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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-20 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.
Re: claims 1 and 9. The phrase “the body valve body” lacks proper antecedent basis in the claim.
Re: claims 8 and 15. The claims are indefinite since based on the recitations, it is unclear as to which element represents the body washer and which element represents the body spacer. The claims recite that the body spacer is mounted on the body pin to maintain a minimum distance between the body washer and the body pilot housing. The body pilot housing is represented by element number 630. The body washer is recited as being mounted on the body pin in the other direction opposite to one direction in which the free piston faces the body pilot housing. This recitation limits the possible options for the body washer to be either element 660 or the unlabeled element above 660. As best understood, element 660 would represent the body washer and the element above 660 would represent the body spacer, but element 660 is indicated as representing the body spacer. Clarification is required.
Re: claims 16, 17, and 20. The phrases “the piston injection channel” (also in claims 17 and 20) and “the piston valve body” lack proper antecedent basis in the claim.
The remaining claims are indefinite due to their dependency from one of claims 1 and 9.
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.
(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.
Claim(s) 1, 2, 4, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE-102016210950 (DE’950).
Re: claim 1. DE’950 shows in the figure a body valve assembly shown in the figure generating a damping force changed according to a magnitude of a frequency during a compression stroke of the frequency sensitive type shock absorber, the body valve assembly comprising: a body valve main body 6 installed at the end of the frequency sensitive type shock absorber on a side of a compression chamber 13 and having a plurality of body compression channels 9, 10 and a plurality of body tension channels 38, 39 formed to penetrate in a direction connecting the compression chamber and a reserve chamber 11 and a body main chamber, as labeled, formed at ends of the plurality of
[AltContent: textbox (Body main chamber)][AltContent: arrow]
PNG
media_image1.png
451
544
media_image1.png
Greyscale
body compression channels in a direction of the reserve chamber 11; a body pin 35 fastened through the body valve body and having a body injection channel 21 communicating with the compression chamber 13; a body main valve 7 coupled to the body pin to open or close the body main chamber; a body pilot housing 32, 33 coupled to the body pin, having one side or upper side facing the body valve body with the body main valve 7 interposed therebetween, and having a body pilot chamber 20 communicating with the body injection channel on the other side; and a free piston 19 accommodated in the body pilot chamber and configured to press the body pilot housing 32, 33 in a direction of the body main valve 7 and change a force that presses the body pilot housing according to a pressure change in the body pilot chamber 20.
Re: claim 2. DE’950 shows in the figure the body valve assembly further comprising a body inlet disc 30 interposed between the body pilot housing 32, 33 and the free piston 19, wherein the body pilot chamber 20 communicates with the body injection channel 21 through the body inlet disc 30, and an inflow rate of a working fluid flowing into the body pilot chamber is changed according to a change in frequency during a compression stroke to the same extent as that of Applicant’s invention due to DE’950 satisfying the claimed structure.
Re: claim 4. DE’950 shows in the figure wherein the free piston 19 is configured so that a force pressing the body pilot housing 32, 33 in the direction of the body main valve 7 during a low- frequency compression stroke is relatively greater than a force pressing the body pilot housing in the direction of the body main valve during a high-frequency compression stroke due to the inflow rate of the working fluid being limited by the throttle 23 similar to the way in which the inflow rate of the working fluid is limited by the opening in the body inlet disc 690 of the instant invention as best understood.
Re: claim 5. DE’950 shows in the figure wherein during a low-frequency compression stroke, the pressure in the body pilot chamber 20 increases while an inflow rate of a working fluid flowing into the body pilot chamber relatively increases compared to that during a high- frequency compression stroke, and as the pressure in the body pilot chamber increases, an opening rate of the body main chamber, as labeled, by the body main valve 7 becomes relatively small or the body main chamber is closed while a force of the free piston 19 pressing the body pilot housing 32, 33 in the direction of the body main valve 7 increases via at least one intervening element, and during the high-frequency compression stroke, the pressure in the body pilot chamber 20 decreases while the flow rate of the working fluid flowing into the body pilot chamber is relatively reduced due to the throttle 23 compared to that during the low-frequency compression stroke, and as the pressure in the body pilot chamber decreases, the opening rate of the body main chamber, as labeled, by the body main valve 7 becomes relatively large while the force of the free piston 19 pressing the body pilot housing in the direction of the body main valve decreases. Also see explanation associated with the rejection of claim 4.
Re: claim 7. DE’950 shows in the figure further comprising a disc spring 30 for elastically pressing the body pilot housing 32, 33 in the direction of the body main valve 7.
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.
Claim(s) 9, 10, 12, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE’950 in view of WO-2013051934 (WO’934).
Re: claim 9. DE’950 shows in the figure a frequency sensitive type shock absorber comprising: a first cylinder 2 divided into a compression chamber 13; a second cylinder 3 surrounding the first cylinder 2 to form a reserve chamber 11 between the second cylinder and the first cylinder; and a body valve assembly shown in the figure installed at an end of the first cylinder 2 as shown on the side of the compression chamber 13 to control a movement of a working fluid between the compression chamber 13 and the reserve chamber 11 and to generate a damping force changed according to a magnitude of a frequency during a compression stroke, wherein the body valve assembly includes a body valve main body 6 installed at the end on the side of the compression chamber and having a plurality of body compression channels 9, 10 and a plurality of body tension channels 38, 39 formed to penetrate in a direction connecting the compression chamber and a reserve chamber and a body main chamber, as labeled, formed at ends of the plurality of body compression channels in a direction of the reserve chamber, a body pin 35 fastened through the body valve body and having a body injection channel 21 communicating with the compression chamber 13, a body main valve 7 coupled to the body pin to open or close the body main chamber, a body pilot housing 32, 33 coupled to the body pin, having one side facing the body valve body with the body main valve 7 interposed therebetween, and having a body pilot chamber 20 communicating with the body injection channel 21 on the other side, and a free piston 19 accommodated in the body pilot chamber and configured to press the body pilot housing in the direction of the body main valve and change a force that presses the body pilot housing according to a pressure change in the body pilot chamber 20, but is silent with regard to the shock absorber dividing the compression chamber from a rebound chamber by a piston rod reciprocating therein and a piston valve assembly mounted on the piston rod.
WO’934 teaches in figure 1 the use of a shock absorber dividing a compression chamber 28 from a rebound chamber 27 by a piston rod 24 reciprocating therein and a piston valve assembly 3 mounted on the piston rod 24.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the body valve assembly of DE’950 to have formed a part of a shock absorber in which the compression chamber was divided from a rebound chamber by a piston rod reciprocating therein and a piston valve assembly mounted on the piston rod, in view of the teachings of WO’934, in order to provide additional damping with greater tuning flexibility and improved ride comfort.
Re: claim 10. DE’950, as modified, teaches in the figure of DE’950 in the figure the body valve assembly further comprising a body inlet disc 30 interposed between the body pilot housing 32, 33 and the free piston 19, wherein the body pilot chamber 20 communicates with the body injection channel 21 through the body inlet disc 30, and an inflow rate of a working fluid flowing into the body pilot chamber is changed according to a change in frequency during a compression stroke to the same extent as that of Applicant’s invention due to DE’950 satisfying the claimed structure.
Re: claim 12. DE’950, as modified, teaches in the figure of DE’950 wherein the free piston 19 is configured so that a force pressing the body pilot housing 32, 33 in the direction of the body main valve 7 during a low- frequency compression stroke is relatively greater than a force pressing the body pilot housing in the direction of the body main valve during a high-frequency compression stroke due to the inflow rate of the working fluid being limited by the throttle 23 similar to the way in which the inflow rate of the working fluid is limited by the opening in the body inlet disc 690 of the instant invention as best understood.
Re: claim 13. DE’950, as modified, teaches in the figure of DE’950 wherein during a low-frequency compression stroke, the pressure in the body pilot chamber 20 increases while an inflow rate of a working fluid flowing into the body pilot chamber relatively increases compared to that during a high- frequency compression stroke, and as the pressure in the body pilot chamber increases, an opening rate of the body main chamber, as labeled, by the body main valve 7 becomes relatively small or the body main chamber is closed while a force of the free piston 19 pressing the body pilot housing 32, 33 in the direction of the body main valve 7 increases via at least one intervening element, and during the high-frequency compression stroke, the pressure in the body pilot chamber 20 decreases while the flow rate of the working fluid flowing into the body pilot chamber is relatively reduced due to the throttle 23 compared to that during the low-frequency compression stroke, and as the pressure in the body pilot chamber decreases, the opening rate of the body main chamber, as labeled, by the body main valve 7 becomes relatively large while the force of the free piston 19 pressing the body pilot housing in the direction of the body main valve decreases. Also see explanation associated with the rejection of claim 4.
Claim(s) 16-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE’950 in view of WO-2013051934 (WO’934) as applied above and further in view of US Patent Application 2020/0393015 to Kim et al.
Re: claims 16 and 19. DE’950, as modified, teaches in figure 1 of WO’934 the piston valve assembly but is silent with regard to the piston valve assembly details as recited.
Kim et al. teach in figures 1 and 3 including a piston valve main body 1200 mounted on a piston rod 1100 to control movement of the working fluid between the compression chamber 110 and the rebound chamber 120, a piston main retainer 1320 coupled to the piston rod and having a piston main chamber 1325 communicating with a piston injection channel 1130, a piston main valve 1370 coupled to the piston rod to open or close the piston main chamber, a piston pilot housing 1300 coupled to the piston rod between the piston main valve 1370 and the piston valve body and having a piston pilot chamber 1315 communicating with the piston injection channel 1130 as shown in figure 3, and a pilot valve 1330 coupled to the piston rod to cover the piston pilot chamber and configured to perform pressurization so that the piston main valve closes the piston main chamber when the pressure in the piston pilot chamber increases above a preset pressure.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the piston valve assembly of DE’950, as modified, to have been constructed as recited in claim 16, in view of the teachings of Kim et al., in order to provide additional damping with greater tuning flexibility and improved ride comfort. With regard to claim 19, Examiner notes that the structure of DE’950, as modified, functions the same as the instant invention due to having the similar structure as that of the instant invention.
Re: claims 17 and 18. DE’950, as modified, teaches in figures 1 and 3 of Kim et al. further comprising a piston inlet disc 1350 interposed between the piston pilot housing 1300 and the pilot valve 1330, wherein the piston pilot chamber 1315 communicates with the piston injection channel via the piston inlet disc a shown in figure 3, so that the inflow rate of the working fluid flowing into the piston pilot chamber during a tension stroke selectively according to the frequency is more relatively limited than the inflow rate of the working fluid flowing into the piston main chamber due to the interaction with the small slit 1351 as opposed to the larger opening 1323, wherein the piston inlet disc includes at least one slit 1351 as shown in figure 2 formed to communicate the piston injection channel 1130 formed in the piston rod 1100 with the piston pilot chamber so that the working fluid flows into the piston pilot chamber 1315.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the piston valve assembly of DE’950, as modified, to have been constructed as recited in claim 17, in view of the teachings of Kim et al., in order to provide additional damping with greater tuning flexibility and improved ride comfort. With regard to claim 18, Examiner notes that the structure of DE’950, as modified, functions the same as the instant invention due to having the similar structure as that of the instant invention.
Drawings
The drawings are objected to because it is unclear which elements in the figures represent the body washer and the body spacer as recited. See the 112 rejections for explanation. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 18, respectively, of copending Application No. 18/209070 (Application ‘070).
Re: claims 1 and 9. Both claims 1 and 9 of the instant invention and claims 8 and 18 of Application ‘070, respectively, recite a body valve assembly comprising a body valve main body, a body pin, a body main valve, a body pilot housing, and a free piston, and a plurality of body compression and tension channels, and the body pin having a body injection channel or body inlet flow path. Claims 9 of instant and 18 of App’070 both recite a first cylinder and a second cylinder. With regard to the body main retainer recited in earlier recited Application ‘070, In In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993), the court held that for the purposes of obvious double patenting a later genus (broad) claim is not patentable over an earlier species (narrow) claim.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9, 10, 14, 15, 17, and 20 of copending Application No. 18/209070 (Application ‘070) in view of DE’950.
Re: claims 1 and 9. Both claims 1 and 9 of the instant invention and claims 1 and 11 of Application ‘070, respectively, recite a body valve assembly comprising a body valve main body, a body pin, a body main valve, a body pilot housing, and a free piston, and the body pin having a body injection channel or body inlet flow path, but is silent with regard a plurality of body compression and tension channels.
DE’950 teaches in the figure the use of a plurality of body compression channels and a plurality of body tension channels.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the body valve assembly of Application ‘070, to have included a plurality of body compression and tension channels, in view of the teachings of DE’950, in order to provide additional damping with greater tuning flexibility and improved ride comfort.
With regard to the body main retainer recited in earlier recited Application ‘070, In In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993), the court held that for the purposes of obvious double patenting a later genus (broad) claim is not patentable over an earlier species (narrow) claim. Claims 9 of instant and 18 of App’070 both recite a first cylinder and a second cylinder.
Re: claims 2 and 10. Both claims 2, 10 of the instant invention and claims 2, 12 of Application ‘070, as modified, recite a body inlet disc. With regard to the inflow rate comparison recited in earlier recited Application ‘070, In In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993), the court held that for the purposes of obvious double patenting a later genus (broad) claim is not patentable over an earlier species (narrow) claim.
Re: claims 3-5 and 11-13. Both claims 3, 11 of the instant invention and claims 3, 13 of Application ‘070, as modified, recite the body inlet disc including at least one body inlet disc slit. Both sets of claims 4 and 5 and claims 12 and 13 of the instant invention as well as claims 14 and 15 of Application ‘070 recite similar inflow rate comparison.
Re: claim 6. Both claim 6 of the instant invention and claim 7 of Application ‘070, as modified, recite the injection channel or body inlet flow path being formed on an outer peripheral surface of one side of the body pin.
Re: claim 7. Both claim 7 of the instant invention and claim 9 of Application ‘070, as modified, recite a disc spring for pressing the body pilot housing.
Re: claim 8. Both claim 8 of the instant invention and claim 10 of Application ‘070, as modified, recite a body washer and a body spacer.
Re: claim 14. Both claim 14 of the instant invention and claim 17 of Application ‘070, as modified, recite the body injection channel or body inlet flow path being formed in the form of a slit on an outer peripheral surface on one side of the body pin.
Re: claim 15. Both claim 15 of the instant invention and claim 20 of Application ‘070, as modified, recite a body washer and a body spacer, but Application ‘070 is silent with regard to the disc spring.
DE’950 teaches in the figure the use of a disc spring 30 pressing the body pilot housing 32, 33 in the direction of the body main valve 7.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the body valve assembly of Application ‘070, to have included a disc spring, in view of the teachings of DE’950, in order to provide additional damping with greater tuning flexibility and improved ride comfort depending on the particular application.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO-2015041297, WO-2015041309, GB-1387150, and KR-20150080835 teach similar shock absorbers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELODY M BURCH whose telephone number is (571)272-7114. The examiner can normally be reached Monday - Friday 6:30AM-3PM, generally.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
mmb
January 10, 2026
/MELODY M BURCH/Primary Examiner, Art Unit 3616