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 § 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, 3-4, 7, 9-12, 14-19, and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hakes et al (10,946,911) in view of Westoby et al (9,719,158) and in further view of Johannsen (2018/0029653).
Per claims 1 and 10, Hakes et al shows a track pad 100, a plurality of which is connected together to form an endless loop around a sprocket and idle roller mounted on an undercarriage of a machine. The track pad 100 includes a body 105 formed of an alloy steel, including a first surface 110 for contacting the ground. An insert 115 is joined to the body 105 at a location opposite the first surface 110 to form a roller contact surface that interfaces with the sprocket and idle roller. The insert 115 is formed of a work-hardening alloy different from the alloy steel of the body 105.
Per claims 4 and 17, the track pad 100 includes a drive lug positioned on the body 105 for interfacing with the sprocket. The drive lug includes a second insert 120 located at a wear surface of the drive lug. The second insert 120 is also formed of the work-hardening alloy.
Regarding claims 1, 6-7, 10, 14, 19, and 21-24, Hakes et al does not disclose the specific grade/alloy of the manganese-steel alloy. Westoby et al teaches the use of a track pad formed of an austenitic manganese-steel alloy including chromium in the range of 1.0-3.5%, and 14% of manganese (column 4, lines 59-61 and 66 through column 5, line 1). Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to form at least the inserts of Hakes et al from the austenitic manganese-steel alloy of Westoby et al, dependent upon the desired chemical and physical features thereof, to prevent undue wear of the inserts during use, thus increasing the useable life of the track pads.
Further regarding claims 1, 4, 10, 17, and 19, while Hakes et al does show a drive lug having a second insert 120 of the same material as the first insert 115, but does not show two drive lugs on either side of the roller contact surface. Westoby et al teaches a track pad including a roller contact surface 42 having a wear-resistant material 52 on a wear surface 43 thereof, with a pair of drive lugs 44 including a wear-resistant material 52 on the wear surfaces 46 surfaces thereof. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to form the drive lug of Hakes et al as a pair of lugs on either side of a roller contact surface as taught by Westoby et al, as a substitute equivalent configuration, dependent upon the type of drive sprocket, rollers and idler wheels present on the vehicle on which the track is to be used, and to provide wear-resistant material at the wear surfaces of the track pads, thus increasing the useable life thereof.
Regarding claims 11-12, Hakes et al as modified by Westoby et al does not disclose the dimensions (length, width, thickness) of the track pad or insert. However, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to form the track pads with a suitable length and width to provide sufficient support and traction for the vehicle on which the track formed by the track pads will be used, without adding undue weight. Furthermore, one of ordinary skill would find it obvious to provide the inserts with a suitable thickness dependent upon the desired useful life expectancy of the track pads.
Regarding claims 3 and 15-16, Hakes et al as modified by Westoby et al does not disclose the specific grade/alloy of the alloy steel forming the body 105. Johannsen teaches the use of a track component 200’ (a functional equivalent to the track pad of Hakes et al) including a body 204’ formed of a low carbon alloy steel. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to form the body of Hakes et al as modified by Westoby et al from low carbon alloy steel dependent upon the desired chemical and physical features thereof.
Regarding claims 9 and 18, Hakes et al as modified by Westoby et al does not disclose the insert being friction welded with the body. Johannsen teaches the use of an insert 202’ being friction welded to the body 204’ of the track component 200’. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to use the method of friction welding as a substitute equivalent method of securing the body and inserts of Hakes et al as modified by Westoby et al, dependent upon cost and complexity of the process.
Regarding claim 19, Hakes et al as modified by Westoby et al discloses that the body of the track pad may be cast using alloy steel. The body is shaped with a receiving area for an insert. Hakes et al as modified by Westoby et al does not disclose the insert being first cast into shape and then friction welded to the body. Johannsen teaches a method of casting a body 204’ that includes a receiving area, then casting an insert 202’ into shape, and then friction welding the insert 202’ to the receiving area of the body 204’. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to use the method of friction welding as a substitute equivalent method of securing the body and inserts of Hakes et al as modified by Westoby et al, dependent upon cost and complexity of the process.
Response to Arguments
Applicant's arguments filed 30 March 2026 have been fully considered but they are not persuasive. The Applicant argues that the pending claims would not have been obvious over the cited documents. The Applicant argues that Westoby et al discloses a monolithic, not composite, construction, and that there are “no discrete insert components of any kind”; and that the Examiner “reads the claim limitation onto a structure that Westoby’s own disclosure expressly contradicts”. However, it appears that the Applicant is arguing a literal combination of the references, which is not the case (see section 5 below). The Applicant then argues that the resulting combination is the product “impermissible hindsight”. However, this is not the case (see section 6 below).
The Applicant argues that Westoby et al does not teach a “second insert joined with the body”. However, the Applicant is arguing the references in a piecemeal manner (see section 8 below). Namely, the base reference Hakes et al already shows and discloses a second insert 120 joined with the body. Westoby et al is merely used to teach a functionally equivalent configuration of the track pad (i.e. a pair of drive lugs on either side of a roller path instead of a pair of roller paths on either side of a drive lug).
The Applicant argues that Westoby et al “lacks the required compositional specificity”. However, this it not the case, given the fact that Westoby et al explicitly discloses the use of an austenitic manganese steel having 1-3% chromium and 12-14% manganese (as set forth in the rejection above).
In response to applicant's argument that Westoby et al is a monolithic body and lacks separately formed inserts, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this instance, both Hakes et al and Westoby et al show and disclose track pads having wear-resistance surfaces located at well-known wear surfaces. While Hakes et al and Westoby et al disclose different methods of providing those wear-resistant surfaces (a hardened insert and an explosively formed surface, respectively), neither reference explicitly teaches against the other method. For instance, both methods share a common result, i.e. providing a wear-resistant surface at common wear surfaces.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this instance, Hakes et al clearly shows a wear-resistant insert 115 on a roller contact surface and another insert 120 on a drive lug surface. Westoby et al also clearly shows a wear-resistant surface 52 on a roller contact surface 42 and another wear-resistance surface 52 on a drive lug surface 46. One of ordinary skill in the art would consider the configurations of the track shoes of Hakes et al and Westoby et al to be functionally equivalent, dependent upon the style of drive sprocket, rollers, and idlers used on the machine. Furthermore, these references both disclose functionally equivalent wear-resistant areas disposed on equivalent structure. Therefore, no hindsight has been used in the rejection, given the fact that functionally equivalent structure is shown in the references. The Applicant has failed to provide any evidence, in the form of a declaration or affidavit filed under 37 CFR 1.131 or 1.132, to support these arguments.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the Applicant argues that the “entire inventive concept” of Westoby et al is “to avoid multi-component composite construction by manufacturing the whole shoe from a single Mn-steel alloy and hardening it in-place via explosive detonation”.
The Applicant further argues that combining the teaching of Westoby et al with Hakes et al, which uses separately formed and joined inserts, “would be directly contrary” to the “purpose of teaching” of Westoby et al. however, this is not the case. First, Westoby et al discloses that the links 34 and pad 38 may be formed separately and joined by any suitable process known in the art (column 2, lines 65-67 and column 3, lines 1-2). Second, nowhere does Westoby et al explicitly state that the purpose of the invention disclosed therein is “to avoid multi-component composite construction”.
The Applicant also argues that the “Examiner’s combination is based on geometric similarity along and does not articulate a sufficient rationale for why a skilled artisan would selectively import Westoby’s geometry while abandoning its core teaching of monolithic construction.” First, it should be noted that at the time of filing of the amendment (30 March 2026) no official rejection using Westoby et al had yet been made. Therefore, the Applicant merely made an assumption of what the rejection utilizing Westoby et al would entail. Second, as set forth above, Westoby et al lacks any explicit disclosure that its “core teaching” is monolithic construction. Third, as set forth in the actual rejection above, clear rationale has been provided regarding the functional equivalency of various structure of Hake et al and Westoby et al.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON R BELLINGER whose telephone number is (571)272-6680. The examiner can normally be reached M-F 9-4.
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/JASON R BELLINGER/ Primary Examiner, Art Unit 3615
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