DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/22/2026 have been entered.
Information Disclosure Statements
The Information Disclosure Statements (IDS) filed on 2/12/2026 has been considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware of, in the specification.
Status of Application
Claims 1-20 are pending.
Claims 1, 10, 11, 15, and 19 have been amended.
Claims 1, 15, and 19 are independent.
This Non-Final Office action is in response to the “Request for Continued Examination with Amendments and Remarks” received on 5/22/2026.
Response to Arguments/Remarks
With respect to Applicant’s remarks filed on 5/22/2026; Applicant's “Amendments and Remarks” have been fully considered. Applicant’s remarks will be addressed in sequential order as they were presented.
With respect to the claim rejections under 35 U.S.C. § 112 (b), applicants “Amendment and Remarks” have been fully considered and were persuasive. Therefore the claim rejections under 35 U.S.C. § 112 (b) have been withdrawn.
With respect to the claim rejections under 35 U.S.C. § 103, applicants “Amendment and Remarks” have been fully considered.
Applicant remarks “Aul nor Forbes teaches or suggests this claimed
Configuration” and the Office respectfully disagrees.
It remains the Office’s stance that the cited prior art still renders the claimed subject matter obvious. While applicant has attempted to overcome the cited prior art, using flanges is known. Further, by merely stating a first and second flange with a side frame interface between, without stating any more detail, makes these limitations extremely broad. While broad limitations are not indefinite, what is and what is not a flange is very open, as well as what is and what is not an interface between. It remains the Office’s stance that Aul would still disclose these features, as Aul discloses two halves to a system, 610 and 620. These two halves cover the axel and as applicant agrees are used to be mounted to the axel structure. Further, in an embodiment, these two halves have elongated members that are connected with a 4 bars, 640 in Figure 5a-5b. These 4 bars could be interpreted as connecting to flanges, that run parallel on both the upper and lower system (610 and 620) and thus would read on the claimed subject matter. Further, without stating what is and what is not a side frame interface, it appears that between is an side frame interface. Therefore, the Office respectfully disagrees with applicant and the claim rejections under 35 U.S.C. § 103 remain.
The Office suggests amending the claims to clearly capture the desired metes and bounds of the claimed subject matter and to not use overly broad and ill-defined terms.
Applicant further argues that the other independent claims which recite similar features are allowable and the dependent claims are also allowable since they depend on allowable subject and the Office respectfully disagrees. It is the Office's stance that all of the claimed subject matter has been properly rejected; therefore the Office's respectfully disagrees with applicant’s arguments.
It is the Office’s stance that all of applicant arguments have been considered.
Non-Final Office Action
CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 10 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP 2111.01 (I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See 15 MPEP 2111.01 (II).
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01 (IV). Following a review of the claims in view of the specification herein, the Office has found that Applicant has not provided any lexicographic definitions, either expressly or implicitly, for any claim terms or phrases with any reasonable clarity, deliberateness and precision. Accordingly, the Office concludes that Applicant has not acted as his/her own lexicographer.
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function. See 35 U.S.C. §112(f) and MPEP §2181-2183. As noted in MPEP §2181, a three prong test is used to determine the scope of a means-plus-function limitation in a claim:
the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function
the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"
the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The Office has found herein that the claims do not contain limitations of means or means type language that must be analyzed under 35 U.S.C. §112 (f).
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-11, 14-16, and 19-20 are rejected under 35 USC 103 as being unpatentable over Aul et al. (United States Patent Publication 2021/0323586) in view of Forbes et al. (United States Patent Publication 2006/0117985).
With respect to Claim 1: While Aul discloses “A bearing adapter for coupling an accessory onto a railway vehicle comprising” [Aul, Abstract, ¶ 0004-0005, 0048-0059 with Figures 5a-5b];
“an upper structure configured to extend over an upper portion of a rail bearing coupled to an axle of the railway vehicle” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b (Section 610)];
“wherein the upper structure includes a first flange, a second flange, and a side frame interface extending between the first flange and the second flange;” [Aul, ¶ 0003-0012, 0050-0052, with Figures 5a-5b (the parts that bars 640 connect to in Figures 5a-5b)];
“and one or more mounting elements located on the upper structure and configured to enable the accessory to be coupled onto the railway vehicle” [Aul, Abstract, ¶ 0004-0005, 0018, 0048-0059 with Figures 5a-5b (the first part is mounted to the wagon bogie at an upper side of the axle, and the second part is connected to the first part by screws at a lower side of the axle)];
Aul does not specifically state retrofitting.
Forbes, which is also a system of bearing adapter with pedal geometries teaches “wherein the upper structure includes side frame interface features configured for fitment into stock side frame pedestal geometries” [Forbes, Abstract ¶ 0021 and 0363].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Forbes into the invention of Aul to not only include generating electricity for railway applications by adding generators to axles as Aul discloses but to also mount retrofitted systems based on pedestals geometries as taught by Forbes with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Forbes into Aul to create a more robust system that “optimizing truck performance” [Forbes, ¶ 0004]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
With respect to Claim 2: Aul discloses “The bearing adapter of claim 1, further comprising: a lower structure configured to extend below a lower portion” [Aul, ¶ 0048-0059 with Figures 5a-5b (Section 620)];
“and a set of fasteners configured to couple the upper structure and the lower structure together in a fixed position around the rail bearing to form a fixed mount for coupling the accessory to the axle of the railway vehicle” [Aul, ¶ 0004-0005, 0048-0059 with Figures 5a-5b].
With respect to Claim 3: Aul discloses “The bearing adapter of claim 2, wherein the upper structure and the lower structure include a set of through-holes” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figures 3a-3b and 5a-5b];
“wherein the set of fasteners are configured to couple the upper structure and the lower structure together via the set of through-holes” [Aul, ¶ 0004-0005, 0027, 0032, 0048-0059 with Figures 3a-3b and 5a-5b];
With respect to Claim 4: Aul discloses “The bearing adapter of claim 3, wherein the set of fasteners include spacers configured to reduce heat and bearing wear” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figures 3a-3b and 5a-5b].
Office Note: The statements of intended use or field of use are essentially method limitations or statements or intended or desired use. Thus, these claims as well as other statements of intended use do not serve to patentably distinguish the claimed structure over that of the reference. See MPEP § 2114 which states:
A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2nd 1647
Claims directed to apparatus must be distinguished from the prior art in terms of structure rather than functions. In re Danly, 120 USPQ 528, 531.
Apparatus claims cover what a device is not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 15 USPQ2d 1525, 1528.
The examiner suggests removing the phrase “configured to reduce hear and bearing wear” to clarify the claim language. Although claim 4 recites intended use statements mentioned above, it is the Office’s stance that the prior arts cited teach the claimed limitation including the functional limitation.
With respect to Claim 5: Aul discloses “The bearing adapter of claim 4, wherein when the upper structure and the lower structure are coupled around the rail bearing, a gap is formed between the upper structure and the lower structure, wherein a diameter of the gap is based on a diameter of the rail bearing” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figures 3a-3b and 5a-5b].
With respect to Claim 6: Aul discloses “The bearing adapter of claim 2, wherein the lower structure includes at least one flange having one or more mounting features” [Aul, ¶ 0004-0005, 0040, 0048-0059 with Figures 4a-4b];
“and wherein the one or more mounting features enable the accessory to be coupled in a fixed orientation to the lower structure” [Aul, ¶ 0004-0005, 0040, 0048-0059 with Figures 4a-4b].
With respect to Claim 7: Aul discloses “The bearing adapter of claim 1, wherein the upper structure includes at least one flange having the one or more mounting features” [Aul, ¶ 0004-0005, 0040, 0048-0059 with Figures 4a-4b];
“and wherein the one or more mounting features enable the accessory to be coupled in a fixed orientation to the upper structure” [Aul, ¶ 0004-0005, 0040, 0048-0059 with Figures 4a-4b].
With respect to Claim 8: Aul discloses “The bearing adapter of claim 1, wherein the one or more mounting elements comprises one or more slots” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figure 4c].
With respect to Claim 9: Aul discloses “The bearing adapter of claim 1, wherein the one or more mounting elements comprises clamps, clearance holes, or threaded holes” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figure 4c].
Office Note: It is the Office's stance that the specification of mounting features of slots, or clamps, or clearance holes, or threaded holes, without any explanation of any well-known benefit of selecting or choosing one of these over the other types is a mere design choice. By choosing distinct type of mounting feature over any other mounting feature, without the recitation of a known and understood benefit of selecting one or the other, does not distinct the invention over the prior art. Thus one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of choosing any mounting feature and would have been obvious and the design choice would have produced predictable results.
With respect to Claim 10: Aul discloses “The bearing adapter of claim 1, wherein the first flange and the second flange are oriented in parallel” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figure 5a-5b].
With respect to Claim 11: Aul discloses “The bearing adapter of claim 10, wherein the one or more mounting elements are located on both the first flange and the second flange” [Aul, ¶ 0004-0005, 0027, 0048-0059 with Figure 5a-5b].
With respect to Claim 14: Aul discloses “The bearing adapter of claim 1, wherein the upper structure comprises a curved portion, wherein a degree of curvature of the curved portion is based on a diameter of a stock rail bearing” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b].
With respect to Claim 15: While Aul discloses “A railcar comprising: a bogie having at least one axle” [Aul, Abstract, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“wherein the at least one axle includes a rail bearing and a set of wheels” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b];
“and a bearing adapter coupled around the rail bearing” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b];
“wherein the bearing adapter comprises: a first structure portion configured to extend around a first portion of the rail bearing coupled to the at least one axle of the railcar” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b (610)];
“wherein the first structure portion includes a first flange, a second flange, and a side frame interface extending between the first flange and the second flange” [Aul, ¶ 0003-0012, 0050-0052 with Figures 5a and 5b (the parts that bars 640 connect to in Figures 5a-5b)];
“and one or more mounting elements located on at least one of the first flange and the second flange the first portion and configured to enable one or more accessories to be coupled to the bearing adapter” [Aul, Abstract, ¶ 0048-0059 with Figures 5a-5b];
Aul does not specifically state retrofitting.
Forbes, which is also a system of bearing adapter with pedal geometries teaches “wherein the upper structure includes side frame interface features configured for fitment into stock side frame pedestal geometries” [Forbes, Abstract ¶ 0021 and 0363].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Forbes into the invention of Aul to not only include generating electricity for railway applications by adding generators to axles as Aul discloses but to also mount retrofitted systems based on pedestals geometries as taught by Forbes with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Forbes into Aul to create a more robust system that “optimizing truck performance” [Forbes, ¶ 0004]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
With respect to Claim 16: Aul discloses “The railcar of claim 15, wherein the bearing adapter further comprises: a second structure portion configured to extend around a second portion of the rail bearing” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b (620)];
“and a set of fasteners configured to couple the first structure portion” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“and the second structure portion in a fixed position around the rail bearing to form a mount for coupling the one or more accessories to the at least one axle of the railcar” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b].
With respect to Claim 19: While Aul discloses “A method for coupling an accessory to a railway vehicle comprising: coupling a bearing adapter around a portion of a rail bearing” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“wherein the rail bearing is coupled to an axle of the railway vehicle” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“wherein the bearing adapter includes one or more mounting features” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“a first flange, a second flange, and a side frame interface extending between the first flange and the second flange;” [Aul, ¶ 0003-0012, 0050--0052 with Figures 5a and 5b (the parts that bars 640 connect to in Figures 5a-5b)];
“and coupling the accessory to the one or more mounting features on the bearing adapter such that the accessory is located proximate an end of the axle of the railway vehicle” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
Aul does not specifically state retrofitting.
Forbes, which is also a system of bearing adapter with pedal geometries teaches “wherein the upper structure includes side frame interface features configured for fitment into stock side frame pedestal geometries” [Forbes, Abstract ¶ 0021 and 0363].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Forbes into the invention of Aul to not only include generating electricity for railway applications by adding generators to axles as Aul discloses but to also mount retrofitted systems based on pedestals geometries as taught by Forbes with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Forbes into Aul to create a more robust system that “optimizing truck performance” [Forbes, ¶ 0004]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
With respect to Claim 20: Aul discloses “The method of claim 19, wherein coupling the bearing adapter around the portion of the rail bearing comprises: coupling a first structure portion of the bearing adapter around a first portion of the rail bearing” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“coupling a second structure portion of the bearing adapter around a second portion of the rail bearing” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“and coupling the first structure portion and the second structure portion together via a set of fasteners to form the bearing adapter in a fixed position around the rail bearing, wherein one or more spacers are included in the set of fasteners” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b].
Claims 12 and 17 are rejected under 35 USC 103 as being unpatentable over Aul et al. (United States Patent Publication 2021/0323586) in view of Forbes et al. (United States Patent Publication 2006/0117985), and in further view of Martina et al. (United States Patent Publication 2006/0169169).
With respect to Claim 12: While Aul discloses “The bearing adapter of claim 1, wherein the accessory is power for railway applications” [Aul, ¶ 0003-0004];
Aul does not specifically state where the power from the generator could go.
Martina, which is in the same field of invention of Aul with adding generators onto train axles teaches “wherein the accessory is a sensor, battery module, or a drivetrain electric motors” [Martina, ¶ 0005 and 0007].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Martina into the invention of Aul to not only include generating electricity for railway applications as Aul discloses but to also use this electricity for charging batteries as taught by Martina with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Martina into Aul to create a more robust system that “provides an individual freight car with power for such monitoring systems and other ancillary functions by charging a battery by providing an external retrofit kit for many types of freight rail cars and associated bearing types and wheel sizes” [Martina, ¶ 0005]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
Office Note: It is the Office's stance that the specification of different types of accessories such as a sensor, battery module, or a drivetrain electric motors, without any explanation of any well-known benefit of selecting or choosing one of these over the other types of accessories is a mere design choice. By choosing distinct type of accessory to power over any other accessory, without the recitation of a known and understood benefit of selecting one or the other, does not distinct the invention over the prior art. Thus one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of choosing any accessory to be powered and would have been obvious and the design choice would have produced predictable results.
With respect to Claim 17: While Aul discloses “The railcar of claim 16, further comprising: a set of extensions coupled to a first side and a second side of the bearing adapter” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
“and wherein the one or more accessories is positioned to couple to the first side of the bearing adapter and one or more extensions of the set of extensions” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
Aul does not specifically state that the extension extends over a side of the bogie..
Martina, which is in the same field of invention of Aul with adding generators onto train axles teaches “a set of extensions coupled to a first side and a second side of the bearing adapter” [Martina, ¶ 0023 with Figure 2 (15 and 16)];
“and wherein the set of extensions extend over a side structure of the bogie” [Martina, ¶ 0023 with Figure 2 (15 and 16)];
“and wherein the one or more accessories is positioned to couple to the first side of the bearing adapter and one or more extensions of the set of extensions” [Martina, ¶ 0023 with Figure 2 (15 and 16)].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Martina into the invention of Aul to not only include generating electricity for railway applications as Aul discloses but to also use this electricity for charging batteries as taught by Martina with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Martina into Aul to create a more robust system that “provides an individual freight car with power for such monitoring systems and other ancillary functions by charging a battery by providing an external retrofit kit for many types of freight rail cars and associated bearing types and wheel sizes” [Martina, ¶ 0005]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
Claim 13 is rejected under 35 USC 103 as being unpatentable over Aul et al. (United States Patent Publication 2021/0323586) in view of Forbes et al. (United States Patent Publication 2006/0117985), and in further view of Fox et al. (United States Patent Publication 2020/0266685).
With respect to Claim 13: While Aul discloses “The bearing adapter of claim 1, wherein the accessory is power for railway applications” [Aul, ¶ 0003-0004];
Aul does not specifically state where the power from the generator could go.
Fox, which is in the same field of invention of Aul with adding generators onto train axles teaches “wherein the accessory comprises one or more braking components, gearboxes, air tanks, pneumatic system components” [Fox, ¶ 0006].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Fox into the invention of Aul to not only include generating electricity for railway applications as Aul discloses but to also use this electricity for controlling brakes and sensors as taught by Fox with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Fox into Aul to create a more robust system that “provide electrical power to car supported electronics” [Fox. ¶ 0005]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
Office Note: It is the Office's stance that the specification of different types of accessories such as one or more braking components, gearboxes, air tanks, pneumatic system components, without any explanation of any well-known benefit of selecting or choosing one of these over the other types of accessories is a mere design choice. By choosing distinct type of accessory to power over any other accessory, without the recitation of a known and understood benefit of selecting one or the other, does not distinct the invention over the prior art. Thus one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of choosing any accessory to be powered and would have been obvious and the design choice would have produced predictable results.
Claim 18 is rejected under 35 USC 103 as being unpatentable over Aul et al. (United States Patent Publication 2021/0323586) in view of Forbes et al. (United States Patent Publication 2006/0117985), in further view of Martina et al. (United States Patent Publication 2006/0169169), and in further view of Fox et al. (United States Patent Publication 2020/0266685).
With respect to Claim 18: Aul discloses “The railcar of claim 17, wherein the one or more accessories comprises at least one of an electric motor” [Aul, ¶ 0003-0007, 0048-0059 with Figures 5a-5b];
Aul does not specifically state where the power from the generator could go.
Fox, which is in the same field of invention of Aul with adding generators onto train axles teaches “wherein the one or more accessories comprises at least one of an electric motor, and wherein the electric motor provides rotational force to a journal of the axle” [Fox, ¶ 0006 and 0043].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Fox into the invention of Aul to not only include generating electricity for railway applications as Aul discloses but to also use this electricity for controlling brakes and sensors as taught by Fox with a reasonable expectation of success. One would be motivated to incorporate aspects of the cited prior art Fox into Aul to create a more robust system that “provide electrical power to car supported electronics” [Fox. ¶ 0005]. Additionally, the claimed invention is merely a combination of old, well known elements such as retrofitting rail cars with electricity generators and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized that the results of the combination would have been predictable.
Prior Art (Not relied upon)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the attached form 892.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESS G WHITTINGTON whose telephone number is (571)272-7937. The examiner can normally be reached on 7-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott Browne can be reached on (571)-270-0151. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESS WHITTINGTON/Primary Examiner, Art Unit 3666c
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