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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 28, 2025 has been entered.
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 protruding versus recessed shoulder recited in claim 17; and at least one further clamping situation recited in claim 23 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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
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, 12, 17 and 20-27 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 recites “a central plane perpendicularly extending relative to the central axis, the central plane including a central recess region” in Lines 6-7. The claim lacks support in the specification at the time of filing for a plane having a central recess region. As such, it is new matter. Appropriate correction required.
Claim 1 recites “engaging a shoulder section of an inner diameter of the blank without any support or clamping jaw contacting the central recess region of the blank” in Lines 21-23. The claim lacks support in the specification at the time of filing for the jaws engaging an inner diameter of the blank while also not engaging a central recess region thereof. As such, it is new matter. Appropriate correction required.
Claim 23 recites “at least one further clamping situation” in Lines 2-3. The written description fails to convey to one having ordinary skill that the inventor had possession of the invention of the further clamping situation as it is not described in a manner to put one of ordinary skill on notice of the scope of such a limitation. Appropriate correction required.
Claim 27 recites “an inner diameter of the annular blank is machined to form the non-rail contact hub surface.” The claim lacks support in the specification at the time of filing for the inner diameter being machined to form the non-rail contact hub surface. Moreover, the inner diameter is previously recited in claim 1 as being engaged by the clamping jaws. As such, it is new matter. Appropriate correction required.
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, 12, 17 and 20-27 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 recites “a central plane perpendicularly extending relative to the central axis, the central plane including a central recess region” in Lines 6-7. It is unclear how the central plane has a central recess region. By definition, the plane is flat. If Applicant means that the disk-shaped workpiece includes a central recess and the central plane intersects said feature, then the claim should be written to reflect that relationship. It is also worth noting, that, if Applicant means that the central recess region relates to the illustrated through-hole in the disk, reciting this feature as a recess is a misnomer. That is, the illustrated central recess is not a recess but instead a through-hole. Moreover, it is worth noting that referring to a central recess region is likely much broader than Applicant intends (i.e., “region,” without more, has no boundaries). Appropriate correction required.
Claim 1 recites “engaging a shoulder section of an inner diameter of the blank without any support or clamping jaw contacting the central recess region of the blank” in Lines 21-23. The metes and bounds of the central recess region are not clear delineated to put one of ordinary skill on notice of the claim scope. That is, the claim defines a shoulder of an inner diameter, which infers a recess, but then the claim states that the clamping jaw does not engage the central recess region, which seems to present a conflict. It may be best to define the central recess region to clarify the claim scope. Appropriate correction required.
Claim 17 recites “the shoulder section of the inner diameter of the blank is an axially protruding portion of the blank or an axially recessed portion of the blank.” It is unclear what the different is between the recessed shoulder and the protruding shoulder. That is, at some point there must be a recessed or protruding portion involved to form the shoulder in either case. Appropriate correction required.
Claim 21 recites “a portion of the inner diameter of the at least one blank is machined at the central recess region to form a central recess of the wheel” in Lines 2-3. The inner diameter is previously recited in claim 1 as being engaged by the clamping jaws. As such, it is unclear how the inner diameter is machined to form the hub surface. Moreover, it is unclear what constitutes the inner diameter in this context. Additionally, it is unclear what constitutes the central recess region especially in this instance where the central recess is to be formed. It is unclear how the central recess region and the central recess differ. Appropriate correction required.
Claim 22 recites the limitation “the current clamping situation” in Lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction required.
Claim 27 recites “an inner diameter of the annular blank is machined to form the non-rail contact hub surface.” The inner diameter is previously recited in claim 1 as being engaged by the clamping jaws. As such, it is unclear how the inner diameter is machined to form the hub surface. Appropriate correction required.
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, 12, 17, 20, 21 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. (EP 0824993 A1) in view of Kummer (US Patent No. 3,459,076).
(Claim 1) Schneider et al. (“Schneider”) discloses a method for producing an annular disk-shaped train wheel for subsequent attachment to a rail vehicle wheel axle (Figs. 1-3; 1; ¶¶ 0004-0006, 0009-0015). The method includes providing a disk-shaped or annular disk-shaped blank in the form of a train wheel (1), which has a central axis defining a symmetry axis and a central plane perpendicularly extending relative to the central axis and which is to be machined mechanically at its outer circumference to form a rail contact surface which includes a running surface of the wheel and at1 a surface of the blank parallel to the central plane of the blank to form a non-rail contact hub surface (Figs. 2, 3; ¶¶ 0012-0013).
The method further includes arranging or clamping the blank in a clamping situation and mechanically machining the clamped blank to produce the wheel for subsequent attachment to a rail vehicle wheel axle (Figs. 2, 3; ¶¶ 0012-0015). In the clamping situation, the blank is clamped via clamping jaws (2a, 2b) engaging a shoulder section of an inner diameter of the blank without, as best understood, any support or clamping jaw contacting the central recess region of the blank, and a mechanical of the outer circumference of the blank is performed to form, via turning, the rail contact surface which comprises the running surface of the wheel (¶ 0012; Figs. 2, 3). While the central axis is not claimed with particularity (e.g., with regard to a rotation axis of the spindle), Schneider does not explicitly disclose the 90-degree orientation as it would be in a horizontal lathe. Additionally, Schneider does not explicitly disclose a second clamping situation in the blank is clamped via the clamping jaws engaging the outer circumference of the blank without any support or clamping jaw2 contacting the central recess region of the blank while machining the surface parallel to the central plane to form the hub. It is worth noting, however, that Schneider discloses a hub surface parallel to the central plane (Figs. 1-3).
Kummer discloses a method of clamping a disk-shaped blank is clamped via the clamping jaws engaging the outer circumference of the blank without any support or clamping jaw3 contacting the central recess region of the blank while machining the surface parallel to the central plane to form the hub (Figs. 2a-2c; Col. 1, Lines 71-72; Col. 2, Lines 1-5; Col. 3, Lines 10-25). The central axis of the workpiece is perpendicular to a vertical axis of the machine tool (Fig. 3). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Schneider with the clamping situation taught by Kummer in order to brace the disk-shaped workpiece during facing (Col. 1, Lines 71-72; Col. 2, Lines 1-5; Col. 3, Lines 10-25) of the hub surface, boring and to form the recessed shoulder portions for performing the clamping situation of Schneider (Figs. 2a-2c).
(Claim 17) The shoulder section of the inner diameter of the blank is an axially protruding portion of the blank or an axially recessed portion of the blank (Schneider 5a, 5b, 8a, 8b; Figs. 1-3).
(Claim 20) The disk-shaped or annular wheel is a new wheel unattached to any rail vehicle axle (Schneider ¶¶ 0004, 0005, 0009).
(Claim 21) In either the first clamping situation or the second clamping situation, a portion of the inner diameter of the at least one blank is machined at the central recess region to form a central recess of the wheel via turning (Schneider Figs. 2, 3; Kummer Figs. 2a-2c).
(Claim 25) The modified clamping jaws are operable to perform both the first clamping situation and the second clamping situation (Schneider Figs. 2, 3; Kummer Figs. 2a-2c).
(Claim 26) The modified clamping jaws each include a radially-outward facing contact surface operable to contact the shoulder section of the inner diameter of the blank in the first clamping situation, and a radially-inward facing contact surface operable to contact the outer circumference of the blank in the second clamping situation (Schneider Figs. 2, 3; Kummer Figs. 2a-2c).
(Claim 27) An inner diameter of the annular blank is machined to form the non-rail contact hub surface (Schneider Figs. 2, 3; Kummer Figs. 2a-2c).
Claims 12, and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider et al. (EP 0824993 A1) in view of Kummer (US Patent No. 3,459,076) further in view of Fujimoto et al. (US Pub. No. 2016/0067840 A1).
Schneider discloses turning a workpiece 180 degrees such that a front surface is facing away from the spindle and then rotated and clamped such that the front surface then faces the spindle (Figs. 2, 3). Yet, Schneider does not explicitly disclose a handling robot as claimed.
Fujimoto et al. (“Fujimoto”) discloses a handling robot (31) capable of moving a blank from a first clamping situation into a second clamping situation (Fig. 3). The handling robot is operable to remove a blank that has already been mechanically machined in sections from a current clamping situation, to rotate and/or turn the blank that has already been mechanically machined in sections, and to transfer the blank that has already been mechanically machined in sections into the current clamping situation (Figs. 3-8). The handling robot is operable to transfer a blank from the first clamping situation to the second clamping situation or at least one further clamping situation (Figs. 3-8). The handling robot is a multi-axis gripping robot (Figs. 2-8). At a time prior to filing it would have been obvious to one having ordinary skill in the art to modify the method disclosed in Schneider with a handling robot as suggested by Fujimoto as “obvious to try” – choosing from a finite number of solutions to obtain a predictable result of automated placement of the workpiece and/or in order to automate the process. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (reciting several exemplary rationales that may support a finding of obviousness); In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because of the new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Funke et al. (DE 102013114124 A1) (disclosing a cutting tool for cutting the profile of a new or used railroad wheels); Kraemer (US Patent No. 4,214,846 (disclosing cutting tool method for cutting rail wheels while acknowledging methods include cutting new and used wheels); Heymann Lother et al. (US Patent No. 4,318,293) (disclosing chuck and lathe for a rail wheel); Grund et al. (CN 101081439 A) (disclosing a clamping situation and cutting method for new and used rail wheels); Cole (US Patent No. 1,605,173); and Lace (US Patent No. 1,460,385) (disclosing a clamp of a wheel blank at the outer circumference thereof).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN RUFO whose telephone number is (571)272-4604. The examiner can normally be reached Mon-Thurs.
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/RYAN RUFO/Primary Examiner, Art Unit 3722
1 See https://www.merriam-webster.com/dictionary/at (defining “at” as “used as a function word to indicate presence or occurrence in, on, or near”) (last visited December 6, 2025).
2 It is worth noting that the phrase “support or clamping jaw” provides for an option, which is not likely what Applicant intends. That is, the limitation may be satisfied with a support contacting the claimed region but not the jaws or vice versa. If Applicant means that neither may contact the claimed region, the claim should be written in a manner that clearly expresses that intent.
3 It is worth noting that the phrase “support or clamping jaw” provides for an option, which is not likely what Applicant intends. That is, the limitation may be satisfied with a support contacting the claimed region but not the jaws or vice versa. If Applicant means that neither may contact the claimed region, the claim should be written in a manner that clearly expresses that intent.