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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 29-Apr-2026 is acknowledged.
Claims 18-24, 36 and 37 are withdrawn.
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, 2, 5-8, 10-17, 33-35 and 38 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 33, the subject matter of a piston assembly comprising the combination of A) a fastener configured to couple said piston with said shaft; and B) at least one compliant member coupled with said piston and said shaft is considered new matter. The embodiment shown in Figure 4A comprises a fastener (325) configured to couple said piston with said shaft, but the compliant member (315) in this embodiment is not coupled with the shaft. Conversely, in the embodiments shown in Figures 5A and 5B, the compliant member (306) is coupled with the piston and the shaft (see FIGS. 5A, 5B), but there is no fastener that is configured to couple the piston to the shaft.
Regarding claims 5-8, the subject matter of a piston assembly comprising the combination of A) a fastener; B) a compliant member; C) a seal; and D) a glide band is considered new matter. The embodiment shown in Figure 4A comprises a fastener (325), a seal (302) and a glide band (315) that forms a compliant member (see ¶ 0074). The glide band and the compliant member, however, are not separate parts. Furthermore, in the embodiments shown in Figures 5A and 5B, the piston assembly comprises a seal (302), a compliant member (306) and a glide band (315), but not a fastener that couples the piston to the shaft. As such, the combination of the a fastener; B) a compliant member; C) a seal; and D) a separate glide band is considered new matter.
Regarding claim 10, the subject matter of “said piston base configured to couple with said piston and said shaft” is considered new matter. The original specification only discloses that the piston base is coupled with the piston (see ¶ 0088; FIGS. 5A-5C).
Regarding claim 38, the subject matter of “said deflection of said piston occurs with respect to said shaft” is combination with a fastener configured to couple the piston to the shaft is considered new matter. The embodiment shown in Figure 4A comprises a fastener that couples the piston to the shaft, but the piston does not deflect relative to the shaft. Conversely, in the embodiments shown in Figures 5A-5C, the piston deflects relative to the shaft but there is no fastener that couples the piston to the shaft.
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 2, 5, 10 and 38 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 claim 2, the phrase “that said piston comprises an extended body length to increase an overlap of said piston with said shaft” is indefinite because it is unclear relative to which reference point that an “extended body length” or an “increase [in] an overlap” is determined. In other words, it is unclear how much the piston must overlap the shaft to determine that the body length has been sufficiently extended to increase an overlap.
Regarding claim 5, the phrase “a glide band” is indefinite because it is unclear whether the glide band is the same element as the previously recited “compliant member.” The specification states that “piston assembly 300 includes piston 305, at least one compliant member (e.g. glide band 315)” (see ¶ 0074). As such, it is unclear whether the “glide band” is the same element as the previously recited “compliant member,” or rather, that these are two separate elements.
Regarding claim 10, the phrase “said shaft” lacks antecedent basis.
Regarding claim 38, the phrase “wherein said deflection of said piston occurs with respect to said shaft” is indefinite because it is unclear how the piston can be both coupled to the shaft via a fastener (see claim 33) and deflect relative to the shaft.
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, 5, 7, 8, 33, 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Allinquant (US 3,168,301).
Regarding independent claim 1, Allinquant discloses a piston assembly (see col. 1, lines 10-15; FIG.) comprising: a piston(1); a shaft (8); a fastener (see FIG.; threaded end of (7) forms a fastener) configured to couple said piston with said shaft (see col. 2, lines 4-8); at least one compliant member (6) coupled with said piston and said shaft (see FIG.), said at least one compliant member configured to allow said piston assembly to accommodate deflection of a fork assembly (see col. 1, lines 10-15; member (6) is made of rubber); and a seal (3) configured to provide an air tight seal between said piston and a wall of an air chamber (10) (see FIG.).
Regarding claim 2, Allinquant discloses that said piston comprises an extended body length to increase an overlap of said piston with said shaft (see FIG.).
Regarding claim 5, Allinquant discloses a glide band (12).
Regarding claim 7, Allinquant discloses that said glide band comprises: a split, said split configured for use in an installation of said glide band (see col. 2, lines 35-39).
Regarding claim 8, Allinquant discloses that a height of said glide band is configured to prevent said piston from rocking within said air chamber (see FIG.).
Regarding independent claim 33, Allinquant discloses a piston assembly (see col. 1, lines 10-15; FIG.) comprising: a piston(1); a shaft (8); a fastener (see FIG.; threaded end of (7) forms a fastener) configured to couple said piston with said shaft (see col. 2, lines 4-8); at least one compliant member (6) coupled with said piston (see FIG.), said at least one compliant member coupled with said shaft (see FIG.), said compliant member configured to allow for deflection of said piston (see col. 1, lines 10-15; member (6) is made of rubber); and a seal (3) configured to provide a seal between said piston and a wall of an air chamber (10) (see FIG.).
Regarding claim 34, Allinquant discloses that said at least one compliant member is configured to allow said shaft to deflect with respect to said piston (see FIG.).
Regarding claim 38, Allinquant discloses that said deflection of said piston occurs with respect to said shaft (see FIG.; compliant member is located between the piston and the shaft).
Claims 10-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dewit (FR 1053740) (Applicant cited).
Regarding claim 10, Dewit discloses a piston assembly (see FIG. 1) comprising: a piston (L); at least one compliant member (Ra, Rb) coupled with said piston and said shaft (BB), said at least one compliant member configured to allow said piston assembly to accommodate deflection of a fork assembly (see FIG. 1); and a piston base (M), said piston base configured to couple with said piston and said shaft (see FIG. 1), said piston base configured to enclose at least a portion of said shaft and said at least one compliant member therein (see FIG. 1), such that said shaft can move relative to at least one of said piston and said piston base (see FIG. 1).
Regarding claim 11, Dewit discloses a shaft flange (B) coupled with said shaft (see FIG.); said at least one compliant member (Ra) coupled with said shaft flange (see FIG.); and at least a second compliant member (Rb) coupled with said piston and said shaft flange (see FIG.).
Regarding claim 12, Dewit discloses that a diameter of said shaft flange is smaller than a bore in said piston (see FIG.), said shaft flange configured to move radially and tilt within said piston bore (see FIG.).
Regarding claim 13, Dewit discloses a seal (x, x’) configured to provide an air tight seal between said piston and a wall of an air chamber (see FIG.).
Regarding claim 16, Dewit discloses that said at least one compliant member is a spring (see FIG.).
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Dewit (FR 1053740) (Applicant cited), as applied to claim 10, above, and further in view of Allinquant (US 3,168,301).
Regarding claim 14, Dewit does not discloses a glide band.
Allinquant teaches a piston assembly comprising a glide band (12, 13).
It would have been obvious to combine the glide band of Allinquant with the piston assembly of Dewit to avoid metal-to-metal friction (see e.g. Allinquant, col. 2, lines 25-39).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Dewit (FR 1053740) (Applicant cited), as applied to claim 10, above, and further in view of Breese (US 2022/0106998).
Regarding claim 15, Dewit does not disclose a top out assembly fixedly coupled with said shaft, said top out assembly configured to provide a top out load path that does not include said at least one compliant member.
Breese teaches a piston assembly (see Abstract, FIG. 1) comprising a top out assembly (149, 200) fixedly coupled with said shaft (see FIG. 1; ¶ 0029), said top out assembly configured to provide a top out load path that does not include said at least one compliant member (see FIG. 1; ¶ 0029).
It would have been obvious to combine the top out assembly of Breese with the piston assembly of Dewit to prevent the piston assembly from impacting the top of the cylinder, thereby preventing generation of noise and/or damage to the cylinder or piston.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Dewit (FR 1053740) (Applicant cited), as applied to claim 10, above, and further in view of Lemieux (2003/0051957).
Regarding claim 17, Dewit does not disclose that said at least one compliant member is an elastomer.
Lemieux teaches a piston assembly (see Abstract, FIGS. 4, 5) comprising a compliant member (260, 264) configured as a spring (see FIG. 4), or alternatively, a compliant member (360, 364) configured as an elastomer (see FIG. 5, ¶ 0078).
It would have been obvious to replace the springs of Dewit with elastomer, as taught by Lemieux, as a simple substitution of one known element for another without any unexpected results. Additionally, the elastomer provides internal damping characteristics, thereby adapting the performance characteristics of the compliant member to different operational requirements.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Dewit (FR 1053740) (Applicant cited), as applied to claims 10 and 11, above, and further in view of Koch et al. (US 5,560,456).
Regarding claim 35, Dewit does not disclose that said at least one second compliant member is preloaded to maintain a constant load-carrying contact between said piston and said shaft flange.
Koch teaches a piston assembly (see Abstract, FIG. 1a) wherein at least one second compliant member (10, 11) is preloaded (see col. 5, lines 43-54) to maintain a constant load-carrying contact between said piston (6) and said shaft flange (12, 13).
It would have been obvious to preload the compliant members of Dewit to ensure that the piston remains in the rest position (see e.g. Koch, col. 5, lines 43-54).
Claims 1, 2, 5-8, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Furukawa et al. (2013/0192940) in view of Cheever et al. (US 2007/0262501).
Regarding independent claim 1, Furukawa discloses a piston assembly (see Abstract; FIGS. 1-4) comprising: a piston (4); a shaft (5); at least one compliant member (10) coupled with said piston and said shaft (see FIG. 4), said at least one compliant member configured to allow said piston assembly to accommodate deflection of a fork assembly (see ¶ 0047, compliant member (10) is made of a “resiliently deformable resin”); and a seal (9) configured to provide an air tight seal between said piston and a wall of an air chamber (see ¶ 0045).
Furukawa does not disclose a fastener configured to couple said piston with said shaft.
Cheever discloses a piston assembly (see Abstract, FIG. 3) comprising a piston (40), a shaft (42) and a fastener (48) configured to couple said piston with said shaft (see FIG. 3).
It would have been obvious to combine the fastener of Cheever with the piston assembly of Furukawa to ensure that the piston remains securely attached to the shaft during operation.
Regarding claim 2, Furukawa discloses that said piston comprises an extended body length to increase an overlap of said piston with said shaft (see FIG. 4).
Regarding claim 5, Furukawa discloses a glide band (10).
Regarding claim 6, Furukawa discloses that said glide band comprises: at least one groove (10e), said at least one groove configured to allow airflow around said glide band (see ¶ 0049).
Regarding claim 7, Furukawa discloses that said glide band comprises: a split, said split configured for use in an installation of said glide band (see ¶ 0047).
Regarding claim 8, Furukawa discloses that a height of said glide band is configured to prevent said piston from rocking within said air chamber (see FIG. 4).
Regarding independent claim 33, Furukawa discloses a piston assembly (see Abstract; FIGS. 1-4) comprising: a piston (4); a shaft (5); at least one compliant member (10) coupled with said piston (see FIG. 4), said at least one compliant member coupled with said shaft (see FIG. 4), said compliant member configured to allow for deflection of said piston (see ¶ 0047, compliant member (10) is made of a “resiliently deformable resin”); and a seal (9) configured to provide a seal between said piston and a wall of an air chamber (see ¶ 0045).
Furukawa does not disclose a fastener configured to couple said piston with said shaft.
Cheever discloses a piston assembly (see Abstract, FIG. 3) comprising a piston (40), a shaft (42) and a fastener (48) configured to couple said piston with said shaft (see FIG. 3).
It would have been obvious to combine the fastener of Cheever with the piston assembly of Furukawa to ensure that the piston remains securely attached to the shaft during operation.
Regarding claim 34, Furukawa discloses that said at least one compliant member is configured to allow said shaft to deflect with respect to said piston (see ¶ 0047).
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
May 15, 2026
Prosecution Insights