DETAILED ACTION
Non Final
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/04/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Claim 1 (which is representative also of claims 10 and 18) recites “wherein a movement of said motive component is configured to cause said lead screw to adjust a flow rate for a flow path through said check shim style electronic modal base valve”, the figures admit of exactly how the lead screw causes an adjustment of the flow rate for the flow path there through.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(a)
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, 10 and 18 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.
Claim 1 (which is representative also of claims 10 and 18) recites “wherein a movement of said motive component is configured to cause said lead screw to adjust a flow rate for a flow path through said check shim style electronic modal base valve”, where a review of the written description and figures admits of exactly how the lead screw causes an adjustment of the flow rate for the flow path there through. (See ph 00149-00152), nor do the figures including 5B disclose how the flow through the valve is regulated or stopped/started, merely that there is a lead screw (control valve?) and a check shim/guide (or control valve movement limiter?) for opening and closing the flow path, but if the flow path is via 404 and 514, then it is not clear what is obstructing the flow path as the leadscrew itself is merely within the flow path and the control valve movement limiter is merely provided to limit the leadscrew movement?
Appropriate correction is required (it is noted that to advance prosecution on the merits, the check shim guide 552 will be considered the obturator/valve head to open and close flow path by moving axially and along a path towards and away from the plate/valve seat 516 to regulate the fluid flow there through, and that the leadscrew 554 will merely be considered the threaded non axially reciprocating end of the rotary shaft which rotates so as to move 552.)
Lastly, if the office is not correct in it’s interpretation of the figures, it is also noted that the claim recitations are mere ipsis verbis re-recitations of the written description.
It is respectfully noted to Applicant that claim limitations as originally filed have mere ipsis verbis support in the specification when various claimed phrases in the original claims as provided in the written description (and without further disclosure as to the features of these claimed phrases) leave doubt as to: 1) what is actually claimed by the inventor, 2) if the inventor had possession of the claimed inventive features so as to properly provide for written description support and the necessary exchangeable teaching of the invention for the later granted patent which promotes progress in the art, the right to exclude, etc... MPEP 2163.03 V. No new matter may be added.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-20 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.
Claim 1 (which is representative also of claims 10 and 18) recites “wherein a movement of said motive component is configured to cause said lead screw to adjust a flow rate for a flow path through said check shim style electronic modal base valve”, where itt is unclear and/or uncertain (i.e. there appears to be a zone of uncertainty) from a reading of the claim as to what is intended by the term/phrase/idea and how such a term/phrase/idea should be interpreted. In other words, a review of the written description and figures makes the claim language unclear as to y how or in what way the lead screw causes an adjustment of the flow rate for the flow path there through. (See ph 00149-00152), and it is further unclear if the lead screw as discussed in the written description is the control valve, or the check shim is the control valve for controlling fluid flow there through, or if there is some other as of yet unclaimed arrangement that the lead screw and check shim are operating upon to control the fluid flow rate for the flow path there through? In the interest of compact prosecution, the term/phrase will be given its broadest reasonable interpretation. Appropriate correction is required.
Claims 1-20 recite “a check shim style electronic modal base valve …” in the preamble, where it is unclear as there seems to be a lack of clarity as to if the valve is a check valve with a shim, or if the valve includes a check shim or some other variation, and the use of “style” indicates that the valve may or may not be the actual embodiment/variation, but merely styled after some other type of valve, accordingly the metes and bounds of the claim are unclear, especially considering that lack of either special definition or clear description as to how the “check shim” operates beyond merely acting as a guide and stop for the leadscrew.
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 (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 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.
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.
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.
Claim(s) 1-20 is/are rejected (as indefinitely understood) under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Santurbane (US 2021/0179226); or in the alternative as rejected under 35 U.S.C. 103 as being unpatentable over Santurbane in view of Reich (US 10563774.)
Santurbane discloses in claim 1: (see at least partially annotated figure 14 below)
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A check shim style electronic modal base valve for a shock assembly comprising (138 figures 4, 5, 7, 8 and 15): a motive component (at 1503/1532/1540/500 figure 15 and paragraph 0053-0056); a controller (142 id and circuitry 1553 for controlling the motor of the control device via wired or wireless transceiver paragraph 0098 and 0099) communicatively coupled with said motive component; a control valve (900 figure 8) coupled (via spindle 408 and threaded reciprocal transmission 1000 figure 12 where spindle 408 rotates 1000 and 1000/920 also travels via threaded connection at 1208 for moving the valve towards and away from the valve seat 906/902/1204/1206 to open and close the flow path) with said motive component, said control valve further comprising: a lead screw (920 ph 0077); wherein said controller is configured to control an operation of said motive component (i.e. send a signal to move the plug 900 to lockout mode (closed state) id, and also see paragraph 0076, 0084, or a high resistance damping mode (partially closed state), paragraphs 0076, 0082, or a low damping at full open mode (or full open state), per paragraphs 0076, 0077 as applied to the instant embodiment), wherein a movement of said motive component is configured to cause said lead screw to adjust a flow rate for a flow path through said check shim style electronic modal base valve (as discussed above); and a control valve movement limiter (flange 2002 figure 14 acts to stop the movement of the control valve 900 when moving downwards to close the valve completely through the seats of 902 and 906), said control valve movement limiter limiting axial movement (as shown) of said lead screw with respect to said motive component of said check shim style electronic modal base valve;
if it could be persuasively argued at some future unforeseen date that Santurbane does not explicitly disclose: a threaded leadscrew rotating but not axially reciprocating and a check shim gate valve axially reciprocating but not rotating along a shim path (axial translation path), with axial translation limited by current increase in motor when the valve reaches a travel limit (stop); Reich teaches: a threaded leadscrew (42 figure 1B) rotating but not axially reciprocating (via motor control of 41) and a check shim gate valve (44) axially reciprocating (by traveling along the central axis) but not rotating along a shim path (from open to closed), with axial translation limited by current increase in motor when the valve reaches a travel limit (stop Col 11 ln 20-51), for example for the purpose of motor control within a valve translation range.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Santurbane as taught in Reich with in lieu of the non threaded lead 408, a threaded leadscrew for rotating but not axially reciprocating as taught in Reich with a check shim gate valve as taught in Reich traveling along the leadscrew central axis to axially reciprocate but not rotate along such a shim path (from open to closed) as taught in Reich and Santurbane, with axial translation limited by current increase in motor as taught in Reich when the valve reaches a travel limit, all for example for the purpose of motor control within a valve translation range.
Santurbane discloses in claims 10: A check shim style electronic valve for a shock assembly (138 figures 4, 5, 7, 8 and 15) comprising: a low-speed compression adjuster (full open mode or state of the control valve via motive component and controller provides for compression control during slow damping movements, paragraph 0076, 0077); a high-speed compression adjuster (partially open mode or state of the control valve via motive component and controller provides for compression control during fast damping movements, para. 0076, 0083); and a manual command lockout, wherein said manual command lockout comprises: a motive component (rotary motor 1503/1532/1540/500 figure 15 and paragraph 0053-0056 paragraph 0053-0056); a control valve (900 fig. 8) coupled with said motive component (via spindle 408 and threaded reciprocal transmission 1000 figure 12 where spindle 408 rotates 1000 and 1000/920 also travels via threaded connection at 1208 for moving the valve towards and away from the valve seat 1206 to open and close the flow path), said control valve further comprising: a lead screw (920); and wherein said motive component causes said control valve to open or close a flow path through said check shim style electronic valve (para 0076, 0084.)
if it could be persuasively argued at some future unforeseen date that Santurbane does not explicitly disclose: a threaded leadscrew rotating but not axially reciprocating and a check shim gate valve axially reciprocating but not rotating along a shim path, with axial translation limited by current increase in motor when the valve reaches a travel limit (stop); Reich teaches: a threaded leadscrew (42 figure 1B) rotating but not axially reciprocating (via motor control of 41) and a check shim gate valve (44) axially reciprocating (by traveling along the central axis) but not rotating along a shim path (from open to closed), with axial translation limited by current increase in motor when the valve reaches a travel limit (stop Col 11 ln 20-51), for example for the purpose of motor control within a valve translation range.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Santurbane as taught in Reich with in lieu of the non threaded lead 408, a threaded leadscrew for rotating but not axially reciprocating as taught in Reich with a check shim gate valve as taught in Reich traveling along the leadscrew central axis to axially reciprocate but not rotate along such a shim path (from open to closed) as taught in Reich and Santurbane, with axial translation limited by current increase in motor as taught in Reich when the valve reaches a travel limit, all for example for the purpose of motor control within a valve translation range.
Santurbane discloses in claim 18: A check shim style electronic modal dual-speed compression (DSC) base valve for a shock assembly (138 figures 4, 5, 7, 8 and 15) comprising: a motive component (at 1503/1532/1540/500 figure 15 and paragraph 0053-0056); a controller (142 id and circuitry 1553 for controlling the motor of the control device via wired or wireless transceiver paragraph 0098 and 0099) to control said motive component; a low-speed compression adjuster (or adjustment capability for low speed shock dampening via user control, paragraph 0046 and 0054) coupled with said motive component, wherein said motive component is configured to cause a compression adjustment to be performed by said low-speed compression adjuster (as discussed LSC); a high-speed compression adjuster (or adjustment capability at high speeds shock dampening via user control, id, where the speed of dampening determined by the rate of fluid flow through the control valve, determines the amount of compression that the shocks will absorb (i.e. between a softer ride or harder ride)) coupled with said motive component, wherein said motive component is configured to cause a compression adjustment to be performed by said high-speed compression adjuster (as discussed HSC); and a manual command lockout (i.e. send a signal to move the plug 900 to lockout mode (closed state)), wherein said manual command lockout comprises: a control valve coupled with said motive component, component, said control valve (900) further comprising: a lead screw (920); and wherein said motive component is configured to cause said control valve to open or lockout a flow path through said check shim style electronic modal DSC base valve (as discussed, paragraph 0076, where the flow control member provides for different operational states based on its position in the flow path.)
if it could be persuasively argued at some future unforeseen date that Santurbane does not explicitly disclose: a threaded leadscrew rotating but not axially reciprocating and a check shim gate valve axially reciprocating but not rotating along a shim path, with axial translation limited by current increase in motor when the valve reaches a travel limit (stop); Reich teaches: a threaded leadscrew (42 figure 1B) rotating but not axially reciprocating (via motor control of 41) and a check shim gate valve (44) axially reciprocating (by traveling along the central axis) but not rotating along a shim path (from open to closed), with axial translation limited by current increase in motor when the valve reaches a travel limit (stop Col 11 ln 20-51), for example for the purpose of motor control within a valve translation range.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Santurbane as taught in Reich with in lieu of the non threaded lead 408, a threaded leadscrew for rotating but not axially reciprocating as taught in Reich with a check shim gate valve as taught in Reich traveling along the leadscrew central axis to axially reciprocate but not rotate along such a shim path (from open to closed) as taught in Reich and Santurbane, with axial translation limited by current increase in motor as taught in Reich when the valve reaches a travel limit, all for example for the purpose of motor control within a valve translation range.
Santurbane discloses in claims 2 and 13: wherein said control valve movement limiter is a check shim (2002 is an annular flanged plate-like check shim of sorts.)
Santurbane discloses in claims 3 and 14: wherein said check shim is further configured to guide said lead screw during said axial movement of said lead screw with respect to said motive component of said check shim style electronic modal base valve (the lead screw is axially guided there through 2002 when being moved by the motor/motive component.)
Santurbane discloses in claim 4: The check shim style electronic modal base valve of claim 1, further comprising: a user interface (controller user interface at 154 figure 1, paragraph 0037) located remote (on the handlebars) from said check shim style electronic modal base valve, said user interface to provide a wireless signal to said controller (i.e. via wireless communication paragraph 0038), said wireless signal to cause said controller to initiate said operation of said motive component (i.e. one of the command mode states.)
Santurbane discloses in claim 5: The check shim style electronic modal base valve of claim 1, further comprising: a user interface (controller user interface 154 figure 1, paragraph 0037) located remote from said check shim style electronic modal base valve, said user interface comprising a wired connection (wired communication connection paragraph 0038) with said check shim style electronic modal base valve, said user interface to provide a wired signal (as discussed) to said controller, said wired signal to cause said controller to initiate said operation of said motive component (one of the command mode states.)
Santurbane discloses in claim 6: The check shim style electronic modal base valve of claim 1, wherein said control valve is a two-state valve (the at least two states being open/closed.)
Santurbane discloses in claims 7 and 15: wherein said control valve is a multi-state valve (at least three states, open close and intermediate as discussed above.)
Santurbane discloses in claim 8: The check shim style electronic modal base valve of claim 1, wherein said check shim style electronic modal base valve is a dual-speed compression (DSC) valve (based on the speed and terrain encountered per paragraph 0043, such a dual speed compression (DSC) base valve provides compression adjustability that includes a low-speed compression (LSC) adjuster (or adjustment capability for low speed shock dampening via user control, paragraph 0046 and 0054) and a high-speed compression (HSC) adjuster (or adjustment capability at high speeds shock dampening via user control, id, where the speed of dampening determined by the rate of fluid flow through the control valve, determines the amount of compression that the shocks will absorb (i.e. between a softer ride or harder ride.))
Santurbane discloses in claim 9: The check shim style electronic modal base valve of claim 1, wherein said check shim style electronic modal base valve is a rebound valve (the fluid can flow in both directions through the electronic modal base valve to control the rebound and compression states of the shock absorption.)
Santurbane discloses in claim 11: The check shim style electronic valve of claim 10, wherein said motive component is configured to cause axial movement of said lead screw (via threaded reciprocal axial and rotational translation) with respect to said motive component of said check shim style electronic valve.
Santurbane discloses in claim 12: The check shim style electronic valve of claim 11, further comprising: a control valve movement limiter (at 2002), said control valve movement limiter limiting said axial movement of said lead screw with respect to said motive component of said check shim style electronic valve (920 cannot pass 2002 in the axial direction.)
Santurbane discloses in claim 16: The check shim style electronic valve of claim 10, further comprising: said motive component coupled with said low-speed compression adjuster to cause a compression adjustment to be performed by said low-speed compression adjuster; and said motive component coupled with said high-speed compression adjuster to cause a compression adjustment to be performed by said high-speed compression adjuster (based on the speed and terrain encountered per paragraph 0043, such a dual speed compression (DSC) base valve provides compression adjustability that includes a low-speed compression (LSC) adjuster (or adjustment capability for low speed shock dampening via user control, paragraph 0046 and 0054) and a high-speed compression (HSC) adjuster (or adjustment capability at high speeds shock dampening via user control, id, where the speed of dampening determined by the rate of fluid flow through the control valve, determines the amount of compression that the shocks will absorb (i.e. between a softer ride or harder ride.)).
Santurbane discloses in claim 17: The check shim style electronic valve of claim 16, further comprising: a user interface (controller user interface 154 figure 1, paragraph 0037) located remote from said check shim style electronic valve (on the handlebars), said user interface to provide a signal to said motive component (i.e. via wired or wireless communication paragraph 0038), said signal to cause said motive component to adjust at least one of said low-speed compression adjuster and said high-speed compression adjuster (i.e. one of the command mode states.)
Santurbane discloses in claim 19: The check shim style electronic modal dual-speed compression (DSC) base valve of claim 18, wherein said motive component is configured to cause axial movement of said lead screw (920 axially reciprocates while rotating via 408 and the motive component) with respect to said motive component of said check shim style electronic modal dual-speed compression (DSC) base valve.
Santurbane discloses in claim 20: The check shim style electronic modal dual-speed compression (DSC) base valve of claim 19, further comprising: a control valve movement limiter (at 2002), wherein said control valve movement limiter is a check shim (2002 is an annular flanged plate-like check shim of sorts), said control valve movement limiter limiting said axial movement of said lead screw (920 cannot pass 2002) with respect to said motive component of said check shim style electronic modal dual-speed compression (DSC) base valve (i.e. the rotation and axial translation of the lead screw 920 will stop when 920 seats against 2002); and wherein said check shim is further configured to guide (axially) said lead screw during said axial movement of said lead screw with respect to said motive component of said check shim style electronic modal base valve.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W JELLETT, whose telephone number is 571-270-7497. The examiner can normally be reached on Monday-Friday (9:30AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Ken Rinehart can be reached at (571)-272-4881, or Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew W Jellett/Primary Examiner, Art Unit 3753
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