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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (US 2009/0200126) in view of Sakurai (JP 2006-291879) (machine translation attached) and Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached).
Regarding independent claim 1, Kondo discloses a damper assembly (see Abstract, FIGS. 1-3) comprising: a damper tube (21) having a tubular shape (see FIGS. 1, 2) defining an inner surface (22) and extending for an axial length (see FIGS. 1, 2); a rod (13) disposed at least partially within the damper tube (see FIGS. 1, 2); and a piston (16) connected to the rod and slidably disposed within the damper tube and configured to contact the inner surface of the damper tube along a stroke region less than the axial length (see FIGS. 1, 2; ¶ 0075), wherein the damper tube defines a fluid chamber (14, 15) containing a magnetorheological fluid (see ¶ 0073), wherein the piston is configured to slide within the magnetorheological fluid (see FIG. 2; ¶¶ 0073, 0075, 0076); wherein the inner surface of the damper tube includes a hardened surface (22) comprising a nickel plating (see ¶ 0081) extending along the stroke region (see FIG. 2).
Kondo does not disclose that the hardened surface includes martensite and extending less than the axial length of the damper tube, wherein the hardened surface includes a plurality of bands that each extend continuously along the stroke region of the inner surface of the damper tube.
Sakurai teaches a hydraulic cylinder assembly (see machine translation, ¶ 0001) comprising a cylinder (11) including a hardened surface (20, 22) that includes martensite (see machine translation, ¶ 0008) extending along the stroke region (L2 or L3) and less than the axial length of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25), wherein the hardened surface includes a plurality of bands (21, 67, 67’, 74) (see FIGS. 14, 15, 17, 19, 24, 25) that each extend continuously along the stroke region of the inner surface of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25).
Taiho Kogyo teaches a damper assembly (see machine translation, ¶ 0001) comprising: a damper tube (11); wherein the inner surface of the damper tube includes a hardened surface (see machine translation, page 4, lines 4-12, “the surface hardening layer is . . . a nickel plated layer . . . [or] a quench hardened layer . . . [wherein the] quench hardened layer can be formed by . . . a laser modification method”) that extends along the stroke region (see FIGS. 1a-1c).
It would have been obvious to replace nickel plated hardened surface of Kondo with the laser quenched hardened surface of Sakurai, because Taiho Kogyo teaches that in damper devices comprising a cylindrical tube, it is known to replace a nickel plated hardened surface (as disclosed in Kondo) with a laser quenched hardened surface (as disclosed in Sakurai) (see e.g. Taiho Kogyo, machine translation, page 4, lines 4-12, “the surface hardening layer is . . . a nickel plated layer . . . [or] a quench hardened layer . . . [wherein the] quench hardened layer can be formed by . . . a laser modification method”). Furthermore, Sakurai discloses that its laser quenching method prevents the possibility of multiple laser treatments to the same area which would lead to annealing and a decrease in hardness and other problems (see e.g. Sakurai, machine translation, ¶ 0021).
Regarding claim 2, Taiho Kogyo teaches that the damper tube is made of low-carbon steel (see machine translation, page 2, “a seamless steel pipe (STKM) made of low-carbon steel”). It would have been obvious to form the damper tube of Kondo from low carbon steel to utilize a cost-effective base material (see Taiho Kogyo, machine translation, page 2, “a seamless steel pipe (STKM) made of low-carbon steel . . . which is preferred for its cost”).
Regarding claim 4, Sakurai teaches that the hardened surface (22) extends circumferentially around the inner surface of the damper tube (see FIG. 3).
Regarding claim 6, Sakurai teaches that the plurality of bands are spaced apart at regular angular intervals around the inner surface of the damper tube (see FIG. 3).
Regarding claim 7, Sakurai teaches that the plurality of bands each extend in an axial direction (see FIG. 3).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kondo et al. (US 2009/0200126) in view of Sakurai (JP 2006-291879) (machine translation attached) and Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached), as applied to claim 1, above, and further in view of Lorenzo (US 4,313,771).
Regarding claim 3, Taiho Kogyo does not disclose that the hardened surface has a Rockwell Hardness of at least about RC 49.
Lorenzo teaches a laser hardened surface comprising a Rockwell Hardness of at least about RC 49.
It would have been obvious to implement the method of Lorenzo to create a hardness of about RC 49 to provide a sufficient hardness within the cylinder that will resist wear.
Claims 8-11 and 13, 14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached) in view of Sakurai (JP 2006-291879) (machine translation attached).
Regarding claim 8, Taiho Kogyo discloses a method for laser hardening a damper tube (see machine translation, ¶ 0001; see also machine translation, page 4, lines 4-12, “[a] surface hardened layer 20 is formed . . . [wherein the] quench hardened layer can be formed by . . . a laser modification method”) configured for use in a damper assembly containing a magnetorheological fluid (see e.g. machine translation, ¶ 0001, “OBJECT OF THE INVENTION,” the cylinder of Taiho Kogyo is capable of containing a damper assembly containing a magnetorheological fluid), the method comprising: generating a laser beam (see machine translation, page 4, lines 4-12, “[a] surface hardened layer 20 is formed . . . [wherein the] quench hardened layer can be formed by . . . a laser modification method”); directing the laser beam onto an inner surface of the damper tube along a stroke region (see e.g. FIGS. 1a-1c; hardened surface is formed on inner surface of the damper tube along stroke region).
Taiho Kogyo does not disclose heating the inner surface to an elevated temperature sufficient to cause steel of the inner surface of the damper tube to form austenite; and cooling the austenite to form a hardened surface including martensite, and wherein directing the laser beam onto the inner surface of the damper tube includes directing the laser beam along a stroke region and less than an axial length of the damper tube to form a plurality of bands that each extend continuously along the stroke region of the inner surface of the damper tube.
Sakurai teaches a method for laser hardening a cylinder (see ¶ 0001), wherein the method comprises directing a laser beam onto an inner surface of the damper tube to heat the inner surface to an elevated temperature sufficient to cause steel of the inner surface of the damper tube to form austenite (see e.g. ¶ 0008, “martensitic formation” requires heating to form austenite); and cooling the austenite to form a hardened surface including martensite (see ¶¶ 0005, 0008, 0014, “martensitic formation” requires quenching), and wherein directing the laser beam onto the inner surface of the damper tube includes directing the laser beam along a stroke region (L2 or L3) and less than an axial length of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25) to form the hardened surface as a plurality of bands (21, 67, 67’, 74) (see FIGS. 14, 15, 17, 19, 24, 25) that each extend continuously along the stroke region of the inner surface of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25).
It would have been obvious to replace the laser hardening method of Taiho Kogyo with the laser hardening method of Sakurai to prevent the possibility of multiple laser treatments to the same area which would lead to annealing and a decrease in hardness and other problems (see e.g. Sakurai, machine translation, ¶ 0021).
Regarding claim 9, Sakurai teaches directing the laser beam onto the inner surface of the damper tube includes reflecting the laser beam onto the inner surface using one of a prism or a mirror (45) (see FIG. 10; see also machine translation ¶ 0056).
Regarding claim 10, Sakurai teaches that the method further includes moving the one of the prism or the mirror in an axial direction within the damper tube to direct the laser beam to form a band (20) of the hardened surface extending along an axial length of the damper tube (see ¶ 0062).
Regarding claim 11, Sakurai teaches that the method further includes rotating at least one of the damper tube or the laser beam to form the hardened surface circumferentially around the inner surface of the damper tube (see ¶ 0065).
Regarding claim 13, Sakurai teaches directing the laser beam onto the inner surface of the damper tube includes reflecting the laser beam onto the inner surface using one of a prism or a mirror (45) (see ¶ 0056), and wherein rotating the damper tube or the laser beam includes rotating the one of the prism or the mirror (see ¶ 0063).
Regarding claim 14, Sakurai teaches that the hardened surface (22) extends circumferentially around the inner surface of the damper tube (see FIG. 3).
Regarding claim 16, Sakurai teaches that the plurality of bands are spaced apart at regular angular intervals around the inner surface of the damper tube (see FIG. 3; ¶¶ 0062, 0063).
Regarding claim 17, Sakurai teaches that the plurality of bands each extend in an axial direction (see FIG. 3; ¶¶ 0062, 0063).
Regarding claim 18, Taiho Kogyo discloses that the damper tube is made of low-carbon steel (see machine translation, page 2, “a seamless steel pipe (STKM) made of low-carbon steel”).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached) in view of Sakurai (JP 2006-291879) (machine translation attached) as applied to claim 11 above, and further in view of Gabilondo et al. (US 2015/0211083).
Regarding claim 12, neither Taiho Kogyo nor Sakurai disclose that that rotating at least one of the damper tube or the laser beam includes rotating, by a rotator actuator, the damper tube.
Gabilondo teaches a method of laser hardening a workpiece (see Abstract, FIG. 3), wherein either the laser is moved or the workpiece is rotated to form a hardened surface (see ¶ 0053).
It would have been obvious to rotate the cylinder of Taiho Kogyo/Sakurai method instead of rotating the laser as a simple substitution of one known method step for another (see e.g. Gabilondo, ¶ 0053).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached) in view of Sakurai (JP 2006-291879) (machine translation attached) as applied to claim 8, above, and further in view of Lorenzo (US 4,313,771).
Regarding claim 19, Taiho Kogyo does not disclose that the hardened surface has a Rockwell Hardness of at least about RC 49.
Lorenzo teaches a laser hardened surface comprising a Rockwell Hardness of at least about RC 49.
It would have been obvious to implement the method of Lorenzo to create a hardness of about RC 49 to provide a sufficient hardness within the cylinder that will resist wear.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Taiho Kogyo Co. Ltd. (JP 61-021439) (machine translation attached) in view of Sakurai (JP 2006-291879) (machine translation attached) as applied to claim 8 above, and further in view of DeGrace et al. (US 2024/0279761).
Regarding claim 20, neither Taiho nor Sakurai disclose that the cooling the austenite to form the hardened surface includes self quenching.
DeGrace teaches a method for laser hardening a cylinder (see Abstract), wherein the cooling the austenite to form the hardened surface includes self quenching (see ¶ 0051).
It would have been obvious to use self quenching as taught by DeGrace to eliminate the need for the step of using a coolant for quenching, thereby eliminating a step in the manufacturing process.
Conclusion
Regarding independent claim 1, Applicant argues that (1) “Taiho Kogyo fails to disclose any magnetorheological fluid within the cylinder member 11” (see Amendment, page 9); and (2) “Sakurai’s design necessarily requires that the hardening treatment parts 20, 21 are NOT continuous along the stroke region—they are intentionally interrupted by the circumferential sealing band 22” (see Amendment, page 9).
Applicant’s arguments with respect to the magnetorheological fluid are moot in view of the new grounds of rejection noted above.
Regarding Applicant’s arguments with respect to the continuity of the plurality of band, Sakurai discloses in alternative embodiments that the hardened surface as a plurality of bands (21, 67, 67’, 74) (see FIGS. 14, 15, 17, 19, 24, 25) that each extend continuously along the stroke region (L2 or L3) of the inner surface of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25).
Regarding independent claim 8, Applicant's arguments filed 16-Feb-2026 have been fully considered but they are not persuasive.
Regarding claim 8, Applicant argues that “[b]ased on similar amendments [to claim 1], amended independent claim 8 of the present application also patentably distinguish over the above cited references” (see Amendment, page 10).
Claim 8, however, has not been amended in a manner similar to the amendments of claim 1 in at least one material aspect – claim 8 does not positively require magnetorheological fluid as claim 1 does. Rather, claim 8 only recites “a method for laser hardening a damper tube configured for use in a damper assembly containing a magnetorheological fluid,” which only recites an intended use with magnetorheological fluid. As such, claim 8 does not require a magnetorheological fluid.
Regarding the argument that “Sakurai’s design necessarily requires that the hardening treatment parts 20, 21 are NOT continuous along the stroke region—they are intentionally interrupted by the circumferential sealing band 22” (see Amendment, page 9), Sakurai discloses in alternative embodiments that the hardened surface as a plurality of bands (21, 67, 67’, 74) (see FIGS. 14, 15, 17, 19, 24, 25) that each extend continuously along the stroke region of the inner surface of the damper tube (see FIGS. 14, 15, 17, 19, 24, 25).
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 NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
February 27, 2026