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 8/4/2025 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.
Claims 4, 5, 6, 14, 15 “end stop”, where the limitations are not disclosed in the figures;
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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
It is noted that upon review, no claim terminology was determined to be of sufficient means plus function nonce/style language so as to invoke 35 USC 112 6th paragraph. Any generic terms appeared to be sufficiently modified by their either prepository terms, modifiers or use in the art to take any generic terms out of potential scope of 112 6th. It is noted that during prosecution the claim language may change and thus there is no final disposition on such interpretation until time as the claims may issue.
Claim Rejections - 35 USC § 112 first/second paragraphs
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 4, 5, 6, 14, 15 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.
Claims 4, 5, 6, 14, 15 “end stop”, where the limitations as discussed in the written description ph 00160, the term is merely recited and it is not disclosed how the end stop is supporting the setting or vice versa.
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 4, 5, 6, 14, 15 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.
Claims 4, 5, 6, 14, 15 are recites “on a/an… end stop”. It 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, it is unclear from a reading of the claimed phrase in light of the written description and figures how or in what way such an end stop supports the feature, or is the phrase merely meant to indicate a stopping position via the controller of some fashion? In the interest of compact prosecution, the term/phrase will be given its broadest reasonable interpretation. Appropriate correction is required.
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.
Claim(s) 1-20 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Santurbane (US 2021/0179226) and further in view of Kuroki (US 4600215.)
Santurbane discloses in claim 1: An electronic modal base valve for a shock assembly comprising (138 figures 7, 8 and 15): a motive component (rotary motor 1530 rotatably attached to the spindle 408 via worm gear 1532/1540 and 500, and see ph 0053-0056); a controller (142 and see ph 0098-0100) communicatively coupled (via wired or wireless communication) with said motive component; a control valve (900 fig. 8) coupled (via 500) with said motive component, wherein said control valve includes a multi-state rotary [spindle 408 with plug 900], 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)), wherein a movement of said motive component is configured to cause said control valve to adjust a flow rate for a flow path (via 1212 figure 12) through said electronic modal base valve, said multi-state rotary [spindle with plug] having a softest setting feature (a low damping at full open mode (or full open state), per paragraphs 0076, 0077) corresponding to a softest setting (as discussed) for said electronic modal base valve, a lockout setting feature (lockout mode (closed state) id, and also see paragraph 0076, 0084) corresponding to a lockout setting (as discussed) for said electronic modal base valve and at least one intermediate setting feature (high resistance damping mode (partially closed state), paragraphs 0076, 0082) corresponding to at least one intermediate setting (as discussed) for said electronic modal base valve, each of said softest setting feature, said lockout setting feature and said at least one intermediate setting feature for controlling said flow rate along said flow path (as see comparison of figures 12-14, figure 12 soft setting control, figure 13 intermediate setting control, and figure 14 lockout setting control). Santurbane does not disclose: a multi-state rotary spool; but Kuroki teaches: a multi-state rotary spool (the spool 430 maintained in valve member 416 with annular ports 242a-c figure 9-10B, the spool 430 rotatably operable via rotor motor 442, transmission 444 and stem 446 figure 11, where rotary spool 430 is provided for operable damping force adjustment via rotary motor control that can receive control signals from a controller for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control, Col 10 ln 35 to Col 12 ln 20.)
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 Kuroki, with a multi-state rotary spool where the spool can be maintained in a valve member as taught in Kuroki with annular ports and the spool can be rotatably operable via rotor motor as taught in Kuroki with a transmission and stem arrangement as taught in Kuroki, and where the rotary spool can be provided for operable damping force adjustment via rotary motor control which can receive control signals from a controller as taught in Kuroki as well as Santurbane, all for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control.
Santurbane discloses in claim 10: An electronic valve for a shock assembly comprising (138 figures 7, 8 and 15): a low-speed compression adjuster (a low speed damping at full open mode (or full open state), per paragraphs 0076, 0077); a high-speed compression adjuster (high speed lockout damping mode (closed state) id, and also see paragraph 0076, 0084); and a manual command lockout (manual control may be provided for all of the modes, per ph 0046), wherein said manual command lockout comprises: a motive component (rotary motor 1530 rotatably attached to the spindle 408 via worm gear 1532/1540 and 500, and see ph 0053-0056); and a control valve (900 fig. 8) coupled with said motive component, wherein said control valve includes a multi-state rotary [spindle 408 with plug 900], wherein said motive component causes said control valve to open or close a flow path through said electronic valve (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), said multi-state rotary [spindle and plug] having a softest setting feature (the setting feature position for the low damping at full open mode (or full open state), per paragraphs 0076, 0077) corresponding to a softest setting (as discussed) for said electronic valve, a lockout setting feature (the setting feature position for the lockout mode (closed state) id, and also see paragraph 0076, 0084) corresponding to a lockout setting (as discussed) for said electronic valve and at least one intermediate setting feature (the setting feature position for the high resistance damping mode (partially closed state), paragraphs 0076, 0082) corresponding to at least one intermediate setting (as discussed) for said electronic valve, each of said softest setting feature, said lockout setting feature and said at least one intermediate setting feature for controlling a flow rate along said flow path (as see comparison of figures 12-14, figure 12 soft setting control, figure 13 intermediate setting control, and figure 14 lockout setting control). Santurbane does not disclose: a multi-state rotary spool; but Kuroki teaches: a multi-state rotary spool (the spool 430 maintained in valve member 416 with annular ports 242a-c figure 9-10B, the spool 430 rotatably operable via rotor motor 442, transmission 444 and stem 446 figure 11, where rotary spool 430 is provided for operable damping force adjustment via rotary motor control that can receive control signals from a controller for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control, Col 10 ln 35 to Col 12 ln 20.)
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 Kuroki, with a multi-state rotary spool where the spool can be maintained in a valve member as taught in Kuroki with annular ports and the spool can be rotatably operable via rotor motor as taught in Kuroki with a transmission and stem arrangement as taught in Kuroki, and where the rotary spool can be provided for operable damping force adjustment via rotary motor control which can receive control signals from a controller as taught in Kuroki as well as Santurbane, all for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control.
Santurbane discloses in claim 18: An 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 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 (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 (900) coupled (via 408) with said motive component, wherein said control valve includes a multi-state rotary [spindle 408 with plug 900], said multi-state rotary [spindle with plug] having a softest setting feature (the setting feature position for the low damping at full open mode (or full open state), per paragraphs 0076, 0077) corresponding to a softest setting (as discussed) for said electronic modal dual-speed compression (DSC) base valve, a lockout setting feature (the setting feature position for the lockout mode (closed state) id, and also see paragraph 0076, 0084) corresponding to a lockout setting (as discussed) for said electronic modal dual-speed compression (DSC) base valve and at least one intermediate setting feature (the setting feature position for the high resistance damping mode (partially closed state), paragraphs 0076, 0082) corresponding to at least one intermediate setting (as discussed) for said electronic modal dual-speed compression (DSC) base valve, each of said softest setting feature, said lockout setting feature and said at least one intermediate setting feature for controlling a flow rate along said flow path (as see comparison of figures 12-14, figure 12 soft setting control, figure 13 intermediate setting control, and figure 14 lockout setting control). Santurbane does not disclose: a multi-state rotary spool; but Kuroki teaches: a multi-state rotary spool (the spool 430 maintained in valve member 416 with annular ports 242a-c figure 9-10B, the spool 430 rotatably operable via rotor motor 442, transmission 444 and stem 446 figure 11, where rotary spool 430 is provided for operable damping force adjustment via rotary motor control that can receive control signals from a controller for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control, Col 10 ln 35 to Col 12 ln 20.)
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 Kuroki, with a multi-state rotary spool where the spool can be maintained in a valve member as taught in Kuroki with annular ports and the spool can be rotatably operable via rotor motor as taught in Kuroki with a transmission and stem arrangement as taught in Kuroki, and where the rotary spool can be provided for operable damping force adjustment via rotary motor control which can receive control signals from a controller as taught in Kuroki as well as Santurbane, all for rotatably controlling the angular position of the valve for the purpose of damping force adjustment via various damping modes either automatically or via manual control.
Santurbane discloses (as modified for the reasons discussed above) in claim 2: The electronic modal base valve of claim 1, further comprising: a user interface (controller user interface at 154 figure 1, paragraph 0037) located remote from said electronic modal base valve, said user interface to provide a wireless signal (i.e. via wireless communication paragraph 0038) to said controller, said wireless signal to cause said controller to initiate said operation of said motive component (i.e. via one of the command mode states.)
Santurbane discloses (as modified for the reasons discussed above) in claim 3: The electronic modal base valve of claim 1, further comprising: a user interface located remote from said electronic modal base valve (controller user interface 154 figure 1, paragraph 0037), said user interface comprising a wired connection (wired communication connection paragraph 0038) with said electronic modal base valve, said user interface to provide a wired signal to said controller (as discussed), said wired signal to cause said controller to initiate said operation of said motive component (i.e. one of the command mode states.)
Santurbane discloses (as modified for the reasons discussed above) in claims 4 and 13: wherein said softest setting feature is disposed on an end stop (i.e. the largest passage opening for Santurbane/Kuroki as discussed above, the end stop being the end of the rotation for the position of alignment as discussed in Kuroki Col 10 ln 35 to Col 12 ln 20) of said multi-state rotary spool.
Santurbane discloses (as modified for the reasons discussed above) in claims 5 and 14: wherein said lockout setting feature is disposed on an end stop of said multi-state rotary spool (the end rotation that aligns the spool orifice 432 with orifice 424a/426a.)
Santurbane discloses (as modified for the reasons discussed above) in claims 6 and 15: wherein: said softest setting feature is disposed on a first end stop of said multi-state rotary spool (the rotational positioning of alignment of spool 432 orifice with 424c/426c); and said lockout setting feature is disposed on a second end stop of said multi-state rotary spool (the angular rotational other end for alignment of 424a/426a with 432).
Santurbane discloses (as modified for the reasons discussed above) in claims 7, 16 and 19: further comprising: a timer (driver circuit clock necessary for 102 figure 12, for actuator 46 control of stepper motor Col 11 ln 12-32), said timer used to measure an amount of time of a rotation of said multi-state rotary spool such that said flow rate for said flow path through said electronic modal base valve [(or DSC)] can be determined based on said amount of time of said rotation of said multi-state rotary spool (the stepper motor is based on a clock, which provides for timed angular rotational distance for counting the number of rotational positional steps for the rotary spool position, and the position is fed back via the potentiometer for confirmation to controller as discussed above.)
Santurbane discloses (as modified for the reasons discussed above) in claims 8, 17 and 20: wherein: a first duration of said time of said rotation of said multi-state rotary spool, as measured by said timer, corresponds to said softest setting (rotational clocked steps to the soft setting for alignment of 424c/426c to 432) for said electronic modal base valve [(or DSC)]; a second duration of said time of said rotation of said multi-state rotary spool, as measured by said timer, corresponds to said at least one intermediate setting (rotational clocked steps for intermediate setting alignment of 424b/426b and 432) for said electronic modal base valve [(or DSC)]; and a third duration of said time of said rotation of said multi-state rotary spool, as measured by said timer, corresponds to said lockout setting (rotational clocked steps for hard/lockout setting alignment of 424a/426a with 432) for said electronic modal base valve [(or DSC)].
Santurbane discloses (as modified for the reasons discussed above) in claim 9: The electronic modal base valve of claim 1, wherein said electronic modal base valve is a rebound valve (dampening rebound valve, i.e. shock absorber.)
Santurbane discloses (as modified for the reasons discussed above) in claim 11: The electronic valve of claim 10, further comprising: a user interface located remote from said electronic valve (controller user interface at 154 figure 1, paragraph 0037), said user interface to provide a wireless signal (i.e. via wireless communication paragraph 0038) to said manual command lockout, said wireless signal to cause an operation of said motive component (as discussed.)
Santurbane discloses (as modified for the reasons discussed above) in claim 12: The electronic valve of claim 10, further comprising: a user interface located remote from said electronic valve (controller user interface at 154 figure 1, paragraph 0037), said user interface comprising a wired connection with said electronic valve (i.e. via wired communication paragraph 0038), said user interface to provide a wired signal to said manual command lockout, said wired signal to cause an operation of said motive component (as discussed.)
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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