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 .
Specification
The disclosure is objected to because of the following informalities: the specification states, “[r]eferring additionally to FIGs. 4 and 5, the shock body 12 includes a ride zone 94 (also referred to as a primary internal bypass zone) defined between the bypass ports 40 and the reservoir flow ports 44. The shock body also includes a bump zone 96 (also referred to as a primary internal bypass zone) defined between the reservoir flow ports 44 and the end of the shock body 12 to which the upper mount 19 is coupled.” All subsequent recitations of the “primary internal bypass zone” in the specification are unclear because it is unclear whether the ride zone bypass (94) or the bump zone bypass (96) is being referenced.
The specification further states, “[i]n a compression stroke when the piston 20 is moving through the ride zone 94 toward the bump zone 96, the shaft displacement of fluid within the inner body 14 flows to the reservoir 30 from the topside volume 92 through the fluid gap between the inner body 14 and outer body 16 through the fluid gap between the inner body 14 and outer body 16 along a path 70, or in other words flows through the primary internal bypass as shown in FIG. 4. After the piston 20 passes the reservoir flow ports 44 and moves into the bump zone 96, the shaft displacement of fluid within the inner body 14 flows to the reservoir 30 from the shaft side volume 90 through the fluid gap between the inner body 14 and outer body 16 along a path 72, or in other words flows through the secondary internal bypass as shown in FIG. 5.” Referring to figures 4 and 5, however, the flow to the reservoir is through the same reservoir flow holes (44). As such, it is unclear how the same flow path can form the “primary internal bypass” and at the same time the “secondary internal bypass.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claims 1 and 14, the phrase “the ring divider located adjacent a bump zone of the shock body” is considered new matter. The original specification discloses that the ring divider is located adjacent to the ride zone (94) (see FIG. 4). As such, the subject matter of the ring divider being located adjacent the bump zone (96) (see FIG. 4) is considered new matter.
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 1-17 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.
Regarding independent claim 1, the recitation of “a bump zone” is indefinite because it is unclear what structure is considered to be a “bump zone” without any further relationship of the bump zone with other elements of the shock assembly.
Regarding claim 2, the phrase “a secondary internal bypass zone” is indefinite because it is unclear whether this is the same element as the previously recited “bump zone.”
Regarding independent claim 9, the phrase “eliminating risk of cavitation during the compression stroke when the piston travels in the bump zone in response to directing shaft displacement flow through the secondary internal bypass” is indefinite because many variables that affect whether or not a fluid will cavitate and it is unclear what structural elements and/or functional operations are required to perform this step. For example, it is unclear whether this step can include an open port on the piston rod side of the piston when the piston is traveling in bump zone (see e.g. FIG. 6), applying a nitrogen pressure to the rebound side (see e.g. ¶ 0021), a step of controlling the speed of the piston in the bump zone, and/or a setting the properties of the fluid (e.g. viscosity, temperature, pressure). Furthermore, it is not clear whether phrase “eliminating risk of cavitation” means eliminating all risk such that it is impossible for cavitation to occur or rather that the risk of cavitation is reduced (and if so, relative to what reference point).
Regarding claim 9, the phrase “a primary internal bypass” and “a secondary internal bypass” are indefinite because it is unclear whether these are the same elements in view of the specification. For example, the specification states that “the primary internal bypass [is] shown in FIG. 4” (see ¶ 0021) and “the secondary internal bypass as shown in FIG. 5” (see ¶ 0022). Both Figures 4 and Figure 5, however, show the same port (44) being used for the flow of fluid. As such, it is unclear whether the “primary internal bypass” is the same element as the “secondary internal bypass.”
Regarding claim 14, the phrase “a secondary internal bypass zone” is indefinite because it is unclear whether this is the same element as the previously recited “bump zone.”
Regarding independent claim 14, the recitation of “a bump zone” is indefinite because it is unclear what structure is considered to be a “bump zone” without any further relationship of the bump zone with other elements of the shock assembly.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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 Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1, 2, 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marking (US 2019/0383349).
Regarding independent claim 1, Marking discloses a shock assembly with internal bypass (see Abstract, FIGS. 1-4), the shock assembly comprising: a twin tube shock body (122, 123) comprising an inner body (122) and an outer body (123) (see FIG. 1); a ring divider (A) (see Annotated FIG. 1, below) coupled between the inner body and the outer body to separate and form a fluid gap between the inner body and the outer body (see FIG. 1), the ring divider located adjacent a bump zone of the shock body (see Annotated FIG. 1, below; ring divider (A) is located adjacent to a bump zone of the shock body when the piston is compressed from a fully retracted position), wherein the inner body and the outer body are sealed to allow fluid to flow through the gap without leaking (see FIG. 1, showing fluid flows (150, 151, 152, 153, 154) in gap); bypass ports (24) and bleeder ports (30) formed in the inner body (see FIGS. 1, 2); and reservoir flow ports (28) formed in the inner body and located above body divider ring (see FIG. 1), wherein the reservoir flow ports are configured to direct shaft displacement flow of fluid from a shaft side volume to a reservoir (110) of the shock assembly when a piston (202, 49, 51) of the shock assembly passes by the reservoir flow ports during a compression stroke (see FIG. 2; showing flow (157) exiting through port (28) located on shaft side volume).
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Regarding claim 2, Marking discloses that the location of the reservoir flow ports marks a boundary between a primary internal bypass zone (see FIGS. 1, 2; when piston is located below ports (28), this forms the primary internal bypass zone) and a secondary internal bypass zone (see FIGS. 1, 2; when piston is located above ports (28), this forms the primary secondary bypass zone), wherein the secondary internal bypass zone is located on a side of the reservoir flow ports adjacent the reservoir (110) (see FIGS. 1, 2) and the primary internal bypass zone is located on an opposite side of the reservoir flow ports (110) (see FIGS. 1, 2).
Regarding independent claim 14, Marking discloses a shock assembly with internal bypass (see Abstract, FIGS. 1-4), the shock assembly comprising: a twin tube shock body (122, 123) comprising an inner tube (122) and an outer tube (123) (see FIG. 1); a ring divider (A) (see Annotated FIG. 1, below) coupled between the inner body and the outer body to separate and form a fluid gap between the inner body and the outer body (see FIG. 1), the ring divider located adjacent a bump zone of the shock body (see Annotated FIG. 1, below; ring divider (A) is located adjacent to a bump zone of the shock body when the piston is compressed from a fully retracted position), wherein the inner body and the outer body are sealed to allow fluid to flow through the gap without leaking (see FIG. 1, showing fluid flows (150, 151, 152, 153, 154) in gap); bypass ports (24) and bleeder ports (30) formed in the inner body (see FIGS. 1, 2); and at least one reservoir flow port (28) formed in the inner body and located above body divider ring (see FIG. 1), wherein the at least one reservoir flow port is configured to direct shaft displacement flow of fluid from a shaft side volume to a reservoir (110) of the shock assembly when a piston (202, 49, 51) of the shock assembly passes by the at least one reservoir flow port during a compression stroke (see FIG. 2; showing flow (157) exiting through port (28) located on shaft side volume).
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Regarding claim 15, Marking discloses that the location of the at least one reservoir flow port marks a boundary between a primary internal bypass zone (see FIGS. 1, 2; when piston is located below ports (28), this forms the primary internal bypass zone) and a secondary internal bypass zone (see FIGS. 1, 2; when piston is located above ports (28), this forms the primary secondary bypass zone), wherein the secondary internal bypass zone is located on a side of the at least one reservoir flow port adjacent the reservoir (110) (see FIGS. 1, 2) and the primary internal bypass zone is located on an opposite side of the reservoir flow ports (110) (see FIGS. 1, 2).
Claims 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tong (US 2022/0176769).
Regarding independent claim 9, Tong discloses a method of use of a twin tube shock assembly with internal bypass (see Abstract, FIGS. 12-14), the method comprising: moving a piston (120) of a shock assembly in a compression stroke (see ¶¶ 00116, 0117; FIGS. 13, 14; line (606) depicts damping force as piston is compressed through cylinder), wherein the shock assembly comprises a ride zone (see FIG. 13, ride zone extends from holes (520) to holes (540)) with a primary internal bypass (540) and a bump zone (see FIG. 13, bump zone extends from holes (540) to right-most end of cylinder) with a secondary internal bypass (510); directing displacement flow from a shaft side volume to a reservoir of the shock assembly through the primary internal bypass when the piston travels in the ride zone during the compression stroke (see FIG. 13, when piston is located leftward of bypass holes (540) and traveling in a rightward direction, fluid would be forced through holes (540)); directing shaft displacement flow to a reservoir of the shock assembly through the secondary internal bypass (540) when the piston travels in the bump zone during the compression stroke (see FIG. 13, when piston passes holes (540), fluid displaced due to the shaft entry can exit through piston and holes (540) (see also ¶ 0068, indicating flow through piston (120)); and eliminating risk of cavitation during the compression stroke when the piston travels in the bump zone in response to directing shaft displacement flow through the secondary internal bypass (see FIG. 13, when piston moves in bump zone rightward of holes (540), the rod-side chamber is connected to the reservoir via holes (540)).
Regarding claim 10, Tong discloses that the secondary internal bypass comprises a plurality of reservoir flow ports (540) forming a boundary between the ride zone and bump zone (see FIG. 13).
Regarding claim 11, Tong discloses that the piston moves from the ride zone into the bump zone by passing the plurality of reservoir flow ports during the compression stroke (see FIG. 13).
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 3, 4, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Marking (US 2019/0383349) in view of Tong (US 2022/0176769).
Regarding claim 3, Marking does not disclose additional bypass/bleed ports located above the reservoir flow ports.
Tong teaches a shock assembly with internal bypass (see Abstract, FIG. 3) comprising bypass ports (520), bleed ports (510) and reservoir flow ports (540), wherein additional bypass/bleed ports are located above the reservoir flow ports (see FIG. 13, a series of bleed ports (510) are located axially along the cylinder)).
It would have been obvious to combine the additional bypass/bleed ports of Tong with the device of Marking to provide position-dependent damping that increases damping force as the piston approaches the bottom of the cylinder, thereby reducing the likelihood of bottoming out of the piston (see e.g. ¶ 0113).
Regarding claim 4, Tong teaches that the additional bypass/bleed ports are only active when the piston crossed the reservoir flow ports and is within the secondary internal bypass zone during the compression stroke (see e.g. FIG. 13, damping force due to passages (510) is not effective until piston passes hole (540)).
Regarding claim 16, Marking does not disclose additional bypass/bleed ports located above the reservoir flow ports.
Tong teaches a shock assembly with internal bypass (see Abstract, FIG. 3) comprising bypass ports (520), bleed ports (510) and reservoir flow ports (540), wherein additional bypass/bleed ports are located above the reservoir flow ports (see FIG. 13, a series of bleed ports (510) are located axially along the cylinder)).
It would have been obvious to combine the additional bypass/bleed ports of Tong with the device of Marking to provide position-dependent damping that increases damping force as the piston approaches the bottom of the cylinder, thereby reducing the likelihood of bottoming out of the piston (see e.g. ¶ 0113).
Regarding claim 17, Tong teaches that the additional bypass/bleed ports are only active when the piston crossed the reservoir flow ports and is within the secondary internal bypass zone during the compression stroke (see e.g. FIG. 13, damping force due to passages (510) is not effective until piston passes hole (540)).
Response to Arguments
Applicant's arguments filed 30-Mar-2026 have been fully considered but they are not persuasive.
Regarding the rejection of claim 9 under 35 U.S.C. 112(b), Applicant states that “the claims have been amended to comply with the examiner’s suggestions and are now believed to conform with § 112” (see Amendment, page 6). The rejections of claim 9, however, have not been addressed, either by claim amendment or arguments.
Regarding the rejection of claims 1 and 14 under 35 U.S.C. 102(a)(1) as being anticipated by Marking, Applicant argues that “Marking does not appear to [disclose] a ring divider located adjacent a bump zone of the shock absorber” (see Amendment, page 7). The claim, however, does not recite the structure, location or function of the “bump zone.” Nor does the claim recite the structure or axial location of the “ring divider.” The only requirements of claims 1 and 14 are that the “a ring divider coupled between the inner body and the outer body to separate and form a fluid gap between the inner body and the outer body, the ring divider located adjacent a bump zone of the shock body.” Element (A) (see Annotated FIG. 1, above) of Marking is coupled between the inner body and the outer body to separate and form a fluid gap between the inner body and the outer body, and the ring divider is located vertically adjacent to a bump zone of the shock body.
Regarding the rejection of claim 9 under 35 U.S.C. 102(a)(1) as being anticipated by Tong, Applicant argues that “Tong does not disclose directing shaft displacement flow from a shaft side volume through the secondary internal bypass to the reservoir during compression when in the bump zone” (see Amendment, page 7). One of ordinary skill in the art, however, would understand that the holes (540) are configured for such a flow to occur. For example, looking at Figure 11, when the piston (120) is moving in a compression direction and passes the reservoir hole (540), the fluid displacement due to the rod entering the cylinder would be capable of exiting the open reservoir flow hole (540).
Allowable Subject Matter
Claims 12 and 13 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.
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.
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.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
June 13, 2026
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