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 .
Drawings
Figures 3, 7A, 7B and 7C should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: “a method of modification of a railcar to form a modified railcar can be described as comprising the steps of:” should be “a method of modification of a railcar to form a modified railcar . Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the outside hopper sheets", “the partition floors”, “the hopper chutes”, the hopper style donor railcar”, “the floor sheets and tubs” and “the gondola style donor cars” in lines 6-8. There is insufficient antecedent basis for these limitations in the claim.
Claim 1 recites the limitation "the car" in line 13. There is insufficient antecedent basis for this limitation in the claim. Examiner recommends changing “the car” to the “the railcar”. This rejection likewise applies to claims 5, 6, 11, 12, 16 and 17 for consistency.
Claim 5 recites the limitation "the top chord" in line 2. There is insufficient antecedent basis for this limitation in the claim. This rejection likewise applies to claims 11 and 16.
Claim 6 recites the limitation "the side chord" in line 2. There is insufficient antecedent basis for this limitation in the claim. Further, Examiner recommends amending “the side chord” to “a side sill” as referenced within the specification. For examination purposes, the claims will be examined as suggested above. This rejection likewise applies to claims 12 and 17.
Claims 2-4, 8-10, 13-15 and 18 are rejected due to their dependency upon a rejected claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 8-9 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 9 and 12 of copending Application No. 18380342 in view of Wirick et al. (WO 2019191762 A1). The cited claims fully encompass the subject matter of the instant claims except for the donor railcar specifically being an aluminum body steel underframe as described below.
Claim 1 is provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over cited claim 1. Cited claim 1 of Application ‘342 teaches a method of modification of a railcar to form a modified railcar can be described as comprising the steps of:
i) providing an existing
ii) removing a donor car floor construction including either a) hopper discharge gates, and the outside hopper sheets, lower hopper floor and the partition floors forming the hopper chutes of the hopper style donor railcar,
iii) forming a floor construction of the modified railcar which includes one of a) triple hopper independent transverse door floor construction, b) quad hopper independent transverse door floor construction, c) dual hopper independent longitudinal door floor construction, or d) flat bottom gondola floor construction, and
iv) attaching the floor construction to the car to form the modified railcar.
The cited claim fully encompasses the subject matter of the instant claim except for the donor railcar specifically being an aluminum body steel underframe.
However, Wirick teaches existing railcars with aluminum bodies and steel underframes (Para.[00102]). 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 railcar of the cited application with the donor car having an aluminum body and steel underframe as in Wirick since it is obvious to provide simple substitutions of one known element for another to obtain predictable results with a reasonable expectation of success.
Claim 2 is further provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over cited claim 1. Cited claim 1 further teaches wherein the step of removing a donor car floor construction includes the elements of ii a) (“hopper discharge gates, and the outside hopper sheets, lower hopper floor and the partition floors forming the hopper chutes of the hopper style donor railcar”).
Claim 3 is further provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over cited claim 2. Cited claim 2 further teaches wherein the step of forming a floor construction of the modified railcar includes a triple hopper independent transverse door floor construction.
Claim 8 is further provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over cited claim 6. Cited claim 6 further teaches wherein the step of forming a floor construction of the modified railcar includes a dual hopper independent longitudinal door floor construction.
Claim 9 is further provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over cited claim 9. Cited claim 9 further teaches wherein the step of forming a floor construction of the modified railcar includes a flat bottom gondola floor construction.
This is a provisional nonstatutory double patenting rejection.
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 1-6, 8-17, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 6502518 B1) in view of Wirick et al. (WO 2019191762 A1).
Regarding claim 1: Miller teaches a method of modification of a railcar to form a modified railcar comprising the steps of:
i) providing an existing donor railcar supported on a pair of trucks (FIg.1);
ii) removing a donor car floor construction including either a) hopper discharge gates, and the outside hopper sheets, lower hopper floor and the partition floors forming the hopper chutes of the hopper style donor railcar (Col.4, lines 53-61), iii) forming a floor construction of the modified railcar (reattachment of floor components together after center removal Fig.14), and iv) attaching the floor construction to the car to form the modified railcar (finished modified car Fig.14). Miller does not specifically teach that the donor railcar is an aluminum body and steel underframe or that the formed floor construction is one of a) triple hopper independent transverse door floor construction, b) quad hopper independent transverse door floor construction, c) dual hopper independent longitudinal door floor construction, or d) flat bottom gondola floor construction.
However, Wirick teaches the modification of railcars including their floor components including a) triple hopper independent transverse door floor construction (Fig.19A),
c) dual hopper independent longitudinal door floor construction (Fig.20A), or
d) flat bottom gondola floor construction (Fig.35A). 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 modification of a railcar method of Miller to include different types of railcars as desired for the final modified railcar floor application for the desired railcar cargo use with a reasonable expectation of success.
Regarding claim 2: Miller further teaches wherein the step of removing a donor car floor construction includes the elements of ii a) (16; Fig.1).
Regarding claim 3: Miller does not teach wherein the step of forming a floor construction of the modified railcar includes a triple hopper independent transverse door floor construction. However, Wirick teaches the modification of railcars including a triple hopper independent transverse door floor construction (Fig.19A). 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 modification of a railcar method of Miller to include floor modifications of railcars as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Regarding claim 4: Miller further teaches wherein removing a donor car floor construction includes removal of a center section of the donor car (16; Fig.1).
Regarding claim 5: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the top chord (Fig.8). Miller does not teach using a splice chord casting.
However, Wirick teaches the use of splice chord castings in railcar modifications (64; Fig.11). 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 Miller to use a splice chord casting as in Wirick to provide a stable splice of the top chord with a reasonable expectation of success.
Regarding claim 6: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the side sill (Fig.10).
Regarding claim 8: Miller does not teach wherein the step of forming a floor construction of the modified railcar includes a dual hopper independent longitudinal door floor construction.
However, Wirick teaches the modification of railcars including a dual hopper independent longitudinal door floor construction (Fig.20A). 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 modification of a railcar method of Miller to include floor modifications of railcars as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Regarding claim 9: Miller does not teach wherein the step of forming a floor construction of the modified railcar includes a flat bottom gondola floor construction.
However, Wirick teaches the modification of railcars including a flat bottom gondola floor construction (Fig.35A). 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 modification of a railcar method of Miller to include floor modifications of railcars as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Regarding claim 10: Miller further teaches wherein removing a donor car floor construction includes removal of a center section of the donor car (16; Fig.1).
Regarding claim 11: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the top chord (Fig.8). Miller does not teach using a splice chord casting.
However, Wirick teaches the use of splice chord castings in railcar modifications (64; Fig.11). 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 Miller to use a splice chord casting as in Wirick to provide a stable splice of the top chord with a reasonable expectation of success.
Regarding claim 12: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the side sill (Fig.10).
Regarding claim 13: Miller does not teach wherein the step of removing a donor car floor construction includes the elements of ii b).
However, Wirick teaches the modification of railcars including floors as in the elements ii b) (“the floor sheets and tubs of the gondola style donor cars”) (Fig.32A). 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 modification of a railcar method of Miller to include floor modifications of railcars as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Regarding claim 14: Miller does not teach wherein the step of forming a floor construction of the modified railcar includes a triple hopper independent transverse door floor construction. However, Wirick teaches the modification of railcars including a triple hopper independent transverse door floor construction (Fig.19A). 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 modification of a railcar method of Miller to include floor modifications of railcars as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Regarding claim 15: Miller further teaches wherein removing a donor car floor construction includes removal of a center section of the donor car (16; Fig.1).
Regarding claim 16: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the top chord (Fig.8). Miller does not teach using a splice chord casting.
However, Wirick teaches the use of splice chord castings in railcar modifications (64; Fig.11). 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 Miller to use a splice chord casting as in Wirick to provide a stable splice of the top chord with a reasonable expectation of success.
Regarding claim 17: Miller further teaches wherein the attaching the floor construction to the car to form the modified railcar includes splicing the side sill (Fig.10).
Regarding claim 19: Miller does not teach a splice chord casting used in the method of claim 11.
However, Wirick teaches a splice chord casting (64; Fig.11). ). 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 Miller to use a splice chord casting as in Wirick to provide a stable splice of the top chord with a reasonable expectation of success.
Regarding claim 20: Miller further teaches a modified railcar formed according to the method of claim 1 (Fig.2).
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Miller in view of Wirick and Creighton (US 20060207472 A1).
Regarding claims 7 and 18: Miller does not teach wherein the step of forming a floor construction of the modified railcar specifically includes a quad hopper independent transverse door floor construction.
However, Creighton teaches hopper cars having a plurality of hoppers (Para.[0044]). 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 modification method of Miller to include multiple hoppers as in a quad hopper independent transverse door floor construction as desired for the final modified railcar floor application to achieve desired railcar cargo use with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEAVEN BUFFINGTON whose telephone number is (703)756-1546. The examiner can normally be reached Monday-Friday 9:00am to 5:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) Morano can be reached at (571)272-8300. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEAVEN R BUFFINGTON/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615