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 .
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.
Claims 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kwon KR 1020200033219.
Re clm 5, Kwon discloses a suspension bearing unit (Fig. 2) comprising: a lower support cap (740), an upper bearing cap (710), and at least one bearing (720) disposed between the lower support cap and the upper bearing caps, wherein the lower support cap includes at least one first set of circumferentially spaced recesses (radially inner recesses 7417, Fig. 4) on an annular radial portion of the cap forming a first ring of recesses and at least one second set of circumferentially spaced recesses (radially outer recesses 7417) on the annular radial portion forming a second ring of recesses, wherein at least portions of the recesses of the second set of recesses are located radially outward of radially outermost portions of the recesses of the first set of recesses, wherein the annular radial portion includes a radially outer circumferential edge (radially outer portion of 740) and a radially inner circumferential edge (radially inner portion of 745 that meets 743), wherein the first set of recesses is spaced radially outward from the radially inner circumferential edge and the second set of recesses is spaced radially inward from the radially outer circumferential edge (as shown in Fig. 4), and the recesses of the first set of recesses are separated from the recesses of the second set of recess by oblique webs of material (7417b).
Although Kwon discloses a variety of recess and web shapes and arrangements in the figures (Fig. 4-7), Kwon does not disclose the recesses of the first and second sets of recesses are arranged such that a plurality of uninterrupted radial webs extend from the radially inner circumferential edge to the radially outer circumferential edge, and each of the oblique webs of material extending from a first one of the radial webs to a second one of the radial webs.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide the recesses of the first set of recesses are separated from the recesses of the second set of recesses by non-radial webs of material, each of the non-radial webs of material extending from a first one of the radial webs to a second one of the radial webs, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 6, Kwon further discloses each of the radial webs has a constant cross-section. The improvement of Kwon would further provide each of the non-radial webs has a constant cross-section.
Re clm 7, Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose one recess of the first set of recesses and one recess of the second set of recesses are located between each circumferentially adjacent pair of the uninterrupted radial webs.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide one recess of the first set of recesses and one recess of the second set of recesses are located between each circumferentially adjacent pair of the uninterrupted radial webs, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 8, Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose exactly one recess of the first set of recesses and exactly one recess of the second set of recesses are located between each circumferentially adjacent pair of the uninterrupted radial webs.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide exactly one recess of the first set of recesses and exactly one recess of the second set of recesses are located between each circumferentially adjacent pair of the uninterrupted radial webs, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 9, Kwon discloses the first and second sets of recesses are triangles (Fig. 4).
Re clm 10, Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose each of the recesses of the second set of recesses is larger than each of the recesses of the first set of recesses.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide each of the recesses of the second set of recesses is larger than each of the recesses of the first set of recesses, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 11, Kwon further discloses the recesses of the first set of recesses form a first circumferentially regularly repeated pattern, and wherein the recesses of the second set of recesses form a second circumferentially regularly repeated pattern (as shown in Fig. 4).
Re clm 12, Kwon further discloses an elastomeric shock-absorbing element overmolded on the cap such that portions of the shock-absorbing element extend into the recesses of the first set of recesses and into the recesses of the second set of recesses (as shown by Fig. 3).
Re clm 13¸ Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose adjacent pairs of the recesses of the first set of recesses are disposed symmetrically relative to a first radial line, and wherein adjacent pairs of the recesses of the second set of recesses are disposed symmetrically relative to a second radial line.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide adjacent pairs of the recesses of the first set of recesses are disposed symmetrically relative to a first radial line, and wherein adjacent pairs of the recesses of the second set of recesses are disposed symmetrically relative to a second radial line, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 14, Kwon further discloses the recesses of the first and second sets of recesses are triangular (Fig. 4).
Re clm 15¸ Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose the recesses of the first and second sets of recesses are right triangles having a hypotenuse, and wherein the hypotenuses of the recesses of the first set of recesses face the hypotenuses of the recesses of the second set of recesses.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide the recesses of the first and second sets of recesses are right triangles having a hypotenuse, and wherein the hypotenuses of the recesses of the first set of recesses face the hypotenuses of the recesses of the second set of recesses, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Re clm 16, Although Kwon discloses a variety of recess shapes and arrangements in the figures, Kwon does not disclose the plurality of uninterrupted radial webs extend purely radially.
It would have been obvious to one of ordinary skill in the art to modify Kwon and provide the plurality of uninterrupted radial webs extend purely radially, since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B). The arrangement of the triangles recesses of Applicant’s figures relative to the triangles shown in Kwon does not alter the function of the recesses nor do they provide any improvement over the prior art’s recesses.
Response to Arguments
Applicant's arguments filed 29 November 2025 have been fully considered but they are not persuasive.
Applicant argues that the rejection does not identify the modification to Kwon that is necessary to arrive at the subject matter of claim 5. This is incorrect. The rejection of claim 5 replaces the triangle pattern shown in Fig. 4 of Kwon with the triangle pattern of the invention. Put another way, the rejection has replaced the shape (pattern) of the recesses of Kwon with the any regular pattern of triangles since it has been held that shape of a device is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed device was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04(IV)(B).
Applicant argues that the rejection does not indicate which embodiment of Kwon is to modified, however, this is incorrect. The only two Figures recited in the rejection are Fig. 2 of Kwon which shows the general arrangement of the suspensions bearing and Fig. 4 of Kwon which discloses the triangular recesses. It is clear that Fig. 4 is being modified by the rejection.
Applicant argues that without impermissibly considering the present disclosure, a person of ordinary skill I the art would have no way to arrive at the invention of claim 5, however this incorrect. Kwon clearly discloses multiple designs for the recesses (7417) in Figures 4-7. Kwon states that “a flange recess portion 7417 and a flange protrusion portion 7417b are formed on the lower surface of the flange portion 741… so that the spring pad 760 and the lower part ( 740) prevents the relative rotational movement and prevents radial movement of the spring pad 760 due to the both ends of the flange recess 7417 being blocked” in paragraph [0072]. Kwon further states “the flange recesses are spaced apart from each other and are formed in a double row along the circumferential direction”, “the flange protrusion is characterized by forming a zigzag shape along the circumferential direction” in paragraph [0023] and “a plurality of triangles” in paragraph [0075]. Kwon also states “the present invention has been described with reference to the embodiment shown in the drawings, but this is only exemplary, and anyone skilled in the art will understand that various modifications and equivalent other embodiments are possible therefrom” in paragraph [0088]. It is clear from these statements the spirit of the invention is recesses that prevent relative movement between the spring pad and the lower part.
It is further noted that Applicant’s recesses are used for the same exact purpose: to “improve the engagement of the shock-absorbing element” in paragraph [0028] of Applicant’s specification. Therefore, it is clear that the shape of Applicant’s recesses and those of Kwon do not differ in function. Furthermore, it is clear based on the reference that one of ordinary skill in the art would consider Applicant’s particular arrangement of the triangles and web shapes to be an obvious variant of the design shown in Kwon. Applicant cannot secure a patent by a slight modification in shape, when such a modification of shape provides no improvement over the prior art. If such were the case, Applicant could merely “fill in” one of the recesses of Kwon and assert that the shape/pattern was different from Kwon and therefore further assert that a patent should be granted even though such a minimal change in shape does not affect the function of Kwon in any meaningful way.
The examiner has demonstrated that Kwon disclosed a similar recess/web shape to the invention (Figure 4 of Kwon shows triangles recesses in two sets of rings). Kwon further acknowledges other possible shapes and arrangements (Fig. 4-7) and that Kwon’s disclosure is not limited to the specific shapes/arrangement disclosed but rather to the “spirit” of the invention. Kwon also discloses the recesses for the same reason as the invention. While the examiner agrees with Applicant that In re Dailey does not stand for the broad proposition that “shape of a device is a matter of design choice” under all circumstances, the examiner has laid out the specific circumstances in the instant case which separate it from “all circumstances”. Providing a slightly different shaped arrangement of recesses and webs with no change in how the device would function is specific and not “under all circumstances”. The fact that Kwon explicitly states his shape does the same that as that of the invention destroys any argument that the particular shape of Applicant’s claimed invention was significant over what is already disclosed in the prior art.
The examiner notes that Applicant has failed to explain how or why the shape of the invention provides any benefit over the prior art. The difference in shape between Kwon and the invention are shown below. The only difference in shape being the size of the triangles and the radial rib that runs through them.
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At no point in Applicant’s argument has he argued that his shape provides any unique or even different function to that of the prior art. Put another way, Applicant has not provided any persuasive evidence that the particular shape of the invention is significant over the prior art.
Applicant argues that the facts of Dailey are not discussed or compared with the facts of the present case. The facts of Dailey mirror the instant case very closely. The triangular shaped arrangement of Kwon in Fig. 4 can be likened to the prior art bottle with a hemispherical bottom section of Dailey. The similar, but slightly different triangular arrangement of the instant Application can be considered like the “portion of a sphere less than a hemisphere”. The facts of Dailey are extremely close the instant case. Kwon discloses larger triangle recesses which are not split in half (via a radial rib) like the invention. Both Kwon and the invention provide the recesses and the specific shapes therefore to prevent movement between the spring pad and the lower cap. Both Kwon and the invention disclose very similar shapes to begin with: two rings of triangles that form recesses. There is no functional difference between the two recess designs.
Still further, the examiner has provided the WO 2020-016356 reference with a very similar recess pattern in Fig. 6. The pattern is almost exactly like the claimed pattern of the invention. The examiner provided the reference as evidence that such a triangular pattern was known, even if Applicant could reasonably argue that the reliance on case law alone was insufficient. Applicant has failed to address the cited prior art reference in any way.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2020-016356 discloses a very similar recess pattern in Fig. 6.
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 ALAN B WAITS whose telephone number is (571)270-3664. The examiner can normally be reached Monday-Thursday from 6-4 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John R Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALAN B WAITS/Primary Examiner, Art Unit 3617