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 .
Claim Objections
Claims 1, 2, 4-10, and 12-20 are objected to because of the following informalities:
Re: claims 1 and 9. The phrase “sensitive type shock absorber” should be changed to --sensitive shock absorber--;
Re: claim 1. The phrase “the body pin” should be changed to --a body pin--.
Re: claim 10. The phrase “a working fluid” should be changed to --the working fluid-- to refer back to the previously recited working fluid.
Appropriate correction is required. The remaining claims are indefinite due to their dependency from one of claims 1 and 9.
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, 2, and 4-8 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: claim 1. The phrase “the working fluid” lacks proper antecedent basis in the claim as amended.
The remaining claims are indefinite due to their dependency from claim 1.
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, 2, 4-10, and 12-15 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, 4, 5, 9 and 12. 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. Both sets of claims recite the body inlet disc including at least one body inlet disc slit and recite similar inflow rate comparison.
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: 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
Claims 16-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because some of the new grounds of rejection do not rely on any reference applied in the prior rejection of record. The drawing and previous 112 rejections have been withdrawn in light of the most recent amendments. The amendments to independent claims 1 and 9 have also overcome the art rejections. The double patenting rejections have been maintained due to the claim language of the instant invention with respect to the claim language of 18/209070 and no arguments pointing out errors in the double patenting rejection. Some of the amendments necessitated new grounds of rejection as set forth 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 MELODY M BURCH whose telephone number is (571)272-7114. The examiner can normally be reached Monday - Friday 6:30AM-3PM, generally.
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mmb
July 29, 2026
/MELODY M BURCH/Primary Examiner, Art Unit 3616
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