DETAILED ACTION
The Request for Reconsideration filed 09/24/26 has been entered. Claims 1-20 are still pending. Aside from a minor amendment to dependent claim 10, no other claim amendments have been submitted. Despite Applicant’s arguments the 103 rejections are maintained as detailed below. This action is made Final. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Ammon in view of Marking
Claim(s) 1-9 and 11-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ammon (GB 2328999) in view of Marking et al. (U.S. Patent No. 6,296,092). Ammon is directed to a gas pressure shock absorber. See Abstract. Marking is directed to a position-sensitive shock absorber. See Abstract.
Claim 1: Ammon discloses a damper (1) for a bicycle suspension component [see page 1, line 1 (“vehicles”); note: intended use], the damper comprising: a damper body (2) defining a chamber (5, 6); a shaft (3) extending into the damper body; and a damper member (4) disposed in the chamber and coupled to the shaft, the damper member dividing the chamber into a first chamber (5) and a second chamber (6), the damper member including: a piston (4) including a disc (17, 18) and a wall (radial periphery of 4) extending from the disc, wherein a portion of an outer surface of the wall is sealed with an inner surface of the damper body [see Fig. 1 (via 24)], the piston having a radial opening (at 25, 26) extending through the wall; and a valve (25, 26) disposed at the radial opening, such that during at least a portion of travel of the damper member during a compression stroke, the valve enables fluid flow through the radial opening from the first chamber to the second chamber.
Ammon discloses all the limitations of this claim except that it uses a valve disposed in the radial opening as compared to “a radial flow shim disposed on an outer surface of the wall,” and it does not enable flow by being “flexed away from the outer surface of the wall.” Marking discloses a shock absorber [Fig. 4] with radial flow shim (40, 42) [see Fig. 5; col. 5, lines 1-22 (“individual flaps of material”)] disposed on an outer surface of a wall (4) over the radial opening (28, 30), wherein the radial flow shim is flexible such that during at least a portion of travel of the damper member during a compression stroke, a portion of the radial flow shim is flexed away from the outer surface of the wall to enable fluid flow through the radial opening between chambers. See Figs. 4, 5. It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to use the flexible “flaps” of Marking in place of the valves in Ammon because they ultimately achieve the same function as one-way check valves, but the “flaps” may have certain design advantages, such as being simpler in design or easier to substitute or replace given their location outside the wall rather than within the body of the piston.
Claim 2: Ammon discloses that the radial opening extends through the wall but the outer surface wall is not “a flattened surface.” While the Amon outer surface wall is annular, it would have been obvious to one skilled in the art at the effective filing date of the invention for it be modified to a flattened surface if the Marking “individual flap” is used. A flat “flap” on a flattened wall surface (much like the flat shims 17,18 on the flat top/bottom of piston 4) would provide the simplest and best damping and sealing effects in the Ammon piston.
Claim 3: It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to use a “threaded fastener” to attach the Marking “flap” because this is a well-known, cheap and simple attachment means that makes installation and removal quick and easy.
Claim 4: It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention for the Marking “flap” to be rectangular because Marking already discusses various shapes for providing flow restriction for the radial openings, and a rectangle is an intuitive choice for a circular hole – a rectangle is just large enough to cover the opening and also permit attachment to the wall. See col. 5, lines 1-22.
Claim 5: Marking discloses that the radial flow shim is constructed of sheet metal. See col. 5, line 1.
Claim 6: Ammon discloses that the piston has a recess extending into the flattened surface at a location of the radial opening. See Fig. 1.
Claim 7: Ammon discloses that piston has a bore extending into the surface containing the radial opening. Upon combining with Marking, it discloses that the radial flow shim has a notch aligned with the bore. See Fig. 1.
Claim 8: Ammon discloses that the radial opening is a first radial opening (at 25) and the radial flow shim is a first radial flow shim, the piston having a second radial opening (at 26) extending through the wall, the damper member including a second radial flow shim disposed on the outer surface of the wall of the piston and over the second radial opening. See Fig. 1.
Claim 9: Marking discloses that the first and second radial openings are aligned along an axis that is perpendicular to an axis of movement of the damper member. See Fig. 5.
Claim 11: Ammon discloses that the chamber has a first section (at 12) with a first cross-sectional area and a second section (at 19) with a second cross-sectional area greater than the first cross-sectional area. See Fig. 1.
Claim 12: Ammon discloses that the disc defines a compression channel (15), and wherein the damper member includes a compression shim stack (17) covering the compression channel. See Fig. 1.
Claim 13: Ammon discloses that a cracking pressure of the radial flow shim is less than the compression shim stack. See Fig. 1 (check valve versus shim stack); see page 3 (“reduced flow resistance”).
Claim 14: see claim 1 above. Marking further discloses that the radial flow shim (i.e., the “flap”) is oriented perpendicular to a radial line extending from an axis of movement of the damper member. See Fig. 5. See obviousness statement above.
Claim 15: It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention for the Marking “flap” to have one end attached to the wall and the other flexible to enable fluid flow since this is the simplest and most intuitive means to attach a flap to a wall.
Claim 16: see claim 3 above.
Claim 17: see claim 5 above.
Claim 18: Ammon discloses that the outer surface of the piston has a recess defined between two ribs (top and bottom of 4), and wherein the radial flow shim is disposed in the recess. See Fig. 1.
Claim 19: Ammon discloses that its valve is spaced from the ribs. See Fig. 1.
Claim 20: see claim 2 above.
Ammon in view of Marking and Foster
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ammon in view of Marking and Foster (U.S. Patent No. 4,588,053). Foster is directed to a multiple rate shock isolator damping valve. See Abstract.
Claim 10: Ammon and Marking are relied upon as in claim 1 but do not disclose a piston with two piston seals. Foster discloses a piston (10) that includes a first seal (19) around the piston; and a second seal (23) around the piston, the radial opening (34) axially spaced between the first and second seals, wherein at least one of the first seal or second seal is shaped and sized to selectively facilitate fluid flow through the radial opening based on a position of the damper [see Fig. 1 (piston position and its seal(s) inevitably impact fluid flow)]. See Fig. 1. It would have been obvious to a person having ordinary skill in the art at the effective filing date of the invention to include two piston seals in the Ammon shock absorber because the Ammon piston (4) has a top and bottom portion that extends radially outwards to the inner cylindrical wall, which would be appropriate locations for piston seals. Additional piston seals would further achieve the objective of preventing leakage between the first and second chambers.
Response to Arguments
Applicant's arguments filed 09/24/26 have been fully considered but they are not persuasive.
Applicant traverses the 103 combination for two reasons. First, Applicant contends that Marking does not disclose a “flat arrangement” or one where the flaps are positioned within grooves 44, 46 “or any other receded location.” See Remarks, pages 8-9. In response, aside from the fact that the phrase “flat” is not in the claim language itself, the radial exterior wall of the bands 40, 42 are “flat,” and “individual flaps” (as explicitly recited in Marking) would clearly be “flat” as understood by one skilled in the art. To the extent applicant's argument concerns the sizing of the Marking flaps or grooves to permit Ammon to operate properly, 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). In this case, the use of one type of radially positioned check valve in a fluid damper is replaced with another type of radially positioned check valve in a fluid damper to achieve the same objective of damping/restricting fluid flow. Marking clearly depicts in Figure 5 the receded grooves 44, 46 for placement of this valve and one skilled in the art would certainly choose an appropriate thickness of the flaps/grooves to permit the Ammon damper to function properly.
Second, Applicant contends that the proposed modification “reflects the kind of reconstruction that comes only from the knowledge of Applicant’s claims.” See Remarks, page 9. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). As stated above, the use of one type of radially positioned check valve is replaced with another type of radially positioned check valve to achieve the same objective of damping fluid flow in a fluid damper. The reasons for the modification of both simplicity in construction and ease in replacement of the “flap”-type check valve on the radial periphery of the piston body are sufficient to meet the threshold for a section 103 combination.
Regarding claim 10, Applicant argues that Foster does not disclose a radial opening between chambers. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This limitation is disclosed in the base reference, and Foster is used solely to teach the use of multiple piston seals.
For the foregoing reasons, the rejection is maintained as detailed above.
The Applicant has not made ANY changes to independent claims 1 and 14 from the start of prosecution of this application. It is strongly suggested that at least some additional structural limitations be added to move prosecution forward. This was discussed during the 10/05/26 Examiner-Initiated Interview, requested by the Applicant.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 VISHAL R SAHNI whose telephone number is (571)270-3838. The examiner can normally be reached M-F 7am-3pm PST.
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VISHAL SAHNI
Primary Examiner
Art Unit 3657
/VISHAL R SAHNI/Primary Examiner, Art Unit 3616 October 5, 2026
