DETAILED ACTION
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.
Claims 1, 4 and 5 are 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.
The limitation “the suspension arm member is configured to support the bushing only by the cylindrical part” in claim 1 was not described in the specification. Although the disclosure admittedly does not mention any support for the bushing other than the cylindrical part, the disclosure does not preclude the bushing from being supported by structure(s) other than the cylindrical part.
The limitation “the bushing is supported only by the cylindrical part of the suspension arm member” in claim 4 was not described in the specification. Although the disclosure admittedly does not mention any support for the bushing other than the cylindrical part, the disclosure does not preclude the bushing from being supported by structure(s) other than the cylindrical part.
The limitation “the bushing includes a body portion that is supported by the cylindrical part and a flange portion that is greater in diameter than a diameter of the cylindrical part, and the length of the cylindrical part is greater than half a length of the body portion of the bushing” was not described in the specification. Applicant relies on Fig. 2 for support for this limitation. However, "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." MPEP § 2125(II).
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.
Claims 1, 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101553811 B1). Kim teaches a suspension arm member comprising: a main body part (e.g., 30) made of a press-molded (implicit) steel (paragraph 0041) plate; and a cylindrical part (e.g., at 72) provided in the main body part, the cylindrical part being configured to receive (via press-fitting - paragraphs 0040 and 0043) a bushing (e.g., 22) therein in a direction perpendicular to a pressed direction of the main body part, wherein the main body part and the cylindrical part are made of one steel (paragraph 0041) plate (Figs. 1-3), and wherein the cylindrical part is formed by burring (paragraphs 0033, 0039 and 0043) a periphery part (e.g., 74) of a through-hole (e.g., at 74) provided in a side wall part (e.g., 36), the side wall part being erected in the pressed direction of the main body part (Figs. 1-3; paragraphs 0022 and 0035). Also, the limitation “a main body part made of a press-molded steel plate” is a product-by-process limitation, and therefore this limitation does not patentably distinguish the claimed invention from the cited prior art because the cited prior art teaches a product that appears to be the same as the product set forth in the claim(s), even though it may have been produced by a different process. MPEP § 2113. The suspension arm member is configured to support the bushing only by the cylindrical part at least in an intermediate assembly stage prior to the bushing being pressed into first support portion 60. The suspension arm member and the bushing are a part of an assembly (Figs. 1-5). The bushing is supported only by the cylindrical part of the suspension arm member at least in an intermediate assembly stage prior to the bushing being pressed into first support portion 60. Furthermore, if just element 30 is taken as corresponding to the claimed suspension arm member, then Kim satisfies the limitations “the suspension arm member is configured to support the bushing only by the cylindrical part” and “the bushing is supported only by the cylindrical part of the suspension arm member”, since no other part of the suspension arm member (i.e., 30) is configured to support the bushing. The bushing includes a body portion (e.g., at 24) that is supported by the cylindrical part and a flange portion (Figs. 2-5) that is greater in diameter than a diameter (e.g., an inner diameter) of the cylindrical part (Figs. 1-5). Kim does not explicitly teach that “a length of the cylindrical part is 10 mm or longer in a direction perpendicular to a plane formed by the side wall part” or that “the length of the cylindrical part is greater than half a length of the body portion of the bushing”. However, the recited dimensions do not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. MPEP § 2144.04(IV)(A).
Response to Arguments
Applicant's arguments filed on July 17, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that “element 72 of Kim, alleged to correspond to the claimed “cylindrical part,” is not disclosed as having a length of 10 mm or longer” (see the paragraph beginning with “In contrast” on page 5 of the remarks), the recited dimension does not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A).
Regarding applicant’s argument(s) in the paragraph beginning with “Additionally” on page 5 of the remarks, the Kim device is configured to support bushing (e.g., 22) “only by the cylindrical part” (e.g., at 72) at least in an intermediate assembly stage prior to the bushing being pressed into first support portion 60. Furthermore, if just element 30 is taken as corresponding to the claimed suspension arm member, then Kim satisfies the limitations “the suspension arm member is configured to support the bushing only by the cylindrical part” and “the bushing is supported only by the cylindrical part of the suspension arm member”, since no other part of the suspension arm member (i.e., 30) is configured to support the bushing. Furthermore, the limitations involving the bushing being supported only by the cylindrical part are not in compliance with 35 U.S.C. 112, as explained above. The limitations that are in compliance with 35 U.S.C. 112 are unpatentable under 35 U.S.C. 103 over Kim, as explained above.
Conclusion
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 KEITH J FRISBY whose telephone number is (571)270-7802. The examiner can normally be reached M-F 9:00AM - 5:00PM.
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/KEITH J FRISBY/ Primary Examiner, Art Unit 3614
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