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 .
Response to Arguments
Applicant Contends, in Applicant Arguments filed 20th August 2026, that prior art of record Cenodoya (US 20210088098 A1) “neither discloses nor suggest that the valve on “S” opens in a state where the first damping valve is closed in the low-piston speed region.” This argument is not persuasive. Firstly, the claim merely states that the valve is “configured to open with the first damping valve closed”, this does not require explicit disclosure that the valve on “S” opens in a state where the first damping vale is closed in the low piston speed region. Secondly, the limitations argued are functional in nature, as the combination of prior art of record Yamashita (JP 2020016288 A) in view of Cendoya, as used in rejection of independent Claim 1 in the Non-Final Rejection filed 20th April 2026, teaches the structural limitations of Claim 1 and a similar structured shock absorber to what is disclosed in the specification of the instant application, it is believed the claimed functional limitations are inherent to the taught structure. The MPEP states that if a functional limitation is determined to be inherent “The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on” (see MPEP 2114). It is not understood, considering Applicants arguments, how the shock absorber of Yamashita modified by Cendoya does not meet the claimed limitations of “configured to open with the first damping valve closed when a piston speed is equal to or greater than a first predetermined threshold and less than or equal to a second predetermined threshold”. Additionally, Applicant argues “Cendoya is a check valve. Accordingly, one of ordinary skill in the art would not be motivated to attempt to combine Yamashita with Cendoya.” This is also not persuasive. While it is agreed the valve of Cendoya can be considered a “check valve” this is not a mutually exclusive label from “damping valve” as claimed in Claim 1. Furthermore, merely disclosing a “check valve” does not dissuade an attempt to combine Yamashita with Cendoya as one of ordinary skill in the art would understand the benefits of using the valve of Cendoya to control the damping characteristics of the shock absorber of Yamashita. Lastly, Applicants disclosure also contains a plurality of “check valves” referred to as “damping valves” (see Applicants Fig. 2 and Fig. 4), such that it is not understood how Cendoya being a “check valve” prevents it from also being a “damping valve”. Therefore, the grounds of rejection are maintained as seen below.
Applicant Contends, in Applicant Arguments filed 20th August 2026, that prior art of record Yamashita’s partition member and passage portion “do not correspond to the claimed partition member and claimed passage portion” and that “Yamashita does not disclose a structure as claimed”. This argument is not persuasive. As noted by Applicant and stated in the Non-Final Rejection, Yamashita discloses a partition member (69) and passage portion (103) as claimed in Independent Claim 1. Applicant merely alleges the partition member and passage portion of Yamashita do not correspond to the claimed partition member and claimed passage portion by quoting the specification of the instant application. Applicants’ arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Additionally, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the grounds of rejection are maintained as seen below.
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 1 and 4-11 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 1, the limitation “configured to open with the first damping valve closed when a piston speed is equal to or greater than a first predetermined threshold and less than or equal to a second predetermined threshold” is recited. From the phrasing of the claim and specifically this limitation it is unclear how the third damping valve could be configured to be open only when the piston speed is equal to or greater than a first predetermined threshold and less than or equal to a second predetermine threshold. The specification and the figures of the application suggest the first damping valve is configured to open in both states. It is understood from Claim 7 and reading the specification that Applicant meant that the first damping valve opens when above the second predetermined threshold such that the system is no longer in a state wherein the third damping valve is open, and the first damping valve is closed. However, as recited in independent Claim 1 the limitation only configured/modifies the third damping valve and not the first damping valve, such that the Claim does not claim the details of Claim 7 or the specification. For purposes of examination the limitation will be interpreted as also configuring/modifying the first damping valve such that the limitation matches the function as disclosed in the application. Claims 4-11 are similarly rejected for depending on a rejected base claim.
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.
Claims 1 and 6-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020016288 A) in view of Cendoya (US 20210088098 A1).
Regarding Claim 1, Yamashita discloses a shock absorber comprising: a cylinder (2) in which a working fluid is sealed; a piston (18) fitted in the cylinder (2) and partitioning an inside of the cylinder (2) into two chambers; a first passage (38) through which a flow of the working fluid occurs due to movement of the piston (18) in one direction; a first damping valve (441) providing resistance to a flow of the working fluid from a chamber on an upstream side (19) to a chamber on a downstream side (20) of the first passage (367); a back pressure chamber (101) causing an internal pressure to act on the first damping valve (441) in a valve closing direction; a case member (56) having an opening at one end, the first damping valve (414) disposed in the opening, and the back pressure chamber (101) formed therein; a second passage (116) introducing the working fluid into the back pressure chamber (101) from the chamber on the upstream side (19); a second damping valve (145) seated on a first seat part (74) formed on a bottom portion of the case member (71) and configured to open due to a pressure of the back pressure chamber (101) to provide resistance to a flow of the working fluid toward the chamber on the downstream side (20); a third damping valve (41), a partition member (69) partitioning an inside of the case member (56) into the back pressure chamber (101) and a separate chamber (102), wherein a passage portion (103) communicating with the separate chamber (102) is formed in a cylindrical portion formed on an outer circumferential side (A) (see Annotated Fig. 3 below) of a bottom portion of the case member (71) (see Fig. 1, Fig. 3 , Annotated Fig. 3 below).
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Annotated Fig. 3
Yamashita does not disclose wherein the third damping valve is seated on a second seat part is formed on the bottom portion of the case member to have a diameter larger than that of the first seat part and configured to open with the first damping valve closed when a piston speed is equal to or greater than a first predetermined threshold and less than or equal to a second predetermined threshold.
Cendoya teaches a shock absorber comprising a first damping valve (394) seated on a first seat part (Q) (see Annotated Fig. 5 above) formed on a bottom portion of the case member (X) and configured to open due to a pressure of the back pressure chamber (R) to provide resistance to a flow of the working fluid toward the chamber on the downstream side (146) and a second damping valve (406) wherein seated on a second seat part (S) formed on the bottom portion of the case member (X) to have a diameter larger than that of the first seat part (Q) (see Fig. 1, Fig. 5, Annotated Fig. 5 below). It should be noted that the “first damping valve” of Cendoya is mapped to teach the “second damping valve” of the instant application and the “second damping valve” of Cendoya is mapped to teach the “third damping valve” of the instant application in combination with Yamashita, as explained below.
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Annotated Fig. 5
It would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the first and second damping valves seated on a bottom portion of a case member of Cendoya with the shock absorber, and specifically the second damping valve, of Yamashita to teach a shock absorber with three damping valves, in order to further control the tuning of the damper system in a simplified and cost reduced manner (see US 20210088098 A1 [Cendoya]; [0014], [0040]). It should be noted that while Cendoya does not explicitly disclose the opening of the first and third damping valve, the shock absorber created by one of ordinary skill in the art using the combination of Yamashita and Cendoya inherently teaches the functional limitation “configured to open with the first damping valve closed when a piston speed is equal to or greater than a first predetermined threshold and less than or equal to a second predetermined threshold” thereby meeting all the claimed limitations of Claim 1.
Regarding Claim 6, Yamashita modified by Cendoya teaches wherein a protruding portion (72) is formed in the case member (71) on an inner circumferential side of the bottom portion of the case member (see JP 2020016288 [Yamashita]; Annotated Fig. 3 above), and the partition member (69) is disposed between the protruding portion (72) and the cylindrical portion (A) (see JP 2020016288 [Yamashita]; Annotated Fig. 3 above) formed on an outer circumferential side of the bottom portion of the case member and having the opening (see JP 2020016288 [Yamashita]; Fig. 3, Annotated Fig. 3 above).
Regarding Claim 7, Yamashita modified by Cendoya teaches wherein the first damping valve (441) (see JP 2020016288 [Yamashita]; Fig. 1) and the third damping valve (406) (see US 20210088098 A1 [Cendoya]; Fig. 5) are configured to open and close in three states including: a first state in which the first damping valve (441) (see JP 2020016288 [Yamashita]; Fig. 1) and the third damping valve (406) (see US 20210088098 A1 [Cendoya]; Fig. 5) are closed when the piston speed is less than the first predetermined threshold; a second state in which the first damping valve (see JP 2020016288 [Yamashita]; Fig. 1) is closed and the third damping valve (406) (see US 20210088098 A1 [Cendoya]; Fig. 5) is open when a piston speed is equal to or greater than the first predetermined threshold and less than or equal to the second predetermined threshold; and a third state in which the first damping valve is open (see JP 2020016288 [Yamashita]; Fig. 1) and the third damping valve (406) (see US 20210088098 A1 [Cendoya]; Fig. 5) is open when the piston speed is greater than the second predetermined threshold (see JP 2020016288 [Yamashita]; Fig. 1, [0093-0094], [0097]).
Regarding Claim 8, Yamashita modified by Cendoya teaches wherein the passage portion (103) is provided inside a passage hole (67) which is formed in the outer cylindrical portion (A) in a radial direction (see JP 2020016288 [Yamashita]; Fig. 3, Annotated Fig. 3 below). It should be noted that further defining the passage hole to be “formed through an outer radial wall of the outer cylindrical portion”, would at least overcome the current prior art and require additional search to verify allowability. Currently, “a radial direction” is too broad, any direction could be interpreted as a “radial direction”.
Regarding Claim 9, Yamashita modified by Cendoya teaches wherein the partition member (69) forms a frequency sensitive member (see JP 2020016288 [Yamashita]; [0054]).
Regarding Claim 10, Yamashita modified by Cendoya teaches wherein the partition member (69) forms a frequency sensitive member (see JP 2020016288 [Yamashita]; [0054]).
Regarding Claim 11, Yamashita modified by Cendoya teaches wherein the partition member (69) forms a frequency sensitive member (see JP 2020016288 [Yamashita]; [0054]).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (JP 2020016288 A) as modified by Cendoya (US 20210088098 A1) in Claim 1, above, further in view of Yamashita (US 20170080767 A1), hence forth referred to as Yamashita 767.
Regarding Claim 4, Yamashita modified by Cendoya teaches the shock absorber according to Claim 1.
Yamashita modified by Cendoya does not teach wherein the partition member includes a metal ring and a lip formed integrally with the metal ring.
Yamashita 767 teaches wherein a partition member (265) includes a metal ring (266) (see [0090]) and a lip (276) formed integrally with the metal ring (266) (see Fig. 4, [0091]).
It would have been obvious to combine the teaching of a partition member made of an integral metal ring and lip of Yamashita 767 with the shock absorber of Yamashita modified by Cendoya in order to passively regulate flow of fluid within the shock absorber, preventing over pressurization damage (see US 20170080767 A1 [Yamashita]; [0100]).
Regarding Claim 5, Yamashita 767 teaches wherein the lip (276) constitutes a check valve configured to restrict a flow in one direction and allow a flow in another direction (see [0100).
Yamashita modified by Cendoya and Yamashita 767 teaches wherein that flow is between the back pressure chamber and the separate chamber (see JP 2020016288 A [Yamashita]; Fig. 3).
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 Shea Irvin whose telephone number is (571)272-9952. The examiner can normally be reached Monday-Friday 7:30 - 17:00.
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/S.W.I./Examiner, Art Unit 3616
/Robert A. Siconolfi/Supervisory Patent Examiner, Art Unit 3616
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