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 .
Election/Restrictions
Newly amended claim 1 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Independent claim 1 previously recited “wherein the deformation prevention portion is a reinforcement plate provided between the low-rigidity disk and the passage formation member and having higher rigidity than the low rigidity disk” (see FIG. 3) whereas the newly amended claim 1 has deleted this subject matter and added “wherein the deformation prevention portion is a hole configured to allow the pressure of the hydraulic fluid flowing into one side of the low-rigidity disk to be released to an opposite side of the low-rigidity disk” (see FIG. 8). As such, claim 1 has been amended to be directed toward a distinct, mutually exclusive embodiment.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 1 and 5-8 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mori (WO 2019/049844) in view of Yamashita (WO 2020/137207) (hereinafter “Yamashita ‘207”). All citations to Mori will be made with respect to Mori et al. (US 2020/0191229), which is an English-language publication corresponding to Mori. All citations to Yamashita ‘207 will be made with respect to Yamashita (US 2022/0074461) (hereinafter “Yamashita ‘461”), which is an English-language publication corresponding to Yamashita ‘207.
Regarding independent claim 9, Mori discloses a shock absorber (see Abstract, FIGS. 1, 2) comprising: a cylinder (2) sealingly containing hydraulic fluid therein (see ¶ 0015); a piston (3) movably provided in the cylinder and partitioning an inside of the cylinder into two chambers (2A, 2B) (see ¶ 0015), a piston rod (9) having one end side coupled with the piston and an opposite end side extending out of the cylinder (see FIG. 1); a passage (15, 16) in which a flow of the hydraulic fluid is generated due to a movement of the piston in one direction (see e.g. ¶ 0017); the piston including the passage formed therein (see FIGS. 1, 2); a main valve (36) configured to apply a resistance force to a flow of the hydraulic fluid passing through the passage from a chamber on an upstream side to a chamber on a downstream side (see ¶ 0022); a back-pressure chamber (38) configured to apply an inner pressure in a valve-closing direction of the main valve (see ¶ 0022); and a bottomed tubular case member (37), the bottomed tubular case member including a tube portion (see FIG. 2, vertically extending walls of (37)) and a bottom portion (see FIG. 2, horizontally extending wall), the tube portion including an opening portion opened on one end side thereof, the main valve being disposed in the opening portion (see FIG. 2), the back-pressure chamber being formed inside the bottomed tubular case member (see FIG. 2), the shock absorber further comprising: an inner seat portion (A) (see Annotated FIG. 2, below) provided on the piston and disposed on an inner peripheral side with respect to an opening of the passage (see FIG. 2); an outer seat portion (35) provided on the piston and disposed on an outer peripheral side with respect to the opening of the passage (see FIG. 2); a low-rigidity disk (B) (see Annotated FIG. 2, below) configured to be seated on the outer seat portion and having lower rigidity than the main valve (see FIG. 2, low-rigidity disk (B) is thinner than disk (36)); and a deformation prevention portion (C) (see Annotated FIG. 2, below) configured to prevent the low-rigidity disk from being deformed (see FIG. 2, deformation prevention portion (C) prevents inner diameter of disk (B) from deforming), wherein the deformation prevention portion is a reinforcement plate provided between the low-rigidity disk and the piston (see FIG. 2) and having higher rigidity than the low-rigidity disk (see Annotated FIG. 2, below, disk (C) is thicker than disk (B)), and wherein a bending rigidity of the low-rigidity disk is configured to be changed by a spacer (47) provided between the deformation prevention portion and the piston (see FIG. 2; spacer (47) supports disk (B), which supports low-rigidity disk (C)).
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Mori does not explicitly disclose the relative rigidities of the disks.
Yamashita ‘461 teaches that thicker disks are more rigid (see ¶ 0079). As such, one of ordinary skill in the art would have recognized that because the disk (B) of Mori is thinner than the main valve (36), the disk (B) has a lower rigidity. Furthermore because the disk (C) is thicker than the disk (B), the disk (C) has a higher rigidity.
Response to Arguments
Applicant’s arguments with respect to claim 9 have been considered but are moot in view of the new grounds of rejection noted above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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, 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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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
April 3, 2026