DETAILED ACTION
Status of Submission
With respect to the amendment filed on May 13, 2026:
The replacement drawing sheets have been entered.
The claim amendments have been entered.
The substitute specification has not been entered because:
It does not comply with 37 CFR 1.125(c). A substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. While a copy of the substitute specification filed on May 13, 2026 is labeled “(MARKED-UP)” in the top margin, it does not include the required markings showing the changes made.
It does not correct all of the errors in ¶¶ 0061 and 0062.
¶ 0072 is improperly indented.
Claims Subject to Examination
Claims 1-8 of this application are subject to examination.
Objections to Amendments - Formalities
The amendments to the specification filed on January 26, 2024 are objected to because:
In the 3rd line of the new paragraph added after the title on page 1, “in their entirety” should read “in its entirety”.
In the 5th line of amended ¶ 0061, “opening 5a6 at the side portion” should read “openings 5a6 at the side portions”.
In the 10th line of amended ¶ 0061, “arm portion 6b that extends” should read “arm portions 6b that extend”.
In the 11th line of amended ¶ 0061, “protrudes to the outside” should read “protrude to the outside”.
In the 12th line of amended ¶ 0061, “opening 5a6” should read “openings 5a6”.
In the 15th line of amended ¶ 0061, “at the rear end” should read “at the upper end”.
In the 7th line of the amended abstract, “at the rear end” should read “at the upper end”.
The amended abstract is objected to because it is in the format of a claim (single sentence). The abstract should be in narrative form and consist of a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
Objections to Amendments – New Matter
The amendments to the claims filed on May 13, 2026 are objected to under 35 U.S.C. 132(a) because they introduce new matter into the original disclosure. The amendments to claims 1 and 2 introduce new matter for the reasons given in GROUND 1 below. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Construction in Examination
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
Examiner’s Claim Construction
The current claim limitations are construed under the BRI standard. No explicit claim construction is deemed to be necessary
Claim Rejections - 35 USC § 112
The following is a quotation 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..
GROUND 1: Claims 1-8 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “a stopper assembly that is inserted into a gap between the cylindrical portion and the operation shaft portion, and is placed on an inner circumference of the cylindrical portion of the cap, and comes into contact with the opposite shaft portion side of the flange portion to prevent the adjuster from being detached from the cap” (ll. 23-26). The original disclosure fails to provide support for an entire “stopper assembly” that (i) is inserted into a gap between the cylindrical portion and the operation shaft portion, (ii) is placed on an inner circumference of the cylindrical portion of the cap, and (iii) comes into contact with the opposite shaft portion side of the flange portion to prevent the adjuster from being detached from the cap. Rather, the specification describes only the stopper 8b as being limited in the manner defined by lines 23-26 of claim 1.
Claim 2 has been amended to recite “wherein the stopper assembly is placed on an inner circumference of an opening end of the cylindrical portion.” The original disclosure fails to provide support for an entire “stopper assembly” that is placed on an inner circumference of an opening end of the cylindrical portion. Rather, the specification describes only the stopper 8b as being limited in the manner defined by claim 2.
The examiner suggests that:
Lines 23-26 of claim 1 be amended to read “a stopper member assembly comprising a stopper that (i) is inserted into a gap between the cylindrical portion and the operation shaft portion, (ii) is placed on an inner circumference of the cylindrical portion of the cap, and (iii) comes into contact with the opposite shaft portion side of the flange portion to prevent the adjuster from being detached from the cap.”
Lines 2-3 of claim 2 be amended to read “wherein the stopper is placed on an inner circumference of an opening end of the cylindrical portion.”
Lines 5-8 of claim 3 be amended to read “the stopper, wherein the stopper (i) has an annular shape, (ii) is inserted between the cylindrical portion and the operation shaft portion, (iii) is regulated by the ring from moving upward with respect to the cylindrical portion, and (iv) comes into contact with the opposite shaft portion side of the flange portion.”
Dependent claims are included in the rejection at least because of their dependencies.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
GROUND 2: Claims 1-8 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “a cap that includes a cylindrical portion inserted into the vehicle body side tube and including an opening at a side portion and that is formed by only one part, and [[that]] the cap closes an opening end of the vehicle body side tube” (ll. 5-9). Since the phrase “and that is formed by only one part” is set off by a comma, it is unclear which of the previously recited elements are being defined by this limitation. Does the claim require this to be a limitation of the annular lid portion, or of the cylindrical portion, or of the cap as a whole?
The examiner suggests that lines 5-9 of claim 1 be amended to read “a cap that (i) is formed by only one part, (ii) includes a cylindrical portion that is inserted into the vehicle body side tube and includes an opening at a side portion of the cylindrical portion, and (iii) includes an annular lid portion extending from an outer circumference of the cylindrical portion and placed in an end portion of the vehicle body side tube such that the cap closes an opening end of the vehicle body side tube;”
Claim 1 recites “a washer that includes [[a nut]] an annular portion having an annular shape, inserted into the cylindrical portion, and including a [[screw]] thread groove on an inner circumference” (ll. 10-12). This subject matter is indefinite because the term “thread groove” is unconventional and confusing. The corresponding feature appears to be a threaded aperture/ opening. Such a structure cannot be accurately characterized as being a “thread groove”. Further, it is unclear whether “thread groove” should be interpreted to require a groove of a thread, a groove with some form of thread construction, a groove defining a thread, or some other meaning.
In claim 1, the term “the [[nut]] annular portion” (ll. 12-13) is indefinite. Since more than one annular portion has been previously introduced, it is unclear which annular portion is being referred to.
The examiner suggests that lines 10-14 of claim 1 be amended to read “a washer including (i) an annular portion that has an annular shape, is inserted into the cylindrical portion, and includes a screw thread on an inner circumference thereof, and (ii) an arm portion that extends from an outer circumference of the annular portion of the washer, protrudes to an outside of the cylindrical portion through the opening, and supports an upper end of the suspension spring;”
Claim 1 recites “an adjuster that includes a shaft portion including a [[screw]] thread groove formed on an outer circumference and screwed to the [[nut]] annular portion” (ll. 15-16). This subject matter is indefinite because the term “screw groove” is unconventional and confusing. The corresponding feature appears to be a threaded external surface/circumference. Such a structure cannot be accurately characterized as being a “thread groove”.
In claim 1, the term “the [[nut]] annular portion” (l. 16) is indefinite. Since more than one annular portion has been previously introduced, it is unclear which annular portion is being referred to.
Claim 1 recites “the adjuster is inserted into the cylindrical portion of the cap from first shaft portion” (ll. 19-20). This subject matter is indefinite because it is unclear what it means for the adjuster to be inserted “from” the first shaft portion. Since the first shaft portion is part of the adjuster, how can the adjuster be inserted “from” a portion of itself?
Claim 1 recites “and causes the operation portion to protrude upward from the cylindrical portion” (ll. 21-22). This subject matter is indefinite because the operation portion cannot be accurately defined by the phrase “causes the operation portion to protrude upward from the cylindrical portion”. The operation portion does not “cause” itself to protrude upward.
The examiner suggests that lines 15-22 of claim 1 be amended to read “an adjuster that includes (i) a first shaft portion including a screw thread formed on an outer circumference thereof and screwed to the annular portion of the washer, (ii) a flange portion provided at an upper end of the first shaft portion, and (iii) an operation shaft portion extending from an opposite shaft portion side of the flange portion and including an operation portion at a distal end thereof, wherein the first shaft portion is inserted into the cylindrical portion of the cap, the adjuster is rotatable in a circumferential direction with respect to the cap, and the operation portion protrudes upward from the cylindrical portion; and”.
Claim 1 has been amended to recite “a stopper assembly that is inserted into a gap between the cylindrical portion and the operation shaft portion, and is placed on an inner circumference of the cylindrical portion of the cap, and comes into contact with the opposite shaft portion side of the flange portion to prevent the adjuster from being detached from the cap” (ll. 23-26). This subject matter is indefinite because it is inconsistent with and contradicted by the definition of the “stopper assembly” in claim 3 (especially the definition of the ring in lines 3-4 of claim 3). See the suggested amendments in GROUND 1.
Claim 2 has been amended to recite “wherein the stopper assembly is placed on an inner circumference of an opening end of the cylindrical portion.” This subject matter is indefinite because it is inconsistent with and contradicted by the definition of the “stopper assembly” in claim 3 (especially the definition of the ring in lines 3-4 of claim 3). See the suggested amendments in GROUND 1.
In claim 6, the term “the position of an upper end surface…” (l. 7) lacks proper antecedent basis. The examiner suggests that “the position” (l. 7) be changed to “a position”.
Dependent claims are included in the rejection at least because of their dependencies.
AIA – First to File
The present reissue application contains claims to a claimed invention having an effective filing date on or after March 16, 2013. Accordingly, this application is being examined under the AIA first to file provisions.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference for each document (listed alphabetically):
“Kanda”
JP Publication No. 2003-90379 A (with translation)
“JP ‘626”
JP Publication No. H02-105626 U (with translation)
“JP ‘693”
JP Publication No. H05-14693 U (with translation)
“Tsunoda”
JP Publication No. 2013-122256 A (with translation)
“Yoshimoto”
JP Publication No. 2003-14025 A (with translation)
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.
GROUND 3: Claims 1 and 2 are rejected under 35 U.S.C. 103 as obvious over Tsunoda in view of JP ‘693.
With respect to claims 1 and 2, Tsunoda discloses a front fork comprising:
A fork main body F that includes a tube assembly that is formed by slidably fitting a vehicle body side tube T1 and an axle side tube T2, and a suspension spring S that biases the tube assembly in a stretching direction. See Figs. 1-2; ¶¶ 0015, 0017.1
A cap 1, 2 (Tsunoda’s first cap piece 1 and second cap piece 2 are assembled to form a “cap” as a two-piece structure) that includes a first cylindrical portion 10 (of cap piece 1) and a second cylindrical portion 21 (of cap piece 2) inserted into the vehicle body side tube T1, with the second cylindrical portion 21 including openings 21b at side portions thereof. See Figs. 1 and 3-6; ¶ 0015, 0022-0023, 0027-0029. The cap 1, 2 further includes an annular lid portion 12 continuing to an outer circumference of the first cylindrical portion 10 and placed in an end portion of the vehicle body side tube T1, with the cap 1, 2 closing an opening end of the vehicle body side tube T1. See Figs. 1 and 3; ¶¶ 0015, 0022-0023.
A washer (spring seat) 3 that includes a nut portion 30 having an annular shape, inserted into the second cylindrical portion 21, and including a threaded opening (see Figs. 3-5) on an inner circumference, and arm portions 31, 32 that extend from an outer circumference of the nut portion 30, with the arm portions 31, 32 protruding to an outside of the second cylindrical portion 21 through the openings 21b and supporting an upper end of the suspension spring S. See Figs. 1 and 3-6; ¶¶ 0015-0016, 0031-0034.
An adjuster 4 that includes a shaft portion 41 including a threaded portion (see Figs. 3-5) formed on an outer circumference and screwed to the nut portion 30, a flange portion (see annotated Fig. 3 below) provided at an upper end of the shaft portion 41, and an operation shaft portion 40 extending from an opposite shaft portion side of the flange portion (see annotated Fig. 3 below) and including an operation portion 42 at a distal end, with the adjuster 4 being inserted into the first and second cylindrical portions 10, 21 of the cap 1, 2 and rotatable in a circumferential direction with respect to the cap, and with the operation portion 42 protruding upward from the first cylindrical portion 10. See Figs. 1 and 3-6; ¶¶ 0015-0016, 0024-0026, 0032, 0035-0037.
A stopper member 8 that is inserted into a gap (see Fig. 3) between the first cylindrical portion 10 and the operation shaft portion 40, is placed on an inner circumference of the first cylindrical portion 10 of the cap 1, 2, and is placed on an inner circumference of an opening end (see Fig. 3) of the first cylindrical portion 10, with the stopper member 8 coming into contact with the opposite shaft portion side of the flange portion (see annotated Fig. 3 below) to prevent the adjuster 4 from being detached from the cap 1, 2. See Figs. 1-2; ¶ 0026.
Annotated Fig. 3 of Tsunoda:
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With respect to claim 1, Tsunoda’s first cap piece 1 and second cap piece 2 are assembled to form a “cap” as a two-piece structure. Tsunoda’s cap 1, 2 includes (i) the first cylindrical portion 10 having an inner circumference on which the stopper member 8 is placed, and (ii) the second cylindrical portion 21 including the openings 21b through which the arm portions 31, 32 of the spring seat 3 protrude. However, Tsunoda fails to teach a cap formed by only one part, i.e., Tsunoda lacks a singular/unified cylindrical portion (i) having an inner circumference on which the stopper member 8 is placed, and (ii) including the openings 21b through which the arm portions 31, 32 of the spring seat 3 protrude. However, JP ‘693 establishes that it was well-known in the art to use a one-piece construction for the cap as an alternative to the two-piece construction of Tsunoda.
JP ‘693 teaches a cap 13 for a front fork, with the cap 13 including a first cap piece 14 unified with a second cap piece 15 in a one-piece construction. See Figs. 1-2; ¶ 0010.2 As shown in Figs. 1-2, the first cap piece 14 forms a first part of a cylindrical portion of the cap 13, and the second cap piece 15 forms a second part of a cylindrical portion of the cap 13. Like Tsunoda, the first cap piece 14 of JP ‘693 closes the open end of a fork tube 1, an adjuster 19 is received in the cylindrical portion of the cap 13, and the second cap piece 15 includes openings (see Fig. 2) through which arm portions 26 of a spring seat 21 protrude. See Figs. 1-2; ¶ 0010-0015.
From the teachings of JP ‘693, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tsunoda by using a one-piece construction for the cap (instead of assembling the two separate cap pieces 1, 2 to form a cap) in order to reduce the number of parts and simplify assembly of the front fork. When Tsunoda’s cap pieces 1, 2 are unified in a one-piece construction, the cap includes a singular/unified cylindrical portion (i) having an inner circumference on which the stopper member 8 is placed, and (ii) including the openings 21b through which the arm portions 31, 32 of the spring seat 3 protrude.
Pertinent Prior Art
The following prior art is considered pertinent to the claimed invention but is not relied upon to reject any claim.
JP ‘626 teaches a cap 5 closing an open end of a fork tube 1, a spring force adjuster 20 (in the form of a cam) received in a cylindrical portion of the cap 5, a damping force adjuster 18 supported within the spring force adjuster 20 by a cylindrical member 23, and a detent assembly (ball 6 engaging annular member 14) between the cylindrical member 23 and the damping force adjuster 18.
Kanda teaches a cap 16 closing an open end of a fork tube 1, an adjuster 19 received in a cylindrical portion of the cap 16, and a detent assembly (ball 22 engaging annular member 20) between the cap 16 and the adjuster 19.
Yoshimoto teaches a cap 4 closing an open end of a fork tube 1, a spring force adjuster 7 received in a cylindrical portion of the cap 4, a damping force adjuster 17 supported within the spring force adjuster 7, a first detent assembly (ball 16 engaging annular member 14) between the spring force adjuster 7 and the cap 4, and a second detent assembly (ball 19 engaging annular member 25) between the spring force adjuster 7 and the damping force adjuster 17.
Allowable Subject Matter
Claims 3-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Specification Objections
The specification is objected to because:
In the 5th to 6th lines of ¶ 0036, “opening 5a6” should read “openings 5a6”.
In the 8th line of ¶ 0036, “the arm portion” should read “the arm portions”.
In the 9th line of ¶ 0036, “opening 5a6” should read “openings 5a6”.
In the 10th to 11th lines of ¶ 0036, “arm portion 6b of the washer 6 is” should read “arm portions 6b of the washer 6 are”.
In the 11th line of ¶ 0036, “opening 5a6” should read “openings 5a6”.
In the 6th line of ¶ 0037, “arm portion 6b of the washer 6 is” should read “arm portions 6b of the washer 6 are”.
In the 4th line of ¶ 0038, “is the rear end” should read “is the upper end”.
In the 15th line of ¶ 0039, “opening 5a6” should read “openings 5a6”.
In the 12th to 13th lines of ¶ 0062, “opening 5a6 through which the arm portion 6b of the washer 6 is” should read “openings 5a6 through which the arm portions 6b of the washer 6 are”.
In the 13th line of ¶ 0062, “can be arranged above compared to” is confusing and not understood since it fails to identify an element that the openings are “arranged above”.
In the 2nd line of ¶ 0063, “opening 5a6” should read “openings 5a6”.
In the 4th line of ¶ 0063, “arm portion 6b” should read “arm portions 6b”.
In the 1st line of ¶ 0072, “the stopper member 8 may be fixed to the cylindrical portion 5a by press-fitting a stopper member 81” is confusing and inaccurate since it identifies both element 8 and element 81 as a “stopper member”. Further, the stopper member cannot be accurately characterized as being fixed to the cylindrical portion 5a by press-fitting itself.
Response to Arguments
Applicant’s arguments filed on May 13, 2026 have been considered. Some of applicant’s arguments are not germane to the specific objections and rejections set forth above, which were necessitated by applicant’s amendments.
Applicant argues that the drawing objections have been overcome by the replacement drawing sheets. The examiner concurs.
Applicant argues that the specification objections have been overcome by the substitute specification. The examiner disagrees for the reasons given above.
With respect to GROUND 3, applicant argues that Tsunoda in view of JP ‘693 fails to teach a cap formed by only one part. The examiner disagrees because JP ‘693 establishes that it was well-known in the art to use a one-piece construction for the cap as an alternative to the two-piece construction of Tsunoda.
With respect to GROUND 3, applicant argues that Tsunoda in view of JP ‘693 fails to teach a stop inserted into a gap between the cylindrical portion and the operation shaft portion. The examiner disagrees. Fig. 3 of Tsunoda shows that the stop 8 is inserted into a gap between the first cylindrical portion 10 and the operation shaft portion 40.
With respect to GROUND 3, applicant argues that it is not easy to modify Tsunoda in view of JP ‘693. However, the question of obviousness is not about what is easy. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Given the teaching of a one-piece construction by JP ‘693, the skilled artisan would have possessed the requisite knowledge and skill to modify Tsunoda to include such a one-piece construction.
Final Action
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).
Response Period
A shortened statutory period for response is set to expire THREE MONTHS from the mailing date of this action.
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
Filing and Contact Information
All correspondence relating to this application should be directed:
By Patent Center3: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Primary Examiner, Art Unit 3993
1 All citations are to the English translation.
2 All citations are to the English translation.
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