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 .
Information Disclosure Statement
The information disclosure statement (IDS) filed on 3/20/2026 has been considered. The Taiwan office action has not been considered because it is not in the English language, nor contains an English abstract or other statement of relevance. While it constitutes a statement of relevance for the other cited art, the document itself cannot be considered for information contained therein.
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.
Claim 23 is 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 pre-AIA the applicant regards as the invention.
Claim 23 recites, “said friction reducing surface treatment comprises one or more layers of different types of friction reducing surface treatments”. The claim language includes a construction of only one layer yet somehow comprises “different types” of friction reducing surface treatments. Paragraph 0063 of the specification states, “the friction reducing surface treatment 440 is made of one or several layers of the same friction reducing coating or several layers of different friction reducing coatings”. As best understood, the different types of coatings can only be provided when several layers of coatings are provided simultaneously. Accordingly, it is unclear how a single layer can be provided in “different types” as presently claimed.
This issue was previously presented in the Non-Final rejection of February 9, 2026.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) disposed 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”).
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) disposed 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”).
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 disposed 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 disposed 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 disposed 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) said at least one friction reducing material is 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 a stand-alone layer of friction reducing material (each layer is considered to be “stand alone” in that it doesn’t need anything else).
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”).
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 , 23 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 claim 23, Teraoka does not appear to disclose applying the friction reducing material as one or more layers of “different types of friction reducing surface treatments”. In the same field of endeavor of hydraulic damping devices, Endo teaches (figs. 5a, 6a) a surface treatment (50) that utilizes a surface treatment resulting in a concavo-convex structure on the surface (page 23 last 2 paragraphs) together with a coating applied to the surface (see page 22 pgh. 2 of Endo, e.g. a PTFE coating).
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 both a structural surface treatment and a coating surface treatment to further enhance fluid resistance, since both processes reduce fluid resistance, merely providing them together grants the benefits of both processes simultaneously, thereby enhancing the fluid resistance effect.
Regarding claims 14 and 27, Teraoka does not appear to disclose applying the friction reducing material as 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
Regarding the 112 rejections, Applicant states on page 15 of the remarks filed on 3/20/2026 that the amendments and claim cancelations alleviate the previous issues. It is agreed that a majority of the 112 issues were addressed by these amendments, but claim 23 was not amended or otherwise addressed, so the issues with claim 23 remain present, as appears above.
Regarding the prior art rejections, Applicant contends on pages 16-20 of the remarks that Teraoka does not teach or suggest the newly recited limitations of claims 1, 15 and 28, and accordingly all remaining claims are in condition for allowance by virtue of dependency. Upon further review, Teraoka was found to anticipate the claim as currently presented. See rejections above.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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