DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 17 is objected to because of the following informalities: Claim 17 recites the limitation “a main flow path” twice (Lines 2, 4). The applicant should amend the line 4 iteration to --the main flow path--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-22 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.
Claims 1, 7 and 17 each recite “a working fluid as it passes through said main flow path of said electronic valve”. The claimed electronic valve corresponds to an electric actuator (105) located partly inside of housing (110), not a hollow body capable of forming a fluid flow path. It is unclear how a working fluid can pass through the seemingly-solid electronic valve (Fig. 2) as claimed. All of the claimed features are part of the electronic valve interface (100), not the minimally-illustrated valve (105).
Claims 2, 9 and 18 each recite “said outlet cover shim stack and said blow-off shim stack are individually tunable”. Claim 15 recites “wherein said first cracking pressure is configured to be tuned by adjusting a deload shim coupled with said outlet cover shim stack”. Claim 16 recites “wherein said second cracking pressure is configured to be tuned by adjusting a deload shim coupled with said blow-off shim stack”. The shim stacks (125, 135) are radially-symmetric spring washers arranged in series. Although their collective stiffnesses can be adjusted by tightening or loosening the retaining nut (140), it is unclear how each shim could be adjusted (“tuned”) independently of one another as claimed. The Examiner has interpreted these limitations as describing shim replacement based on the disclosure of paragraph [0048] of the specification.
Claim 13 recites “wherein said electronic valve interface is removably coupleable with said electronic valve such that said electronic valve interface can be coupled with a legacy version of said electronic valve”. The scope of the claim is unclear without knowing what properties the claimed “legacy version of said electronic valve” has.
Claim Rejections - 35 USC § 103
5. 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 (i.e., changing from AIA to pre-AIA ) 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.
6. 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.
7. Claim(s) 1-4, 6-10, 12-19, 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (US 2020/0032871).
As per claim 1, Yamashita an electronic valve interface (Fig. 2; [0118]) comprising:
a housing (23, 24), said housing comprising:
an outlet cover shim stack land (23);
a threaded housing barrel (24; [0038]); and
said housing configured to couple with an electronic valve (66; [0043]), said electronic valve comprising a main flow path (57, 56, 71, 69, 70, 52, 51, Fig. 2; [0062]);
an outlet cover (94), said outlet cover configured to cover an outlet (70) of said electronic valve;
an outlet cover shim stack (The stack includes disk valve 47 and spacer 48) located axially on said threaded housing barrel, said outlet cover shim stack comprising a first cracking pressure (Opening pressures are a feature of spring disk valves, [0061]), said outlet cover shim stack operating in conjunction with said electronic valve to provide a pressure to a working fluid ([0061]) as it passes through said main flow path of said electronic valve;
a blow-off piston (5) located axially on said threaded housing barrel, said blow-off piston comprising a blow-off flow path (20, Fig. 2; [0061]) distinct from said main flow path of said electronic valve at least when said electronic valve is not in a closed state;
a blow-off shim stack (43) located axially on said threaded housing barrel, said blow-off shim stack comprising a second cracking pressure (Opening pressures are a feature of spring disk valves, [0062]); and
a threaded retaining nut (26) located axially on said threaded housing barrel, said threaded retaining nut to operate in conjunction with said outlet cover shim stack land to provide a single retaining force for each of said outlet cover shim stack, said blow-off shim stack, and said blow-off piston (26, 43, 47, 48, 5, 23, Fig. 2; [0038]), where said outlet cover shim stack and said blow-off shim stack are opposed directional shim stacks (43, 47, 48, Fig. 2; [0061], [0062]).
Although it is probable that the single disk valve (47, 48) can be opened with less force than the multi-disk stack (43), Yamashita does not explicitly say so. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make each of the disk valves from the same type of material with same thickness in order to simplify manufacturing. Such a modification would also result in the second cracking pressure being greater than the first cracking pressure because there are more spring valve disks in Yamashita’s blow-off shim stack (43) than in the outlet cover shim stack (47, 48). Additionally, it would have been obvious result of routine design and/or experimentation to prioritize flow through the actively-controlled valve (53) over the passive valve (5) in order to maximize user control over damping (See MPEP 2144.05(II)(A)).
PNG
media_image1.png
978
635
media_image1.png
Greyscale
As per claim 2, Yamashita discloses the electronic valve interface of claim 1. Yamashita further discloses wherein said outlet cover shim stack and said blow-off shim stack are individually tunable (Valve disks 43 and 47 are replaceable).
As per claim 3, Yamashita discloses the electronic valve interface of claim 1. Yamashita further discloses wherein said first cracking pressure of said outlet cover shim stack is configured to provide resistance to said working fluid at least when said electronic valve is in a least restrictive setting (The cracking pressure of the valve stack 47 is independent of the electronic components, [0040], [0062]).
As per claim 4, Yamashita discloses the electronic valve interface of claim 1. Yamashita further discloses wherein said outlet cover shim stack has a radially symmetric land (Seat portion 49 is annular; [0038]).
As per claim 6, Yamashita discloses the electronic valve interface of claim 1. Yamashita further discloses wherein said housing is integral with said electronic valve (The active and passive valve components are interconnected, Fig. 2; [0118]).
As per claim 7, Yamashita discloses a valve assembly (Abstract) comprising:
an electronic valve (66; [0043]), said electronic valve comprising:
a main flow path (57, 56, 71, 69, 70, 52, 51, Fig. 2; [0062]); and
an outlet (70); and
an electronic valve interface (Fig. 2; [0118]) coupled with said electronic valve, said electronic valve interface comprising:
a housing (23, 24), said housing comprising:
an outlet cover shim stack land (23); and
a threaded housing barrel (24; [0038]);
an outlet cover (94), said outlet cover configured to cover said outlet of said electronic valve (70);
an outlet cover shim stack (47, 48) located axially on said threaded housing barrel, said outlet cover operating in conjunction with said electronic valve to provide a pressure to a working fluid ([0061]) as it passes through said main flow path of said electronic valve, said outlet cover shim stack having a first cracking pressure (Opening pressures are a feature of spring disk valves, [0061]);
a blow-off piston (5) located axially on said threaded housing barrel, said blow-off housing comprising a blow-off flow path (20, Fig. 2; [0061]) distinct from said main flow path of said electronic valve at least when said electronic valve is not in a closed state;
a blow-off shim stack (43) located axially on said threaded housing barrel, said blow-off shim stack comprising a second cracking pressure (Opening pressures are a feature of spring disk valves, [0062]); and
a threaded retaining nut (26) located axially on said threaded housing barrel, said threaded retaining nut to operate in conjunction with said outlet cover shim stack land to provide a single retaining force for each of said outlet cover shim stack, said blow-off shim stack, and said blow-off piston (26, 43, 47, 48, 5, 23, Fig. 2; [0038]), where said outlet cover shim stack and said blow-off shim stack are opposed directional shim stacks (43, 47, 48, Fig. 2; [0061], [0062]).
Although it is probable that the single disk valve (47, 48) can be opened with less force than the multi-disk stack (43), Yamashita does not explicitly say so. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make each of the disk valves from the same type of material with same thickness in order to simplify manufacturing. Such a modification would also result in the second cracking pressure being greater than the first cracking pressure because there are more spring valve disks in Yamashita’s blow-off shim stack (43) than in the outlet cover shim stack (47, 48). Additionally, it would have been obvious result of routine design and/or experimentation to prioritize flow through the actively-controlled valve (53) over the passive valve (5) in order to maximize user control over damping (See MPEP 2144.05(II)(A)).
As per claim 8, Yamashita discloses the valve assembly of claim 7. Yamashita further discloses wherein said outlet cover shim stack is configured to increase resistance to said working fluid passing through said main flow path of said electronic valve at least when said electronic valve is in a least restrictive setting (The cracking pressure of the valve stack 47 is independent of the electronic components, [0040], [0062]).
As per claim 9, Yamashita discloses the valve assembly of claim 7. Yamashita further discloses wherein said outlet cover shim stack and said blow-off shim stack are individually tunable (Valve disks 43 and 47 are replaceable).
As per claim 10, Yamashita discloses the valve assembly of claim 7. Yamashita further discloses wherein said outlet cover shim stack has a radially symmetric land (Seat portion 49 is annular; [0038]).
As per claim 12, Yamashita discloses the valve assembly of claim 7. Yamashita further discloses wherein said electronic valve interface is integrated with said electronic valve (The active and passive valve components are interconnected, Fig. 2; [0118]).
As per claim 13, Yamashita discloses the electronic valve interface of claim 7. Yamashita further discloses wherein said electronic valve interface is removably coupleable with said electronic valve such that said electronic valve interface can be coupled with a legacy version of said electronic valve (The damper assembly is capable of being used with different electronic elements, 21, Fig. 2; [0022]).
As per claim 14, Yamashita discloses the electronic valve interface of claim 7. Yamashita further discloses wherein said single retaining force is generated for each of said outlet cover shim stack and said blow-off shim stack via a clamp load from said threaded retaining nut (26, 43, 47, 48, 5, 23, Fig. 2; [0038]).
As per claim 15, Yamashita discloses the electronic valve interface of claim 7. Yamashita further discloses wherein said first cracking pressure is configured to be tuned by adjusting a deload shim (Spacer 48 is replaceable) coupled with said outlet cover shim stack.
As per claim 16, Yamashita discloses the electronic valve interface of claim 7. Yamashita further discloses wherein said second cracking pressure is configured to be tuned by adjusting a deload shim (The shims of 43 are replaceable) coupled with said blow-off shim stack.
As per claim 17, Yamashita discloses a method for increasing resistance to flow of a working fluid ([0061]) through a main flow path (57, 56, 71, 69, 70, 52, 51, Fig. 2; [0062]) of an electronic valve (66; [0043]) when said electronic valve is in a least restrictive setting (The cracking pressure of the valve stack 47 is independent of the electronic components; [0040], [0062]), said method comprising:
providing an electronic valve (66; [0043]), said electronic valve including an outlet (70) and a main flow path (57, 56, 71, 69, 70, 52, 51, Fig. 2; [0062]); and
providing an electronic valve interface (Fig. 2; [0118]) for said electronic valve, said electronic valve interface comprising:
a housing (23, 24), said housing comprising:
an outlet cover shim stack land (23); and
a threaded housing barrel (24; [0038]);
an outlet cover (94), said outlet cover configured to cover said outlet of said electronic valve (70);
disposing an outlet cover shim stack (47, 48) located axially on said threaded housing barrel, said electronic valve interface operating in conjunction with said outlet cover to provide a resistance to a working fluid ([0061]) as it passes through said main flow path of said electronic valve;
disposing a blow-off piston (5) axially on said threaded housing barrel, said blow-off housing comprising a blow-off flow path (20, Fig. 2; [0061]) distinct from said main flow path of said electronic valve at least when said electronic valve is not in a closed state;
disposing a blow-off shim stack (43) axially on said threaded housing barrel, said blow-off shim stack comprising a second cracking pressure (Opening pressures are a feature of spring disk valves, [0062]); and
providing a threaded retaining nut (26) located axially on said threaded housing barrel, said threaded retaining nut to operate in conjunction with said outlet cover shim stack land (43, 47, 48, Fig. 2; [0061], [0062]).
Yamashita discloses a first cracking pressure (Opening pressures are a feature of spring disk valves, [0061]). Although it is probable that the single disk valve (47, 48) can be opened with less force than the multi-disk stack (43), Yamashita does not explicitly say so. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make each of the disk valves from the same type of material with same thickness in order to simplify manufacturing. Such a modification would also result in the second cracking pressure being greater than the first cracking pressure because there are more spring valve disks in Yamashita’s blow-off shim stack (43) than in the outlet cover shim stack (47, 48). Additionally, it would have been obvious result of routine design and/or experimentation to prioritize flow through the actively-controlled valve (53) over the passive valve (5) in order to maximize user control over damping (See MPEP 2144.05(II)(A)).
As per claim 18, Yamashita discloses the method for increasing resistance to flow of said working fluid through said main flow path of said electronic valve as recited in claim 17. Yamashita discloses further comprising: configuring said outlet cover shim stack and said blow-off shim stack such that said outlet cover shim stack and said blow-off shim stack are individually tunable (Valve disks 43 and 47 are as replaceable).
As per claim 19, Yamashita discloses the method for increasing resistance to flow of said working fluid through said main flow path of said electronic valve as recited in claim 17. Yamashita discloses further comprising: providing said outlet cover shim stack with a radially symmetric land (Seat portion 49 is annular; [0038]).
As per claim 21, Yamashita discloses the method for increasing resistance to flow of said working fluid through said main flow path of said electronic valve as recited in claim 17. Yamashita discloses further comprising: integrating said electronic valve interface with said electronic valve (The active and passive valve components are interconnected, Fig. 2; [0118]).
As per claim 22, Yamashita discloses the method for increasing resistance to flow of said working fluid through said main flow path of said electronic valve as recited in claim 17. Yamashita discloses further comprising: coupling said threaded retaining nut with said outlet cover shim stack land such that a single adjustment to said threaded retaining nut generates a single retaining force for each of said outlet cover shim stack and said blow-off shim stack (26, 43, 47, 48, 5, 23, Fig. 2; [0038]).
8. Claim(s) 5, 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (US 2020/0032871) in view of Montagna (US 2023/0400081).
As per claim 5, Yamashita discloses the electronic valve interface of claim 1. Although it is probable that Yamashita discloses wherein said outlet cover shim stack has a radially symmetric contact area for said working fluid (47; [0038]), he does not explicitly disclose the shape of the disk valves.
Montagna discloses a damper assembly wherein said outlet cover shim stack has a radially symmetric contact area for said working fluid (154; [0034]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the disk valves of Yamashita by forming them as flat, radially-symmetric disks as taught by Montagna in order to evenly distribute force and simplify assembly and manufacturing.
As per claim 11, Yamashita discloses the valve assembly of claim 7. Although it is probable that Yamashita discloses wherein said outlet cover shim stack has a radially symmetric contact area for said working fluid (47; [0038]), he does not explicitly disclose the shape of the disk valves.
Montagna discloses a damper assembly wherein said outlet cover shim stack has a radially symmetric contact area for said working fluid (154; [0034]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the disk valves of Yamashita by forming them as flat, radially-symmetric disks as taught by Montagna in order to evenly distribute force and simplify assembly and manufacturing.
As per claim 20, Yamashita discloses the method for increasing resistance to flow of said working fluid through said main flow path of said electronic valve as recited in claim 17. Although it is probable that Yamashita discloses further comprising: providing said outlet cover shim stack with a radially symmetric contact area for said working fluid (47; [0038]), he does not explicitly disclose the shape of the disk valves.
Montagna discloses a damper assembly providing said outlet cover shim stack with a radially symmetric contact area for said working fluid (154; [0034]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the disk valves of Yamashita by forming them as flat, radially-symmetric disks as taught by Montagna in order to evenly distribute force and simplify assembly and manufacturing.
Response to Arguments
9. Applicant's arguments filed 6/26/2026 have been fully considered but they are not persuasive.
Regarding the indefiniteness rejections of claims 1, 7 and 17, the applicant argues that:
“clear support for the present Claim language is found, at least, at paragraph [0024] of the present Specification and the Figures corresponding thereto” (Page 15, ¶2).
The rejection was for a lack of clarity, not a lack of support. Although the electronic valve interface (100) includes various flow paths, the valve (105) itself appears to be solid (See Figure 2). All of the claimed features are part of the electronic valve interface (100), not the minimally-illustrated valve (105). It remains unclear how the solid electronic valve (105) can be reasonably construed as comprising the main flow path (180) located outside of it. The Examiner suggests redefining the main flow path as being part of the electronic valve interface, rather than the electronic valve.
Regarding the indefiniteness rejections of claims 2, 9 and 18, the applicant argues that:
“the Claims recite that the "outlet cover shim STACK" and the "blow-off shim STACK" are individually tunable. Applicants respectfully point out that clear support for the present Claim language is found, at least, at paragraphs [0040]-[0044] of the present Specification and the Figures corresponding thereto” (Page 15, ¶3).
The Examiner did not assert that the claim lacked support in the written description, but that it was unclear what is required by an “individually tunable” shim stack of an invention that lacks any obvious way of independently adjusting the stiffness of shim stacks (125, 135). The shim stacks are biased in series by the same retaining nut (140), precluding independent adjustment by nut rotation.
Regarding the indefiniteness rejections of claim 13, the applicant argues that:
“clear support for the present Claim language is found, at least, at paragraph [0040] of the present Specification and the Figures corresponding thereto” (Page 15, ¶4).
The Examiner did not assert that the claim lacked support in the written description, but that it was unclear what the claim required. It remains unclear what features are encompassed by the limitation “can be coupled with a legacy version of said electronic valve”.
Regarding the prior art rejection of claims 1, 7 and 17 under Yamashita (US 2020/0032871), the applicant argues that:
“Yamashita clearly describes (at paragraph [0020] of Yamashita) that its "passage 20" is a main flow path. In fact, "passage 20" is the compression flow path. Yamashita states, at paragraph [0020] thereof: "The piston valve 5 includes an extension-side passage 19 and a compression-side passage 20. The extension-side passage 19 serves as a first passage having an upper end opened to the cylinder upper chamber 2A. The compression-side passage 20 serves as a second passage having a lower end opened to the cylinder lower chamber 2B." Thus, Applicants respectfully point out that Yamashita does not show or suggest, at least, "a blow-off piston located axially on said threaded housing barrel, said blow-off piston comprising a blow-off flow path distinct from said main flow path of said electronic valve" as is recited in newly amended Independent Claim 1” (Pages 17-18).
The main distinction between the main flow path and the blow-off flow path in the invention is that fluid flowing through the main flow path (180) is actively damped, while fluid flowing through the blowoff flow path (185) is passively damped. In Yamashita, the main and blowoff flow paths are also distinguished in the same way. The prior art is not required to use identical names for corresponding features in order to disclose a claimed invention. Yamashita discloses “a blow-off piston (5) located axially on said threaded housing barrel (24; [0038]), said blow-off piston comprising a blow-off flow path (20, Fig. 2; [0061]) distinct from said main flow path (57, 56, 71, 69, 70, 52, 51, Fig. 2; [0062]) of said electronic valve” a required by the claims.
Conclusion
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN M BOWES whose telephone number is (571)270-0460. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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.
STEPHEN M. BOWES IV
Examiner
Art Unit 3616
/STEPHEN M BOWES/Examiner, Art Unit 3616
/BRADLEY T KING/Primary Examiner, Art Unit 3616
Prosecution Insights