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 .
Status of Claims
The amendment of 11/24/2025 has been entered. Claims 1-13 are currently pending in the application.
Claim Objections
Claim 8 is objected to because of the following informalities:
At claim 8 line 5 “at least one” should read --at least one of--.
Appropriate correction is required.
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.
Claim 12 is 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.
Claim 12 recites the limitation “the valve is configured to be moved in an axial direction with respect to the inner tube of the second member” (emphasis added) in lines 2-3. The limitation is considered new matter. The limitation is not found in the specification and Fig. 4 depicts the valve configured to be moved in the axial direction with respect to the outer tube of the first member.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,037,074 in view of TERUI (JP H02-182514).
Regarding claim 1, the Patent claims a control device for a suspension of a human-powered vehicle (claim 1), the suspension includes a first member (claim 1), a second member telescopically attached to the first member to be telescopically movable relative to the first member (claim 1), and an adjuster adjusting a relative movable amount of the first member and the second member (claim 1), the adjuster including a valve that opens and closes the flow passage (claim 1), the adjuster further including an electric actuator that opens and closes the valve (claim 1), the control device comprising:
an electronic controller configured to electrically control the adjuster to open the valve and close the valve in accordance with relative position information related to a relative position of the first member and the second member (claim 1).
The Patent does not claim the valve being provided to at least one of the first member and the second member.
an electronic controller configured to electrically control the adjuster to open the valve so that fluid flows through the flow passage and close the valve so that fluid does not flow through the flow passage in accordance with relative position information related to a relative position of the first member and the second member (claim 1).
TERUI discloses a control device for a suspension (16) of a vehicle, the suspension includes a first member (i.e., an outer tube, cylinder 50, Fig. 2), a second member (i.e., an inner tube, piston rod 58, Fig. 2) telescopically attached to the first member to be telescopically movable relative to the first member (i.a. Fig. 2), and an adjuster (i.a. switching valve 66 and solenoid 80 taken together, Fig. 2) adjusting a relative movable amount of the first member and the second member (i.a. pg. 6 lines 11-13), the adjuster including a valve (66) that opens and closes a flow passage (88,90)(pg. 5 lines 11-14 and pg. 6 lines 2-6), the adjuster further including an electric actuator (80) that opens and closes the valve (i.a. pg. 5 lines 2-14 and pg. 6 lines 2-6 and 11-13; the solenoid 80 causes the valve to open and close by setting the pressure on plunger 82) the valve being provided to the second member (Fig. 2), the control device comprising:
an electronic controller (34, Fig. 1) configured to electrically control the adjuster to open the valve so that fluid flows through the flow passage and close the valve so that fluid does not flow through the flow passage (S108 and S110 set target damping rate and PWM to control opening and closing of the valve, pg. 7 lines 14-18) in accordance with relative position information related to a relative position of the first member and the second member (S100, pg. 6 lines 16-17; S108 pg. 7 lines 14-16);
to obtain desired damping characteristics using a freely set map of damping force characteristics, greatly increasing the degree of freedom in setting the damping characteristics (pg. 8 lines 9-11).
Absent guidance from Patent claim 1 on the location of the valve, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the valve to the second member as taught by TERUI to provide a conventional arrangement for a valve in a telescopic shock absorber.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the valve of Patent claim 1 to open the valve so that fluid flows through the flow passage and close the valve so that fluid does not flow through the flow passage as taught by TERUI to obtain desired damping characteristics using a freely set map of damping force characteristics, greatly increasing the degree of freedom in setting the damping characteristics.
Claims 2-7 of the instant application are identical to claims 2-7 of the Patent.
Regarding claim 8, the Patent as modified teaches a human-powered vehicle suspension comprising the control device according to claim 1 (claim 8).
The patent further claims the first member (claim 8);
the second member movable relative to the first member (claim 8); and
the adjuster including the valve (claims 1 and 8).
TERUI is relied upon above to teach the valve being provided to at least one the first member and the second member an electric actuator configured to open and close the valve.
Regarding claim 9, the Patent as modified teaches the human-powered vehicle suspension according to claim 8.
TERUI further discloses wherein the first member (50) includes an outer tube (Fig. 2) and the second member (58) includes an inner tube (piston rod 58 is hollow in Fig. 2), the inner tube being provided at an inner side of the first member (Fig. 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to arrange the valve in the suspension claimed by the Patent in the arrangement of TERUI to provide a shock absorber of a standard form in the art.
Regarding claim 10, the Patent as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the valve (66) is provided to the inner tube (58) of the second member (Fig. 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to arrange the valve in the suspension claimed by the Patent in the arrangement of TERUI to provide a shock absorber of a standard form in the art.
Regarding claim 11, the Patent as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the electric actuator (80) is provided to the inner tube (58) of the second member (Fig. 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to arrange the valve in the suspension claimed by the Patent in the arrangement of TERUI to provide a shock absorber of a standard form in the art.
Regarding claim 12, the Patent as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the valve (66) is configured to be moved in an axial direction with respect to the inner tube (58) of the second member (Fig. 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to arrange the valve in the suspension claimed by the Patent in the arrangement of TERUI to provide a shock absorber of a standard form in the art.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,037,074 in view of TERUI (JP H02-182514) and MOURI (US 2011/0012317, provided by Applicant on 09/12/2024 IDS).
Regarding claim 13, the Patent as modified teaches the human-powered vehicle suspension according to claim 8.
MOURI further teaches the same suspension may be provided to both a rear suspension and a front suspension of a front fork of a human-powered vehicle (0025 lines 1-5).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to the suspension claimed by the Patent as a front suspension of a front fork as taught by MOURI to provide shock absorption of force applied to a front wheel to smooth the ride for the passenger.
Claim Rejections - 35 USC § 102
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 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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TERUI (JP H02-182514).
Regarding claim 1, TERUI discloses a control device for a suspension (16) of a human-powered vehicle, the suspension includes a first member (i.e., an outer tube, cylinder 50, Fig. 2), a second member (i.e., an inner tube, piston rod 58, Fig. 2) telescopically attached to the first member to be telescopically movable relative to the first member (i.a. Fig. 2), and an adjuster (i.a. switching valve 66 and solenoid 80 taken together, Fig. 2) adjusting a relative movable amount of the first member and the second member (i.a. pg. 6 lines 11-13), the adjuster including a valve (66) that opens and closes a flow passage (88,90)(pg. 5 lines 11-14 and pg. 6 lines 2-6), the adjuster further including an electric actuator (80) that opens and closes the valve (i.a. pg. 5 lines 2-14 and pg. 6 lines 2-6 and 11-13; the solenoid 80 causes the valve to open and close by setting the pressure on plunger 82) the valve being provided to the second member (Fig. 2), the control device comprising:
an electronic controller (34, Fig. 1) configured to electrically control the adjuster to open the valve so that fluid flows through the flow passage and close the valve so that fluid does not flow through the flow passage (S108 and S110 set target damping rate and PWM to control opening and closing of the valve, pg. 7 lines 14-18) in accordance with relative position information related to a relative position of the first member and the second member (S100, pg. 6 lines 16-17; S108 pg. 7 lines 14-16).
The above underlined limitation is an intended use recitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458 (CCPA 1963). In the instant case, the control device of TERUI is capable of use in a human-powered vehicle having the recited specification.
Regarding claim 2, TERUI discloses the control device according to claim 1.
TERUI further discloses a detector (26) configured to detect the relative position information (pg. 4 lines 8-9).
Regarding claim 3, TERUI discloses the control device according to claim 1.
TERUI further discloses wherein the suspension further includes a first chamber (54) defined by the first member (cylinder 50) and the second member (piston rod 58)(Fig. 2), a second chamber (56) defined by the first member and the second member (Fig. 2), and the flow passage (88,90) fluidly connecting the first chamber and the second chamber (Fig. 2); and
the electronic controller is configured to control the valve in accordance with the relative position information (S100, pg. 6 lines 16-17; S108 pg. 7 lines 14-16).
Regarding claim 4, TERUI discloses the control device according to claim 3.
TERUI further discloses wherein the electronic controller (34) is configured to control the valve (66) in accordance with a comparison result of predetermined relative position information of the first member and the second member (optimum damping force F as a function of piston position X, pg. 7 lines 4-5) and the relative position information (i.e., the current stroke; S100, pg. 6 lines 16-17; S108 pg. 7 lines 14-16).
Regarding claim 5, TERUI discloses the control device according to claim 4.
TERUI further discloses wherein the predetermined relative position information (optimum damping force F as a function of piston position X, pg. 7 lines 4-5) is predetermined in accordance with a predetermined relative movable amount of the first member and the second member (stroke axes of maps in Figs. 4A and 4B).
Regarding claim 6, TERUI discloses the control device according to claim 5.
TERUI further discloses a storage (104) that stores table data indicating a corresponding relationship of the predetermined relative position information and the predetermined relative movable amount (pg. 7 lines 2-6).
Regarding claim 7, TERUI discloses the control device according to claim 3.
TERUI further discloses wherein the electronic controller is configured to control the electric actuator (S108 and S110 set target damping rate and PWM to control opening and closing of the valve, pg. 7 lines 14-18).
Claim Rejections - 35 USC § 103
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over TERUI (JP H02-182514) in view of MOURI (US 2011/0012317, provided by Applicant on 09/12/2024 IDS).
Regarding claim 8, TERUI discloses a vehicle suspension comprising the control device according to claim 1, and further comprising:
the first member (cylinder 50);
the second member (piston rod 58) movable relative to the first member (Fig. 2); and
the adjuster (i.a. switching valve 66 and solenoid 80 taken together, Fig. 2) including the valve (66) being provided to the second member (Fig. 2) and the electric actuator (80) configured to open and close the valve (i.a. pg. 5 lines 2-14 and pg. 6 lines 2-6 and 11-13; the solenoid 80 causes the valve to open and close by setting the pressure on plunger 82).
TERUI further discloses the control device to obtain desired damping characteristics using a freely set map of damping force characteristics, greatly increasing the degree of freedom in setting the damping characteristics (pg. 8 lines 9-11).
TERUI is not relied upon to teach the suspension is a human-powered vehicle suspension.
MOURI teaches a human-powered vehicle suspension comprising a control device (abstract lines 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the vehicle suspension of TERUI for that of MOURI to obtain desired damping characteristics using a freely set map of damping force characteristics, greatly increasing the degree of freedom in setting the damping characteristics.
Regarding claim 9, TERUI as modified teaches the human-powered vehicle suspension according to claim 8.
TERUI further discloses wherein the first member (50) includes an outer tube (Fig. 2) and the second member (58) includes an inner tube (piston rod 58 is hollow in Fig. 2), the inner tube being provided at an inner side of the first member (Fig. 2).
Regarding claim 10, TERUI as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the valve (66) is provided to the inner tube (58) of the second member (Fig. 2).
Regarding claim 11, TERUI as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the electric actuator (80) is provided to the inner tube (58) of the second member (Fig. 2).
Regarding claim 12, TERUI as modified teaches the human-powered vehicle suspension according to claim 9.
TERUI further discloses wherein the valve (66) is configured to be moved in an axial direction with respect to the inner tube (58) of the second member (Fig. 2).
Regarding claim 13, TERUI as modified teaches the human-powered vehicle suspension according to claim 8.
MOURI is relied upon to teach the vehicle suspension is a human-powered vehicle suspension (abstract lines 1-3).
MOURI further teaches the same suspension may be provided to both a rear suspension and a front suspension of a front fork of the human-powered vehicle (0025 lines 1-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the vehicle suspension of TERUI for that of the front fork of MOURI to obtain desired damping characteristics using a freely set map of damping force characteristics, greatly increasing the degree of freedom in setting the damping characteristics.
Response to Arguments
The following remarks respond to Applicant's arguments filed 11/24/2025.
Applicant’s argument (see bottom of pg. 6) that claim 12 is fully supported by the original disclosure has been fully considered but is not persuasive. Applicant argues the original disclosure discloses the valve being configured to be moved in an axial direction of both the inner tube of the second member as well as the outer tube of the first member because the first and second members are coaxial. However, this feature is not what is recited in claim 12. Claim 12 recites the valve is configured to be moved in an axial direction with respect to the inner tube of the second member, i.e., the valve is movable…with respect to the second member. The original disclosure does not support the current claim because as disclosed the valve is affixed to the second member and therefore cannot move relative to the second member. If Applicant wishes to claim the valve being movable in the axial direction of the second member the claim may be amended accordingly.
Applicant’s arguments with respect to claim(s) 1-13 under 102 and 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
MAEDA (JP H04-11511) and IWAMOTO (JP H05-18430) both describe similar inventions to that disclosed in TERUI.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MARK L. GREENE whose telephone number is (571)270-7555. The examiner can normally be reached M-F 8:30-4:30 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, Logan Kraft can be reached at (571) 270-5065. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK L. GREENE/Primary Examiner, Art Unit 3747