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.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mochizuki (USPub 2018/0215230).
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With respect to claim 1, Mochizuki teaches a hydraulically adjustable suspension preload arrangement including a housing (33) configured to couple with a main damper cylinder (1, 10), comprising a slave cylinder chamber (33b) with a slave cylinder (34) within a portion of the slave cylinder chamber, the slave cylinder telescopically movable with respect to the housing in a direction along an axis of said main damper cylinder (compare left and right halves of figure 3); a fluid chamber (region L) within a portion of said slave cylinder chamber; and a fluid port configured to provide a fluid flow for said fluid chamber (hydraulic fluid flow connection between L and pump 31, the port provided at the exit of the connection from 33a where it proceeds to the pump; also see ¶0018) , wherein an increase in a fluid volume within the fluid chamber causes a portion of said slave cylinder to telescopically extend from the slave cylinder chamber in an axial direction along said main damper cylinder (right condition, figure 3).
With respect to claim 3, the fluid port configured to provide a fluid flow for said fluid chamber (i.e., between L and 31, see ¶0018), wherein a decrease in said fluid volume within the fluid chamber allows the portion of the slave cylinder to telescopically retract into the slave cylinder chamber (illustration on left side of figure 3).
With respect to claim 4, a hose coupled with said fluid port (a hose is taught in ¶0018, not separately illustrated); and a pump (31) coupled with said hose, the pump configured to pump the hydraulic fluid via the hose into the fluid port to increase said fluid volume in said slave cylinder chamber and receive the fluid via the hose from the fluid port to reduce the fluid volume in the slave cylinder chamber.
With respect to claim 5, the pump being a hydraulic pump with a motor drive (32).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki in
view of Tucker et al. (US 2020/0223274, 371 filing 10/3/2019; PCT filing 5/31/2018, effective filing via provisional as of 6/8/2017).
With respect to claim 6, the reference to Mochizuki as discussed above lacks a specific teaching of the provision of an accumulator coupled to the pump, which provides an increase in actuation to an amount greater than the operation of the pump by itself. Tucker et al. teach that it is well known in a suspension system where a pump (28) provides pressurized fluid to operate a cylinder in a suspension arrangement to provide an accumulator (29) such as a gas precharge accumulator (¶0036) which
provides stabilization and make up fluid (up to the pressure of the pre-charge) beyond the pressurized output of the pump (e.g., from the recovery of the gas precharge). It 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 to provide the motor and pump arrangement as initially provided by Mochizuki with an accumulator such as a gas precharge accumulator as taught by Tucker et al., for the purpose of stabilizing pressures in the system and providing additional flow (e.g., from the recovery
of the gas precharge) beyond that which is provided by the pump.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mochizuki.
With respect to claim 7, the reference to Mochizuki is discussed above and while teaching a preload arrangement, does not expressly teach that the arrangement is a modular system configured to be retrofit to a main damper of a previously extant legacy shock absorber. Initially, shock absorber modification systems which can be applied to existing structures are notoriously old and well known. To the extent that Mochizuki teaches a cylinder housing, cylinder and crossover sized to surround the outer casing of a shock assembly (1, 10) which is otherwise not described in substantive detail, it 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 to provide the cylinder housing, cylinder and crossover as a retrofit which may be used with other shock assemblies having the same outer diameter as the one initially taught by Mochizuki, for the purpose of beneficially providing the hydraulic preload and height adjustment attributes of the system taught by Mochizuki to other vehicle shock assemblies which initially lack the hydraulic preload and height adjustment structure.
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 1-16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-15 of U.S. Patent No. 12,496,867. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite similar limitations.
With respect to claim 1, claim 1 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 2, claim 1 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 3, claim 2 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 4, claim 3 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 5, claim 4 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 6, claim 5 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 7, claim 6 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 8, claim 7 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 9, claim 9 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 10, claim 10 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 11, claim 11 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 12, claim 12 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 13, claim 13 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 14, claim 14 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 15, claim 14 of U.S. Patent No. 12,496,867 disclose similar limitations.
With respect to claim 16, claim 15 of U.S. Patent No. 12,496,867 disclose similar limitations.
Response to Arguments
Applicant's arguments filed 6/17/26 have been fully considered but they are not persuasive. On pages 9-10 Applicant argues that newly amended Claim 1 and new claims 2-16 no longer contain the same recitations as those of originally filed. However, the Examiner maintains that the Double Patenting rejection is still proper because new limitations were not added to amended claim 1; instead, limitations were removed to make the claim broader. As such, the Double Patenting rejection with the narrower claims of U.S. Patent No. 12,496,867 still applies. With respect to the prior art rejection, Applicant has provided not arguments as to why the prior art used should not be applied to the broader, newly amended claim 1. As such, the prior art rejection still applies.
Conclusion
THIS ACTION IS MADE FINAL. 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 DREW J BROWN whose telephone number is (571)272-1362. The examiner can normally be reached Monday-Friday.
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DREW BROWN
Primary Examiner
Art Unit 3616
/DREW J BROWN/Primary Examiner, Art Unit 3617
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