METHODS AND APPARATUS FOR POSITION SENSITIVE SUSPENSION DAMPING

Application No. 18/382,966

• Filed: Oct 23, 2023
• Priority: May 31, 2011 — provisional 61/491,858
  • May 31, 2012 — divisional of 13/485,401
  • Oct 03, 2014 — continuation of 10/677,309
  • Jun 04, 2020 — continuation of 11/796,028
• Examiner: LANE, NICHOLAS J
• Art Unit: 3616
• Tech Center: 3600 — Transportation & Electronic Commerce
• Assignee: Fox Factory Inc.
• OA Round: 1 (Non-Final)

Office Action

DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,796,028. This is a statutory double patenting rejection. Claim 1 of the present application and claim 1 of the ‘028 patent are identical.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J LANE whose telephone number is [phone]. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at [phone]. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616

December 29, 2025

Prosecution Timeline

• Oct 23, 2023: Application Filed
• Jan 09, 2024: Response after Non-Final Action
• Dec 29, 2025: Non-Final Rejection (signed) — §101
• Feb 12, 2026: Non-Final Rejection mailed — §101 (current)