DETAILED CORRESPONDENCE
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/9/2026 has been entered.
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 1-9, 11, 15-22, 24 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teraoka et al. (JP 2009-036261 A).
Regarding claim 1, Teraoka discloses (figs. 1-2) A valve assembly (see device shown in fig. 1) comprising:
a valve body (4) comprising: at least one fluid flow port (3) therethrough;
at least one shim (one of 12) pressed against said valve body, said at least one shim configured to control a fluid flow through said at least one fluid flow port (via closing and opening 7); and
at least one friction reducing material (b) deployed between said at least one shim and said valve body (fig. 2, layers b axially between the shim and the valve at least), said at least one friction reducing material reducing a static friction coefficient and a kinetic friction coefficient between said at least one shim and said valve body (the plates 12 are disclosed as being steel, and the coating is a material having “excellent low friction properties” such as PTFE. Accordingly, such a coating reduces both static and dynamic friction coefficients. See also claim 1, where the “film” reduces friction), said at least one friction reducing material also reducing a frictional force needed for movement of said at least one shim with respect to said valve body (see abstract at least, “a frictional force can be reduced”),
wherein said at least one friction reducing material is a stand-alone layer (each layer is considered to be “stand alone” in that it doesn’t need anything else in order to carry out its purpose), said stand-alone layer being separate from said at least one shim and said valve body (coating ‘b’ is made of a separate material with its own material properties, and the coating is merely attached to the surface of the base, therefore it is materially separate at least despite being connected to its respective plate).
Regarding claim 15, Teraoka discloses (figs. 1-2) A shock assembly comprising:
a damping chamber (collectively R1/R2);
a main piston (4) coupled to a shaft (5) and configured to divide said damping chamber into a compression side (one of R1, R2) and a rebound side (the other of R1, R2), said main piston comprising: a main piston body (main structure of 4); at least one fluid pathway (3) through said main piston body; at least one shim (one of 12) pressed against said main piston body, said at least one shim configured to meter a fluid flow through said at least one fluid pathway (via 7 at least); and
at least one friction reducing material (coating b) deployed between said at least one shim and said main piston body (as shown), said at least one friction reducing material reducing a static friction coefficient and a kinetic friction coefficient occurring between said at least one shim and said valve body (the plates 12 are disclosed as being steel, and the coating is a material having “excellent low friction properties” such as PTFE. Accordingly, such a coating reduces both static and dynamic friction coefficients. See also claim 1, where the “film” reduces friction), said at least one friction reducing material also reducing a frictional force needed for movement of said at least one shim with respect to said valve body (see abstract at least, “a frictional force can be reduced”),
wherein said at least one friction reducing material is a stand-alone layer (each layer is considered to be “stand alone” in that it doesn’t need anything else in order to carry out its purpose), said stand-alone layer being separate from said at least one shim and said valve body (coating ‘b’ is made of a separate material with its own material properties, and the coating is merely attached to the surface of the base, therefore it is materially separate at least despite being connected to its respective plate).
Regarding claims 2 and 16, Teraoka discloses (figs. 1-2) a shim stack (1) comprising: a plurality of shims (multiple of 12) disposed such that said at least one shim pressed against said valve body (topmost 12) is arranged between said valve body and said plurality of shims (as shown), wherein said plurality of shims and said at least one shim pressed against said valve body together form said shim stack (topmost 12 and remainder of 12’s, as shown); and wherein said at least one shim pressed against said valve body is a stick shim (topmost 12), said shim stack configured to control said fluid flow through said at least one fluid flow port/fluid pathway (general function of the shim stack).
Regarding claims 3-4 and 17-18, Teraoka discloses (figs. 1-2) said at least one friction reducing material deployed between each of said plurality of shims of said shim stack (fig. 2 as shown) to reduce a static friction coefficient and a kinetic friction coefficient occurring between said at least two of said plurality of shims (the plates 12 are disclosed as being steel, and the coating is a material having “excellent low friction properties” such as PTFE. Accordingly, such a coating reduces both static and dynamic friction coefficients. See also claim 1, where the “film” reduces friction), said at least one friction reducing material also reducing a frictional force needed for movement of said at least two of said plurality of shims shim with respect to each other (see abstract at least, “a frictional force can be reduced”).
Regarding claim 5, Teraoka discloses (figs. 1-2) said at least one friction reducing material deployed between said plurality of shims of said shim stack in an alternating manner (coating “b” can be applied to only one of the surfaces of the leaf valve 12 such that every other surface in an alternating manner has the coating).
Regarding claims 6-7 and 19-20, Teraoka discloses (figs. 1-2) at least two friction reducing materials deployed between each of said plurality of shims of said shim stack (see fig. 2, each plate has a layer “b”, thus 2 layers exist between 2 adjacent plates).
Regarding claims 8 and 21, Teraoka discloses (figs. 1-2) a friction reducing surface treatment applied to said at least one shim (see page 13 last pgh. to page 14 first pgh, e.g. PTFE coating, PFA coating, plating, or painting).
Regarding claims 9 and 22, Teraoka discloses (figs. 1-2) said friction reducing surface treatment comprises one or more layers of a same type of said friction reducing surface treatment (e.g. one layer of a “same type”)
Regarding claims 11 and 24, Teraoka discloses (figs. 1-2) said at least one friction reducing material is formed of one or more sublayers (as shown, coating b is “formed of” one “sublayer”).
Regarding claim 28, Teraoka discloses (figs. 1-2) A valve assembly (see device shown in fig. 1) comprising: a valve body (4), comprising: at least one fluid flow port (3) therethrough;
a shim stack (1) comprising a plurality of shims (12), said shim stack pressed against said valve body (as shown) and configured to control a fluid flow through said at least one fluid flow port (via closing and opening 7); and
at least one friction reducing material (b) disposed between at least two shims of said shim stack, and wherein said at least one friction reducing material is not disposed between said shim stack and said valve body (coating between seat 9 and topmost valve 12 may be omitted),
said at least one friction reducing material reducing a static friction coefficient and a kinetic friction coefficient between said at least two shims shim of said shim stack (the plates 12 are disclosed as being steel, and the coating is a material having “excellent low friction properties” such as PTFE. Accordingly, such a coating reduces both static and dynamic friction coefficients. See also claim 1, where the “film” reduces friction), said at least one friction reducing material also reducing a frictional force needed for movement of said at least two shims of said shim stack with respect to each other (see abstract at least, “a frictional force can be reduced”),
wherein said at least one friction reducing material is a stand-alone layer (each layer is considered to be “stand alone” in that it doesn’t need anything else in order to carry out its purpose), said stand-alone layer being separate from said at least one shim and said valve body (coating ‘b’ is made of a separate material with its own material properties, and the coating is merely attached to the surface of the base, therefore it is materially separate at least despite being connected to its respective plate).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Teraoka et al. (JP 2009-036261 A) in view of Endo (JP 2015-161320 A).
Regarding claims 14 and 27, Teraoka does not appear to disclose applying a surface treatment on the valve body / main piston body. In the same field of endeavor of hydraulic damping devices, Endo teaches (figs. 5a, 6a) a valve body/ main piston body (41) including a friction reducing surface treatment (50) applied thereto.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the friction reducing surface treatment to the valve body/main piston of Teraoka as suggested by Endo to reduce fluid resistance through the piston (see page 22 pgh. 2 of Endo).
Response to Arguments
Applicant contends on page 13 of the remarks that Teraoka does not disclose a friction reducing material as presently claimed in the independent claims. Upon further review, Teraoka was found to anticipate the claim as currently presented. See rejections above. No particular argument was presented as to why Teraoka does not read on the present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID MORRIS whose telephone number is (571)270-3595. The examiner can normally be reached Monday thru Friday; 8:30 AM - 5:00 PM.
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/DAVID R MORRIS/Primary Examiner, Art Unit 3616
