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 .
Detailed Action
Claims 1-27 are currently pending. Claims 1-27 remain rejected despite Applicant’s arguments filed 07/16/2026. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth. This Office action is Non-Final due to Examiner’s previous interpretation of prior art requiring an obviousness rejection instead of previous anticipation rejection as cited within Non-Final Rejection filed 02/26/2026. Response to Applicant arguments can be found at the end of this Office action.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8, line 2: “damping element configured as a sheet” should be “damping element is configured as a sheet”.
Appropriate correction is required.
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.
Claims 1-13, 18-20, 23-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Eckert (DE 202017104578 U1).
Regarding claim 1: Eckert teaches a rail pad comprising: a pad matrix comprising a first material (1; Fig.1), and at least one damping element at least partially encapsulated or embedded in the pad matrix (D1; Fig.2a-2b), the damping element comprising a second material, and wherein the second material comprises a damping factor tan delta greater than or equal to 0.5 (see attached EPO translation; Para.[0042]-[0043]). Eckert does not specifically teach that the damping factor tan delta is greater than or equal to 0.5 at a frequency of 1000 Hz at room temperature.
However, Eckert teaches that damping effect can be adjusted as desired (Para.[0043], lines 1-6) thereby teaching the claimed invention except for the factor tan delta being greater than or equal to 0.5 at a frequency of 1000Hz at room temperature. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the desired damping factor at the desired temperature and frequency, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 (II)(A).
Regarding claim 2: Eckert further teaches the rail pad according to claim 1, wherein the at least one damping element comprises between 10% and 90% of a total volume of the rail pad (apparent from Fig.2a-4b).
Regarding claim 3: Eckert further teaches the rail pad according to claim 1, further comprising a single damping element (Para.[0016], lines 6-7).
Regarding claim 4: Eckert further teaches the rail pad according to claim 1, further comprising a plurality of damping elements (D1; Fig.2a).
Regarding claim 5: Eckert further teaches the rail pad according to claim 1, wherein the at least one damping element comprises a polygonal or circular cross-section in at least one plane (Fig.5a-8b) configured to form shapes of, cuboids (Para.[0074], lines 1-3) and cylinders (26; Fig.7a).
Regarding claim 6: Eckert further teaches the rail pad according to claim 1, wherein the at least one damping element comprises a plurality of monodispersed or polydisperse particle-like units (Para.[0043]).
Regarding claim 7: Eckert teaches the rail pad according to claim 6, wherein the plurality of monodispersed or polydisperse particle-like units (Para.[0043]).
Eckert teaches the claimed invention except for the particle-like units being an average dimension between 50 nanometers and 1 millimeter. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a particle-like unit with an average dimension between 50 nanometers and 1 millimeter for desired effects, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 (II)(A).
Regarding claim 8: Eckert further teaches the rail pad according to claim 1, wherein the at least one damping element is configured as a sheet or film (Fig.3b).
Regarding claim 9: Eckert further teaches the rail pad according to claim 8, wherein the sheet or film configuration comprises at least one corrugated surface (Fig.3b).
Regarding claim 10: Eckert further teaches the rail pad according to claim 1, wherein the at least one damping element (D1-D4) further comprises at least one of polyisobutylene, crosslinked polyisobutylene (butyl rubber, llB), polyurethane elastomers (PU), polymermodified bitumen, polar polymers, nitrile, hydrogenated or carboxylated nitrile rubber (NBR, HNBR, XNBR), chlorinated polyolefins, conventional vulcanized rubbers, natural rubber (NR) or synthetic polyisoprenes (Pl), polybutadiene (PBD), styrene-butadiene rubber (SBR), styrene-butadiene-styrene black copolymers (SBS), ethylene-propylene diene monomer rubber (EPDM) (natural or synthetic rubber or suitable elastomers; Para.[0043]).
Regarding claim 11: Eckert further teaches the rail pad according to claim 1, wherein the pad matrix comprises at least one of crosslinked or non-crosslinked ethylene vinyl acetate (EVA), high density polyethylene (HOPE), polyurethane (PU), crosslinked ethylene-propylene-diene monomer (EPDM) rubber or natural rubber (NR), synthetic cis 1 ,4-polyisoprene rubber (IR), polybutadiene (PBD), PBD-based copolymers, styrene-5 butadiene rubber (SBR) or nitrile-butadiene rubber (NBR), or chloroprene rubber (CR), styrenic block copolymers (SBC), thermoplastic elastomers (TPO) based on rubbery semicrystalline polyolefin copolymers, thermoplastic vulcanizates (TPV), isotactic polypropylene-vulcanized ethylene- propylene-diene-monomer (EPDM) blends, copolyester elastomers (COPE), or polyamide elastomers (PAE) (natural or synthetic rubber or suitable elastomers; Para.[0041]).
Regarding claim 12: Eckert further teaches the rail pad according to claim 1, wherein at least one of the pad matrix and at least one damping element comprises at least one of pores, cavities and voids (Para.[0041] and [0043]).
Regarding claim 13: Eckert further teaches the rail pad according to claim 12, wherein at least one of the pores, cavities and voids are sized and distributed so that at least one of the pad matrix and the at least one damping element is configured as a close-celled or open-celled foam (Para.[0041], line 5).
Regarding claim 18: Eckert further teaches the rail pad according to claim 8, wherein the sheet further comprises external studs or ribs or other types of profile on one or both major faces (Fig.3b).
Regarding claim 19: Eckert further teaches the rail pad according to claim 1, wherein at least one of the pad matrix and the at least one damping element comprises internal gaps or holes
Regarding claim 20: Eckert further teaches the rail pad according to claim 8, wherein at least one of the pad matrix and the at least one damping element comprises internal gaps or holes or grooves or other types of profile, and wherein the gaps or holes or grooves or other types of profile comprise a cylindrical with a spherical cross-section, or grooves with a semispherical or semi ellipsoidal or rectangular cross-section (Figs. 2a-4b and 7a-c).
Regarding claim 23: Eckert further teaches the rail pad according to claims 19, wherein the gaps or holes or grooves or other types of profile of the pad matrix is either filled with air or with a material different from a one used for the damping element, whose bulk modulus is lower than the bulk modulus of the damping element and/or the pad matrix (microcellular composition; Para.[0041], line 5).
Regarding claim 24: Eckert further teaches the rail pad according to claim 19, wherein said gaps or holes or grooves or other types of profile of said pad matrix and/or said at least one damping element are filled with a material whose bulk modulus is a least one order of magnitude lower than that of the respective material used for the said pad matrix and/or said at least one damping element (Para.[0041] and Para.[0043], lines 5-10).
Regarding claim 26: Eckert teaches a method for producing a rail pad, comprising the steps of: a) preparing in a preform at least one damping element comprising a material having a damping factor tan delta greater than 0.5; b) introducing in a mold a before-prepared at least one damping element (Para.[0038]); and c) performing a multi-step molding process to at least partially encapsulate or embed the at least one damping element with a pad matrix and wherein the rail pad comprises a pad matrix comprising a first material and at least one damping element at least partially encapsulated or embedded in the pad matrix (Para.[0038]), the damping element comprising a second material wherein the second material of the at least one damping element comprises a damping factor tan delta greater than or equal to 0.5 (Para.[0042]). Eckert does not specifically teach that the damping factor tan delta is greater than or equal to 0.5 at a frequency of 1000 Hz at room temperature.
However, Eckert teaches that damping effect can be adjusted as desired (Para.[0043], lines 1-6) thereby teaching the claimed invention except for the factor tan delta being greater than or equal to 0.5 at a frequency of 1000Hz at room temperature. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the desired damping factor at the desired temperature and frequency, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 (II)(A).
Claims 14-17, 19, 21-22 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Eckert in view of Zhu et al. (CN 1488810 A).
Regarding claim 14: Eckert does not teach one or more stiffness modifying element arranged within or onto the pad matrix, separated from the at least one damping element.
However, Zhu teaches one or more stiffness modifying element arranged within or onto the pad matrix (3; Fig.3-8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert to include stiffness modifying elements as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Eckert in view of Zhu teaches the claimed invention except for the stiffness modifying element being separated from the at least one damping element. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the stiffness modifying element separated from the at least one damping element, 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).
Regarding claim 15: Eckert does not teach wherein the one or more stiffness modifying element comprises a material configured to increase stiffness of at least a portion of the pad matrix, relative to a stiffness of the pad matrix and comprising elastic moduli at least one of which is higher than the corresponding matrix modulus.
However, Zhu teaches the one or more stiffness modifying element comprises a material configured to increase stiffness of at least a portion of the pad matrix, relative to a stiffness of the pad matrix and comprising elastic moduli at least one of which is higher than the corresponding matrix modulus (3; Fig.5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert to include stiffness modifying elements as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 16: Eckert does not teach wherein the one or more stiffness modifying element is configured to decrease the stiffness of at least a portion of the pad matrix relative to a stiffness of the pad matrix and comprises elastic moduli at least one of which is lower than the corresponding matrix modulus.
However, Eckert teaches wherein the one or more stiffness modifying element is configured to decrease the stiffness of at least a portion of the pad matrix relative to a stiffness of the pad matrix and comprises elastic moduli at least one of which is lower than the corresponding matrix modulus (desired non-metallic materials; Para.[0014]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the stiffness modifying element with a desired material for stiffness modification for desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 17: Eckert does not teach wherein the one or more stiffness modifier comprises a polygonal or circular cross-section in at least one plane, forming cuboids, spheres, ellipsoids, cylinders, or prisms.
However, Zhu teaches wherein the one or more stiffness modifiers (3,8,6; Figs.15-22) comprises a polygonal or circular cross-section in at least one plane, forming cuboids. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert with the various shaped stiffness modifiers as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 19: Eckert teaches wherein at least one of the pad matrix and the at least one damping element comprises internal gaps or holes or other types of profile (Para.[0041] and [0043]). Eckert does not teach internal grooves.
However, Zhu teaches the rail pad according to claim 1, wherein at least one of the pad matrix and the at least one damping element comprises internal gaps or holes or grooves or other types of profile (various internal gaps, holes and grooves; Figs.5,7,8,18,19,22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert with the various shaped gaps, holes and grooves as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 21: Eckert does not teach wherein the grooves comprise rectilinear trajectories.
However, Zhu teaches wherein the grooves comprise rectilinear trajectories (Fig.7,8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert with the rectilinear shaped grooves as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 22: Eckert does not teach wherein the groove comprise regular or irregular zigzag or curvilinear trajectories.
However, Zhu teaches wherein the groove comprise regular or irregular zigzag or curvilinear trajectories (Fig.22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert with the zig zag or curvilinear grooves as in Zhu to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Regarding claim 27: Eckert does not teach the step of introducing in the mold at least one stiffening modifier before performing the multi-step molding process.
However, Zhu teaches the use of at least one stiffening modifier (steel; Fig.3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Eckert with the addition of at least one stiffening modifier introduced in the mold before performing the multi-step molding process to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Eckert in view of Miessbacher (WO 2009073910 A2).
Regarding claim 25: Eckert does not teach wherein the gaps or holes or grooves or other types of profile of said pad matrix and/or the at least one damping element are filled with an elastomeric close-celled or open-celled foam.
However, Miessbacher teaches wherein the gaps or holes or grooves or other types of profile of said pad matrix and/or the at least one damping element are filled with an elastomeric close-celled or open-celled foam (15; Fig.5 and see attached EPO translation; Para.[0047]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the rail pad of Eckert with the use of foam within the rail pad to achieve desired stiffness of the rail pad for the applicable system environment and ensure longevity of components with a reasonable expectation of success.
Response to Arguments
In response to Applicant’s argument that Eckert fails to disclose “the second material comprises a damping factor tan delta greater than or equal to 0.5 at a frequency of 1000 Hz at room temperature” as claimed within claim 1 and similarly within claim 26, Examiner submits the updated obviousness rejection above. This Office action is Non-Final due to Examiner’s previous interpretation of prior art requiring an obviousness rejection instead of previous anticipation rejection as cited within Non-Final Rejection filed 02/26/2026.
Conclusion
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/HEAVEN R BUFFINGTON/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615
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