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 .
Status of the Claims
Claims 1-15 are pending. Claims 1, 7, 9, and 13-15 are currently amended. The objections to claims 14-15 are withdrawn. The 35 U.S.C. 112(b) rejections of claims 7-10 are withdrawn. The 35 U.S.C. 103 rejections of claims 1-10, and 13-15 are maintained. A response to Applicant’s remarks filed 02 February 2026 can be found at the end of this Office Action. This Office Action is Final.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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 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) 1-2, 7-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Theurer (US 5357867 A) in view of Scheuchzer (US 5181472 A).
In regards to claim 1, Theurer teaches a method for renewing old rails of a rail-way track, the method comprising:
A first phase (col. 4, lines 4-6) comprising unloading (col. 6, lines 52-55) new long rails (15) (Fig. 1) along the railway track (as seen in Fig. 1) from a transport wagon (3) of a work train (1) travelling in a first direction of travel (direction indicated by arrow 2); and
A second phase (col. 5, lines 47-48) comprising placing (col. 7, lines 38-40) the new long rails (15) on a fixed structure (31) of the railway track (as seen in Fig. 3)
Theurer does not teach fastening the new long rails to the fixed structure.
Scheuchzer teaches fastening (col. 6, lines 5-10) the new long rails (R2) to the fixed structure (col. 2, line 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include fastening the new long rails to a fixed structure as taught by Scheuchzer with a reasonable expectation of success for the purpose of reducing the manual labor needed to renew the rails (see Scheuchzer, col. 6, lines 5-10).
In regards to claim 2, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein during the first phase (Theurer, col. 4, lines 4-6), the new long rails (15) (Theurer, Fig. 1) are unloaded (Theurer, col. 6, lines 52-55) along the railway track from the transport wagon (3) of the work train (1), either outside the railway track along the old rails to be renewed, or in a center of the railway track (Theurer, col. 6, lines 52-53, “desired track gage” allows for adjustability and could reasonably place the new rails in the center of the railway track or outside the railway track).
In regards to claim 7, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein the second phase (Theurer, col. 5, lines 47-48) comprises
Theurer does not teach a step of neutralizing, by portions, the new long rails to a reference state, in which each of the portions of the new long rails is neutralized in said reference state before being placed on the railway track, the neutralizing step being a heating or cooling step, the reference state being a reference temperature.
Scheuchzer teaches a step of neutralizing (col. 1, lines 20-21), by portions (col. 2, lines 14-17, “traversed by the new rails” includes the new rail being heated in portions as it travels into the “heating tunnel”), the new long rails to a reference state (col. 1, lines 23-24), in which each of the portions of the new long rails is neutralized (col. 1, lines 20-21) in said reference state (col. 1, lines 23-24) before being placed on the railway track, wherein the step of neutralizing (col. 1, lines 20-21) includes a heating (col. 2, lines 14-17)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include neutralizing the new rails as taught by Scheuchzer with a reasonable expectation of success for the purpose of increasing the resilience of the new rails (see Scheuchzer, col. 1, lines 28-31).
In regards to claim 8, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 7, wherein, the work train (1) (Theurer, Fig. 1) comprises vehicles mounted on wheel sets (4, 5) (Theurer, Fig. 1). the step of neutralizing (Scheuchzer, col. 1, lines 20-21) being performed
While the combination of Theurer as modified by Scheuchzer above does not explicitly teach the step of neutralizing being performed in a zone of the work train located upstream of a first of the wheel sets of the work train, with respect to the new long rails, in relation to the second direction of travel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the step of neutralizing being performed upstream of a first of the wheel sets of the work train in relation to the second direction of travel with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails and the resilience of the rails, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
In regards to claim 9, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 8, wherein, the step of neutralizing (Scheuchzer, col. 1, lines 20-21) is followed by a step of holding and/or correction (Scheuchzer, col. 4, lines 26-33) of the reference state (Scheuchzer, col. 1, lines 23-24) of a neutralized portion (Scheuchzer, col. 2, lines 14-17) of the new long rail (15) (Theurer, Fig. 1), the step of holding and/or correction (Scheuchzer, col. 4, lines 26-33) of the reference (Scheuchzer, col. 1, lines 23-24) being carried out
While the combination of Theurer as modified by Scheuchzer does not explicitly teach the step of holding and/or correction being carried out in a zone of the work train located at least downstream of the first of the wheel sets with respect to the new long rails, in relation to the second direction of travel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the step of holding and/or correction being carried out in a zone of the work train located at least downstream of the first of the wheel sets with respect to the new long rails, in relation to the second direction of travel with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails and the resilience of the rails, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
In regards to claim 10, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 9, wherein, in the second phase (Theurer, col. 5, lines 47-48), the new long rail (15) (Theurer, Fig. 1) is fastened (Scheuchzer, col. 6, lines 5-10) to the fixed structure by ties (Scheuchzer, col. 2, lines 26) in a zone of the work train (1) (Theurer, Fig. 1)
While the combination of Theurer as modified by Scheuchzer does not explicitly teach the fastening of the rails being located downstream from the zone of the work train in which the step of holding and/or correction of the reference state is performed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the fastening of the rails being located downstream from the zone of the work train in which the step of holding and/or correction of the reference state is performed with a reasonable expectation of success for the purpose of increasing the resilience of the railway to temperature and other stresses, since it has been held that the selection of the order of performing process steps in the absence of new or unexpected results involves only routine skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04(IV)(C). Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
In regards to claim 13, Theurer teaches a work train (1) (Fig. 1) configured to renew old rails (14), the work train (1) comprising at least one transport wagon (3) designed to ensure the transport of new long rails (15) to be transported on a work zone, and at least one work wagon, the work train (1) being designed for unloading (col. 6, lines 52-55) the new long rails (15) along a railway track from the transport wagon (3), while moving (col. 4, lines 4-6) in a first direction of travel (direction indicated by arrow 2),
Theurer does not teach the work train comprising a work station for fastening new long rails on a fixed structure of the railway track.
Scheuchzer teaches a work station for fastening (col. 6, lines 5-10) new long rails on a fixed structure (col. 2, line 26) of the railway track.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include fastening the new long rails to a fixed structure as taught by Scheuchzer with a reasonable expectation of success for the purpose of reducing the manual labor needed to renew the rails (see Scheuchzer, col. 6, lines 5-10).
The combination of Theurer as modified by Scheuchzer does not explicitly teach fastening new long rails in a zone downstream of a placement zone of said new long rails with respect to a second direction of travel opposite the first direction of travel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include fastening new long rails in a zone downstream of a placement zone of said new long rails with respect to a second direction of travel opposite the first direction of travel with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails, since it has been held that the selection of the order of performing process steps in the absence of new or unexpected results involves only routine skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04(IV)(C). Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
Claim(s) 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Theurer (US 5357867 A) in view of Scheuchzer (US 5181472 A), Tao (WO 2019128014 A1), and Valley (US 6515249 B1).
In regards to claim 3, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein each of the new long rails (15) (Theurer, Fig. 1) comprises two ends (a rail must have two ends to be connected to another rail on either side), and wherein, during the first phase (Theurer, col. 4, lines 4-6),
Theurer does not teach each of the ends of the new long rails unloaded undergoes a step of preparation prior to a step of permanent connection, the step of preparation comprising a step of abrasive machining after the unloading along the railway track.
Tao teaches each of the ends of the new long rails unloaded undergoes a step of preparation (see machine translation, para. [0067], lines 1-2) prior to a step of permanent connection (para. [0067], lines 2-3), the step of preparation comprising a step of abrasive machining (para. [0067], lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include a step of preparation comprising a step of abrasive machining as taught by Tao with a reasonable expectation of success for the purpose of increasing the ease of subsequent welding (see Tao, para. [0067]).
While the combination of Theurer as modified by Tao does not explicitly teach the step of preparation happens after the unloading along the railway track. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the step of preparation after the unloading along the railway track with a reasonable expectation of success for the purpose of removing any imperfections caused during transport of the rail, since it has been held that the selection of the order of performing process steps in the absence of new or unexpected results involves only routine skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04(IV)(C).
Theurer does not teach a welding machine traveling independently of the work train in the first direction of travel, behind the work train.
Valley teaches a welding machine (25) (Fig. 1) traveling independently (col. 3, lines 39-43) of the work train (as seen in Fig. 1, welding machine 25 is not attached to a train).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include a welding machine traveling independently of the work train as taught by Valley with a reasonable expectation of success for the purpose of increasing the adjustability of the system by allowing the welding machine to position itself (see Valley, col. 3, lines 36-37).
While the combination of Theurer as modified by Valley above does not explicitly teach the welding machine traveling in the first direction of travel, behind the work train. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the welding machine behind the work train and traveling in the same direction as the work train with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails by adjusting the positioning of the welding machine, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
In regards to claim 15, the combination of Theurer as modified by Scheuchzer and Valley above teaches the rail convoy according to claim 14, wherein the welding machine (25) (Valley, Fig. 1) is equipped with at least one item of welding equipment (26) configured to implement
Theurer does not teach a step of preparation for a subsequent welding step.
Tao teaches a step of preparation (para. [0067], lines 1-2) for a subsequent welding step (para. [0067], lines 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include a step of preparation comprising a step of abrasive machining as taught by Tao with a reasonable expectation of success for the purpose of increasing the ease of subsequent welding (see Tao, para. [0067]).
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Theurer (US 5357867 A) in view of Scheuchzer (US 5181472 A), and Tao (WO 2019128014 A1).
In regards to claim 4, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein
Theurer does not teach wherein during the second phase the work train is configured to dismantle the old rails.
Tao teaches wherein the work train (25) is configured to dismantle the old rails ([0059], lines 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include dismantling the old rails as taught by Tao with a reasonable expectation of success for the purpose of increasing the ease of removing the old rails (see Tao, para. [0059], lines 1-3).
In regards to claim 5, the combination of Theurer as modified by Scheuchzer and Tao above teaches the method for renewing rails according to claim 4, wherein,
Theurer does not teach that the old rails are loaded onto the transport wagon of the work train during the second phase.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include loading the old rails onto the transport wagon of the work train during the second phase with a reasonable expectation of success for the purpose of reducing the unloading/loading burden during the first phase to ease the renewal process, since it has been held that the selection of the order of performing process steps in the absence of new or unexpected results involves only routine skill in the art. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP § 2144.04(IV)(C).
Claim(s) 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Theurer (US 5357867 A) in view of Scheuchzer (US 5181472 A), and Valley (US 6515249 B1).
In regards to claim 6, the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein the second phase (Theurer, col. 5, lines 47-48)
Theurer does not teach welding new long rails end-to-end, by means of a welding station, the welding station being formed on a welding machine travelling independently of the work train.
Valley teaches welding new long rails end-to-end (col. 4, lines 12-27), by means of a welding station (26) (Fig. 1), the welding station (26) being formed on (as seen in Fig. 1) a welding machine (25) travelling independently (col. 3, lines 39-43) of the work train (as seen in Fig. 1, welding machine 25 is not attached to a train).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include welding new long rails end-to-end by means of a welding station formed on a welding machine traveling independently of the work train as taught by Valley with a reasonable expectation of success for the purpose of increasing the adjustability of the renewal process by allowing the welding machine to position itself (see Valley, col. 3, lines 36-37).
While the combination of Theurer as modified by Valley above does not explicitly teach the welding station located, with reference to the second direction of travel, upstream of a placement zone of the new long rails on the railway track, and the welding machine travelling in the second direction of travel at a distance from the work train.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the welding station located upstream of a placement zone with reference to the second direction of travel, and the welding machine travelling in the second direction of travel at a distance from the work train with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails by adjusting the positioning of the welding machine, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
In regards to claim 14, the combination of Theurer as modified by Scheuchzer above teaches a rail convoy wherein the rail convoy comprises a work train and at least one work wagon of claim 13 comprising a plurality of work vehicles (Theurer, as seen in Figs. 1, 2),
Theurer does not teach the rail convoy comprising at least one welding machine designed so as to be able to travel independently of the work train at a distance from the work train in a region of a work zone.
Valley teaches a welding machine (25) (Fig. 1) designed so as to be able to travel independently (col. 3, lines 39-43) of the work train (as seen in Fig. 1, welding machine 25 is not attached to a train).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of renewing old rails of Theurer to include a welding machine traveling independently of the work train as taught by Valley with a reasonable expectation of success for the purpose of increasing the adjustability of the system by allowing the welding machine to position itself (see Valley, col. 3, lines 36-37).
While the combination of Theurer as modified by Valley above does not explicitly teach the welding machine at a distance from the work train in a region of a works zone. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the welding machine in a region of a works zone at a distance from the work train with a reasonable expectation of success for the purpose of increasing the ease of renewing the rails by adjusting the positioning of the welding machine, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). See MPEP § 2144.04(VI)(C).
Allowable Subject Matter
Claims 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach the combination of limitations as recited in claim 11, while the combination of Theurer as modified by Scheuchzer above teaches the method for renewing rails according to claim 1, wherein the second phase comprises an initial phase comprising:
A step of neutralizing (Scheuchzer, col. 1, lines 20-21) by heating or cooling, to a reference state (Scheuchzer, col. 1, lines 23-24), at least one end portion of a first new long rail, the end portion (Scheuchzer, col. 2, lines 14-17) comprising an end of the first new long rail (15) (Theurer, Fig. 1)
Following placement of at least a portion of the first new long rail (15) (Theurer, Fig. 1) on the fixed structure (Scheuchzer, col. 2, lines 26)
The method further comprising:
Theurer does not teach wherein an old joining rail is to be connected to the new long rail; a step of temporary end-to-end connection of an end of the old joining rail to an end of the first new long rail by at least one temporary connection device selected from the group consisting of a fishplate and a rail driftpin.
Plasser (US 3552647 A) teaches wherein an old joining rail is to be connected (col. 1, lines 61-69) to the new long rail; a step of temporary end-to-end connection (col. 1, lines 61-69) of an end of the old joining rail to an end of the first new long rail.
Neylan (WO 2009111816 A1) teaches a temporary connection device (4-6) selected from the group consisting of a fishplate (6) and a rail driftpin (pg. 4, lines 24-25).
Theurer does not teach a step of neutralizing by heating or cooling an end portion of the old joining rail comprising the end of the old joining rail to which the end portion of the first new long rail is to be connected. The examiner finds no reason to modify the step of neutralizing to meet the claimed limitation. Furthermore, the modifications necessary would require an improper amount of hindsight, i.e., the modifications would require improperly modifying a secondary reference.
Thus, Claim 11 is non-obvious in view of the prior art, but is still objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 12 is also non-obvious in view of the prior art for containing similar allowable limitations as claim 11. However, Claim 12 is still objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 02 February 2026 have been fully considered but they are not persuasive.
Applicant argues that Theurer does not teach moving a work train in two opposite directions when renewing old rails, but rather teaches two distinct construction processes: renewing old rails, and laying new tracks. Applicant further argues that Theurer's invention is not a hybrid process and thus does not describe the same renewal process in two successive phases and following two distinct directions of travel.
Examiner responds in disagreement. The claims as written requires a first phase unloading new long rails while travelling in a first direction, and a second phase placing new long rails on a fixed structure and fastening while travelling in a second direction opposite the first. Theurer teaches two phases of renewal following two distinct directions of travel as discussed in the rejection above for Claim 1. The claim language does not explicitly require a “hybrid process,” however it is believed by the Examiner that Theurer as discussed above is indeed a hybrid process.
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 JAMES WILLIAM JONES whose telephone number is (571)270-7063. The examiner can normally be reached M-F: 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel Morano can be reached at (571) 272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES WILLIAM JONES/ Examiner, Art Unit 3615
/S. Joseph Morano/ Supervisory Patent Examiner, Art Unit 3615