealing elements”, as recited in claim 3, Examiner points out that this argument is addressed in the above rejection for claim 3.
In response to applicant's argument on p. 9 that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the intermediate sealing element reduces contact areas between the damping fluid and inner/outer circumferential surfaces thereby reducing the turning resistance between the bearing base and the bearing cup) are not recited in rejected claim 3. Examiner points out that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s argument on pp. 13 – 14 that there is no teaching, suggestion, or motivation to combine the references, the Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Examiner points out that in this case, applicant's argument that Smith is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Examiner further points out that in this case, the damping fluid of Smith is used in the field of bicycle headsets.
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 Tyler Ferguson whose telephone number is (571)272-7374. The examiner can normally be reached M-F 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at 571-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Tyler Ferguson/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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