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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 10-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 5, applicant claims contradictory structural limitations. In lines 10-11, applicant recites “a length of a contact surface of the support portion in contact with the outer peripheral surface of the first cylindrical body”. However, in lines 15-16, applicant recites “the first cylindrical body and the support portion are integrally molded with a same material”. If the cylindrical body and the support portion are integrally molded, as recited in lines 15-16, then the support portion does not have a contact surface that engages the outer periphery of the cylindrical body, as recited in lines 10-11. For the purpose of this Office Action, it is assumed that applicant means to claim integrally molding the cylindrical body with the support portion, without there being a contact surface between the two, but clarification is required.
Claim Rejections - 35 USC § 103
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 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) 1, 2, 4-7, and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2004-100896 (cited by applicant) in view of Toda (USPN 9,039,023).
Regarding claim 1, JP’896 teaches a front fork (Figures 1 and 3), comprising: a shock absorber body provided with a first cylindrical body 1 formed in a cylindrical shape and a second cylindrical body 2 movably provided relative to the first cylindrical body in an axial direction of the first cylindrical body; a fixing member 4, 14, which is in contact with an outer peripheral surface of the first cylindrical body so that the shock absorber body is capable of being fixed to a vehicle on which the shock absorber body is mounted; and a support portion (rear half of collar 7, 17) which supports a part of the outer peripheral surface of the first cylindrical body 1 and is in contact with the fixing member 4, 14 (see figures 1, 2, and 4), wherein: a length of a contact surface of the support portion in contact with the outer peripheral surface of the first cylindrical body in a circumferential direction of the first cylindrical body is half a peripheral length of the outer peripheral surface (the broadly recited “support portion” is considered the rear portion of collar 7, 17); the support portion is provided at a portion where a contact surface pressure between the fixing member and the support portion increases when the vehicle decelerates (the rear portion of collar 7 is pressed against the fixing member 4 when the vehicle decelerates), and is in direct contact with the outer peripheral surface of the first cylindrical body. It is noted that applicant broadly claims a “support portion” where the contact surface pressure between the fixing member and the support portion increases when the vehicle decelerates. Applicant’s disclosure has identified a support portion that is located below and behind the first cylindrical member as meeting that description. Applicant’s claim is not limited to structure that is free of other support portions that also engage the lower front portion of the fixing member, or that extend entirely around the circumference of the first cylindrical body. Therefore, the collar of JP’896 reads on the claimed structure, as discussed above.
At least a part of the support portion is connected to the outer peripheral surface of the first cylindrical body by clamping force, but not is not adhered to it.
Stewart teaches a front fork having a first cylindrical body 26 and a second cylindrical body 28 axially movable relative to the first body. The first cylindrical body is fixed to a fixing member 113, 114. In the embodiment of Figure 14 and 17 support portion 60 is fixed to the outer peripheral surface of the first cylindrical member with adhesive (col. 5, lines 11-13). In the embodiment of Figure 16, the support portion is integrally formed with the cylindrical body (col. 5, lines 55-56)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adhere the support portion of the JP’896 fork to the first cylindrical body, in view of Stewart, with a reasonable expectation of success, in order to prevent unintentional detachment of the support portion from the cylindrical body.
Regarding claim 2, Figure 4 of JP’896 shows that at least a part of the support portion 17 is sandwiched between the outer peripheral surface of the first cylindrical body 1 and an inner peripheral surface of the fixing member 14.
Regarding claims 4 and 9, JP’896 shows an inner peripheral surface of the fixing member 14 (Figure 4) includes an inner fitting portion configured to fit at least a part of the support portion; and the inner fitting portion is recessed from the inner peripheral surface of the fixing member.
Regarding claim 5, JP’896 teaches all of the structure, as discussed above, except that that support portion is clamped to the first cylindrical body rather than that the first cylindrical body and the support portion are integrally molded with a same material. However, Stewart teaches an alternative embodiment where the support portion 143 is integrally formed with the first cylindrical body (col. 5, lines 55-56). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to integrally mold the support portion of the JP’896 fork to the first cylindrical body, in view of Stewart, with a reasonable expectation of success, in order to prevent unintentional detachment of the support portion from the cylindrical body.
Regarding claims 6 and 10, JP’896 teaches the fixing member is disposed at an axially central portion or an axially lower end portion of the first cylindrical body (a central location is shown in Figure 4).
Regarding claims 7, 11, and 12, JP’896 teaches that the support portion 7, 17, is in contact with a lower surface of the fixing member 4, 14, (see Figures 1 and 4).
Claim(s) 3 and 8 are is/are rejected under 35 U.S.C. 103 as being unpatentable over JP’896 and Stewart as applied to claims 1, 2, 4-7, and 9-12 above, and further in view of Galasso (USPN 6,893,037).
Regarding claims 3 and 8, the combination lacks the outer peripheral surface of the first cylindrical body including an outer fitting portion configured to fit at least a part of the support portion; and the outer fitting portion is recessed from the outer peripheral surface of the first cylindrical body.
Galasso shows a front fork, in Figure 9, having a cylindrical body 6 with an outer fitting (cut 24) that is recessed from the outer peripheral surface of the cylindrical body and that is configured to fit at least a part of a support portion (bushing 19; see col. 5, lines 32-38).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination front fork to include a recessed fitting in the outer periphery of the first cylindrical body for receiving the support portion, in view of Galasso, with a reasonable expectation of success, in order to provide a more secure connection and prevent unintentional detachment of the support portion from the cylindrical body.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Toda teaches a front fork with a support adhered to the outer periphery of a fork tube.
Hill teaches fork parts splined together.
JP’595 shows a support portion integrally formed on the outer periphery of a fork tube.
Summers shows a support bracket equally divided between front and rear halves.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anne Marie M. Boehler whose telephone number is (571)272-6641. The examiner can normally be reached Monday-Friday, 8-5pm.
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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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/ANNE MARIE M BOEHLER/Primary Examiner, Art Unit 3611
/ab/