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
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.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farr et al. (US – 2003/0047397 A1) and further in view of Smith (US – 2013/0220961 A1).
As per claim 1, Farr discloses Adjustable Shock Absorber comprising:
a damper chamber (Fig: 1) comprising:
an outer wall (18, Fig: 1) with a first inner diameter (Attached figure and Fig: 1);
a tubular body (22, Fig: 1) within said damper chamber, said tubular body comprising an exterior wall (28, Fig: 1) with an external diameter (Attached figure and Fig: 1) less than said ID of said outer wall to form an annular region therebetween (16, Attached figure and Fig: 1); and
a fluid bypass within a portion of said annular region (via ports 26, Fig: 1);
a damping piston (24, Fig: 1) coupled to a piston rod (Attached figure and Fig: 1), said damping piston disposed in said tubular body and axially movable relative to said tubular body (Fig: 1), said damping piston to bifurcate said tubular body into a compression side (22a, Fig: 1) and a rebound side (22b, Fig: 1).
Farr also disclose “fluid flow can be bi-directional between the rebound 22b and compression 22a sides or check valves can be used to allow fluid to flow in one direction while preventing fluid flow in an opposite direction”, [0023], but fails to explicitly disclose a valve to allow a working fluid to flow from said annular region into said rebound side and limit a flow of said working fluid from said rebound side and into said annular region.
Smith disclose Railcar Cushioning Device comprising:
a valve (182, 192, 202, Fig: 2-3 and 9-10) to allow a working fluid to flow from said annular region into said rebound side and limit a flow of said working fluid from said rebound side and into said annular region ([0040] and [0041], Fig: 2-3 and 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the Adjustable Shock Absorber of the Farr to include the valve to allow a working fluid to flow from said annular region into said rebound side and limit a flow of said working fluid from said rebound side and into said annular region as taught by Smith in order to provide the threshold pressure may be adjustable or controllable by adjusting the valve or selecting a valve having a particular threshold pressure release.
As per claim 3, Farr discloses at least one compression-side bypass orifice disposed at said compression side of said tubular body (one of 26 from chamber 22a, Fig: 1), said at least one compression-side bypass orifice fluidly coupled with said annular region (Fig: 1).
As per claim 4, Farr discloses at least one rebound-side bypass orifice disposed at said rebound side of said tubular body (one of 26 from chamber 22b, Fig: 1), said at least one rebound-side bypass orifice fluidly coupled with said annular region (Fig: 1).
As per claim 5, Smith further discloses said valve configured to allow said working fluid to flow from said compression side into said annular region, and limit a flow of said working fluid from said annular region into said compression side, via said at least one compression-side bypass orifice during a compression stroke (182, 192, 202, operation of the device, [0040], [0041], and [0044]-[0058], Fig: 2-5 and 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the Adjustable Shock Absorber of the Farr to include the valve configured to allow said working fluid to flow from said compression side into said annular region, and limit a flow of said working fluid from said annular region into said compression side, via said at least one compression-side bypass orifice during a compression stroke as taught by Smith in order to provide the threshold pressure may be adjustable or controllable by adjusting the valve or selecting a valve having a particular threshold pressure release.
As per claim 6, Smith further discloses said valve located external of said exterior wall of said tubular body (Fig: 2-5, 9-10) and proximate said at least one compression-side bypass orifice (202, 192, Fig: 2-5, 9-10).
As per claim 7, Smith further discloses said valve located internal to said exterior wall of said tubular body and proximate said at least one compression-side bypass orifice (182, 192, 202, operation of the device, [0040], [0041], and [0044]-[0058], Fig: 2-5 and 9-10).
As per claim 8, Smith further discloses said valve to allow said working fluid to flow from said annular region into said compression side, and limit a flow of said working fluid from said compression side and into said annular region, via said at least one compression-side bypass orifice during a rebound stroke (182, 192, 202, operation of the device, [0040], [0041], and [0044]-[0058], Fig: 2-5 and 9-10).
As per claim 9, Smith further discloses said valve located external of said exterior wall of said tubular body and proximate said at least one compression-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 10, Smith further discloses said valve located internal to said exterior wall of said tubular body and proximate said at least one compression-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 11, Smith further discloses said valve configured to allow said working fluid to flow from said rebound side into said annular region, and limit a flow of said working fluid from said rebound side into said annular region, via said at least one rebound-side bypass orifice during a rebound stroke (182, 192, 202, operation of the device, [0040], [0041], and [0044]-[0058], Fig: 2-5 and 9-10).
As per claim 12, Smith further discloses said valve located external to said exterior wall of said tubular body and proximate said at least one rebound-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 13, Smith further discloses said valve located internal to said exterior wall of said tubular body and proximate said at least one rebound-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 14, Smith further discloses said valve configured to allow said working fluid to flow from said annular region into said rebound side, and limit a flow of said working fluid from said rebound side and into said annular region, via said at least one rebound-side bypass orifice during a compression stroke (182, 192, 202, operation of the device, [0040], [0041], and [0044]-[0058], Fig: 2-5 and 9-10).
As per claim 15, Smith further discloses said valve located external to said exterior wall of said tubular body and proximate said at least one rebound-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 16, Smith further discloses said valve located internal to said exterior wall of said tubular body and proximate said at least one rebound-side bypass orifice (182, 192, 202, Fig: 1).
As per claim 17, Farr discloses Adjustable Shock Absorber comprising:
a damper chamber (Fig: 1) comprising:
an outer wall (18, Fig: 1) with a first inner diameter (Attached figure and Fig: 1);
a secondary chamber (22, Fig: 1) within said damper chamber, said secondary chamber comprising an exterior wall (28, Fig: 1) with an external diameter (Attached figure and Fig: 1) less than said ID of said outer wall to form an annular region therebetween (16, Attached figure and Fig: 1);
a damping piston (24, Fig: 1) coupled to a piston rod (Attached figure and Fig: 1), said damping piston disposed in said secondary chamber and axially movable relative to said secondary chamber (Fig: 1), said damping piston to bifurcate said secondary chamber into a compression side (22a, Fig: 1) and a rebound side (22b, Fig: 1).
Farr also disclose “fluid flow can be bi-directional between the rebound 22b and compression 22a sides or check valves can be used to allow fluid to flow in one direction while preventing fluid flow in an opposite direction”, [0023], but fails to explicitly disclose a valve to control a flow of a working fluid between said annular region and said secondary chamber.
Smith disclose Railcar Cushioning Device comprising:
a valve (182, 192, 202, Fig: 2-3 and 9-10) to control a flow of a working fluid between said annular region and said secondary chamber ([0040] and [0041], Fig: 2-3 and 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the Adjustable Shock Absorber of the Farr to include the valve to control a flow of a working fluid between said annular region and said secondary chamber as taught by Smith in order to provide the threshold pressure may be adjustable or controllable by adjusting the valve or selecting a valve having a particular threshold pressure release.
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As per claim 18, Farr disclose at least two orifices (two 26, upper side and lower side of the piston 24, Fig: 1) selected from a group consisting of:
at least one bearing bypass aperture at said rebound side of said secondary chamber (one of 26, from chamber 22b, Fig: 1), said at least one bearing bypass aperture fluidly coupled with said annular region (16, Fig: 1);
at least one compression-side bypass orifice at said compression side of said secondary chamber (one of 26 from chamber 22a, Fig: 1), said at least one compression-side bypass orifice fluidly coupled with said annular region (16, Fig: 1); and
at least one rebound-side bypass orifice at said rebound side of said secondary chamber (26 at chamber 22b, fig: 1), said at least one rebound-side bypass orifice (26 at chamber 22a, Fig: 1) fluidly coupled with said annular region (16, Fig: 1).
As per claim 19, Farr discloses Adjustable Shock Absorber comprising:
a damper chamber (Fig: 1) comprising:
an outer wall (18, Fig: 1) with a first inner diameter (Attached figure and Fig: 1);
a tubular body (22, Fig: 1) within said damper chamber, said tubular body comprising an exterior wall (28, Fig: 1) with an external diameter (Attached figure and Fig: 1) less than said ID of said outer wall to form an annular region therebetween (16, Attached figure and Fig: 1); and
a fluid bypass within a portion of said annular region (via ports 26, Fig: 1);
a damping piston (24, Fig: 1) coupled to a piston rod (Attached figure and Fig: 1), said damping piston disposed in said tubular body and axially movable relative to said tubular body (Fig: 1), said damping piston to bifurcate said tubular body into a compression side (22a, Fig: 1) and a rebound side (22b, Fig: 1).
Farr also disclose “fluid flow can be bi-directional between the rebound 22b and compression 22a sides or check valves can be used to allow fluid to flow in one direction while preventing fluid flow in an opposite direction”, [0023], but fails to explicitly disclose a valve to control a flow of a working fluid between said fluid bypass and said tubular body.
Smith disclose Railcar Cushioning Device comprising:
a valve (182, 192, 202, Fig: 2-3 and 9-10) a valve to control a flow of a working fluid between said fluid bypass and said tubular body ([0040] and [0041], Fig: 2-3 and 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the Adjustable Shock Absorber of the Farr to include the a valve to control a flow of a working fluid between said fluid bypass and said tubular body as taught by Smith in order to provide the threshold pressure may be adjustable or controllable by adjusting the valve or selecting a valve having a particular threshold pressure release.
As per claim 20, Farr discloses at least one compression-side bypass orifice disposed at said compression side of said tubular body (one of 26 from chamber 22a, Fig: 1), said at least one compression-side bypass orifice fluidly coupled with said annular region (Fig: 1) and
at least one rebound-side bypass orifice disposed at said rebound side of said tubular body (one of 26 from chamber 22b, Fig: 1), said at least one rebound-side bypass orifice fluidly coupled with said annular region (Fig: 1).
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 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,168,379. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 17 and 18 of instant application are encompassed with claims 1 and 2 of US Patent 12,168,379 and are obvious variations of breadth and scope.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Prior art and teaching reference fail to disclose a refill hole located within a ride zone portion of said damper chamber.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A: COAPLEN et al. (US – 2019/0154100 A1),
B: van Wonderen et al. (US – 2004/0094376 A1),
C: FROESE M (DE – 102020210538 A1), and
D: DAI M (CN – 108518443 A).
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/SAN M AUNG/Examiner, Art Unit 3616
/Robert A. Siconolfi/Supervisory Patent Examiner, Art Unit 3616
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