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 § 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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shaw et al. (US 6,014,862).
Regarding independent claim 1, Shaw discloses a master cylinder (see Abstract, FIG. 1) comprising: a cylinder block (12) having a bore of a multi-stage form in a longitudinal direction therein (see FIG. 1); a first master chamber (26) and a second master chamber (23) sequentially arranged in series in the bore (see FIG. 1); a first master piston (25) provided to move in connection with an operation of a brake pedal (10) and to pressurize the first master chamber (see e.g. col. 6, lines 16-18); a second master piston (19) provided to be displaceable by a displacement of the first master piston or a hydraulic pressure in the first master chamber and to pressurize the second master chamber (see FIG. 1); and a pedal simulator (40) interposed between the first master piston and the second master piston to provide a reaction force to the brake pedal (see col. 6, line 49 to col. 7, line 5), wherein a cross-sectional area of the first master piston is provided to be relatively larger than a cross-sectional area of the second master piston (see FIG. 1).
Regarding claim 4, Shaw discloses that the pedal simulator comprises a rubber member interposed between the first master piston and the second master piston in the first master chamber (see col. 6, lines 33-36).
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Shaw et al. (US 6,014,862), as applied to claim 1, above.
Regarding claim 2, Shaw does not disclose that the cross-sectional area of the second master piston is provided to be 50% or more and 80% or less of the cross-sectional area of the first master piston. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP 2144.05.II.A) (quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, Shaw recognizes that the relative size of the simulator compared to the chambers (22 and 25) provides the desired pedal force simulator characteristics (see e.g. col. 5, lines 49-60; col. 6, lines 15-37). As such, it would have been a matter of routine experimentation to provide the bore such that an inner diameter of the second master chamber is 50% or more and 80% or less of an inner diameter of the first master chamber.
Regarding claim 3, Shaw does not disclose that the cross-sectional area of the second master piston is provided to be 70% or more and 90% or less of the cross-sectional area of the first master piston. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP 2144.05.II.A) (quoting In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, Shaw recognizes that the relative size of the simulator compared to the chambers (22 and 25) provides the desired pedal force simulator characteristics (see e.g. col. 5, lines 49-60; col. 6, lines 15-37). As such, it would have been a matter of routine experimentation to provide the bore such that an inner diameter of the second master chamber is 70% or more and 90% or less of an inner diameter of the first master chamber.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Shaw et al. (US 6,014,862), as applied to claim 1, above, and further in view of Isono (US 2010/0283315).
Regarding claim 5, Shaw does not disclose a simulator spring having one end supported on the cylinder block and the other end supported on the first master piston.
Isono teaches a master cylinder (23), a pedal simulator (24) interposed between a first master piston (13) and a second master piston (14) (see FIG. 1), and a simulator spring (22) having one end supported on the cylinder block and the other end supported on the first master piston (see FIG. 1).
It would have been obvious to combine the simulator spring of Isono with the device of Shaw to provide a pedal force reaction that varies with the pedal stroke (see Isono, ¶¶ 0030, 0077), thereby providing a simulator that appropriately absorbs the pedal stroke and provides a stable reaction force (see Isono, ¶ 0077).
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,221,089. Although the claims at issue are not identical, they are not patentably distinct from each other because each element of claims 1-6 of the present application is recited in claims 1-7 of the ‘089 patent. For instance, claim 1 is anticipated by claim 1 of the ‘089 patent. Claim 2 is anticipated by claim 2 of the ‘089 patent. Claim 3 is anticipated by claim 3 of the ‘089 patent. Claim 4 is anticipated by claim 4 of the ‘089 patent. And claim 5 is anticipated by claim 5 of the ‘089 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
August 21, 2026
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