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 of Invention I in the reply filed on July 20, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 20, 2026.
NOTE: Applicant has amended Claims 8-19 (which encompass subject matter from Inventions II and III) to all depend from elected independent Claim 1. In doing this, applicant then contends that now all Claims 1-19 read on the elected Invention I and should be examined. In response to this, even though applicant has amended Claims 8-19 to all depend from Claim 1, Claim 1 is not a generic claim and Claims 8-12 (forming part of Invention II) contain subject matter different from that of Claim 1 (Invention I) and its subject matter. Claims 13-19 (forming part of Invention III) also contain subject matter different from that of Claim 1 (Invention I) and its subject matter. Claims 8-12 (Invention II) are drawn to a suspension with an air chamber, check valve, and an air pressure change structure for attachment of a pump. Claims 13-19 (Invention III) are drawn to a suspension with legs, a floating piston, and an air pressure adjuster. Claims 1-7 (Invention I) is drawn to a suspension with a compensator assembly and an air introduction system. Thus, Claims 8-19 do not encompass the suspension defined in Invention I and these claims have not been examined.
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.
Claim(s) 1, 2, and 4-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 8,464,850 to Fox.
Regarding Claim 1, Fox discloses a suspension 1 for a vehicle (see Figure 3) having all the features of the instant invention including: a compensator assembly 20 attached to a leg 10 (see Figure 3 and column 6 lines 39-49), wherein the compensator assembly 20 comprises: a compensator shaft 25/25’ attached to an end 11 of leg 10 and having a free end (see Figure 3 and the end of element 25/25’ nearest element 12), and a floating piston 25a substantially surrounding the compensator shaft 25/25’ and positioned between the free end (i.e., the end of shaft 25/25’ nearest element 12) of the compensator shaft 25/25’ and the end 11 of the leg 10 and defining a boundary of an air chamber A1/C (see Figure 3), and an air introduction system (see Figure 4B) comprising: a first valve 80 extending between an exterior of the leg 10 and the interior of the air chamber A1/C (see Figures 3 and 4B and column 9 lines 51 et al), and a second valve 50a dividing the air chamber A1/C into a first air chamber portion C and a second air chamber portion A1 (see Figure 3 and column 9 lines 51 et al).
Regarding Claim 2, Fox further discloses that the first air chamber portion C has a first volume (see Figure 3), and the second air chamber portion A1 has a second volume (see Figure 3), and the first volume is larger than the second volume (see Figure 3).
Regarding Claim 4, Fox further discloses that opening the first valve 80 opens the second valve 50a (see column 9 lines 51 et al).
Regarding Claim 5, Fox further discloses a rotatable adjuster 67’ is attached to the compensator shaft 25/25’ (see Figure 4B).
Regarding Claim 6, Fox further discloses that the second valve 50a may open without opening the first valve 80 (note that valve 50a is certainly capable of opening on its own without opening valve 80 due to pressure fluctuations within the air chamber).
Regarding Claim 7, Fox further discloses a fixed piston 12 attached adjacent (i.e., near) the free end of the compensator shaft 25/25’ (see Figure 4A).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 8,464,850 to Fox.
Regarding Claim 3, Fox discloses most all the features of the instant invention as applied above, except for the first volume of the first air chamber portion being at least twice as large as the second volume of the second air chamber portion.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have designed the suspension of Fox so that the first volume of the first air chamber portion is at least twice as large as the second volume of the second air chamber portion as a matter of design preference dependent upon the desired overall size of the leg, overall size of the bicycle for the leg, and desired degree of air adjustment within the leg.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 6,592,136 to Becker et al., PG Publication No. 2016/0001846 to Pye, U.S. Patent No. 9,481,425 to Shirai, U.S. Patent No. 9,821,878 to McAndrews et al., and Chinese Patent No. CN 116838740 to Zou et al all disclose suspensions similar to applicant’s.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA RODRIGUEZ whose telephone number is (571)272-7122. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM.
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PAMELA RODRIGUEZ
Primary Examiner
Art Unit 3616
/PAMELA RODRIGUEZ/ Primary Examiner, Art Unit 3616 09/15/26
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