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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, 8-13, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US 3,117,531).
Claim 1: Miller discloses a rail plate grasping assembly that includes a holder part (90,92 of Figure 5) configured to be coupled with a rail vehicle that moves along one or more rails of a track with the one or more rails coupled with rail plates that are coupled with rail ties; and a wear part (136 of Figure 5) configured to be coupled with the holder part and shaped to engage the rail plates to support the rail plates while the rail ties are removed from beneath the rail plates, the wear part configured to be separated from the holder part and replaced with another wear part (Col. 4, Lines 56-75).
Claim 2: Miller further discloses that the holder part includes one or more tongues (143 of Figure 5), and the wear part includes one or more recesses shaped to receive the one or more tongues of the holder part (as depicted in Figure 5 the tongue is inserted into a recess in 136; Col. 4, Lines 56-75).
Claim 3: Miller further discloses that the holder part and the wear part include coaxial fastener openings positioned to receive fasteners (138,137 of Figure 5) that secure the wear part to the holder part (Col. 4, Lines 58-62).
Claim 5: Miller further discloses that the wear part includes an engagement edge shaped and positioned to engage one of opposite edges of the rail plates (as depicted in Figures 6 and 7).
Claim 8: Miller disclose a maintenance system, that includes plural external rail plate grasping assemblies (90,92 of Figure 5) that are configured to move toward each other to grasp and to pull a rail plate against a rail during removal of a rail tie beneath the rail (Col. 6, lines 3-30); and plural internal rail plate grasping assemblies (90a,92a of Figure 4) that are configured to move toward each other to grasp and to pull the rail plate against the rail during removal of the rail tie, wherein each of the rail plate grasping assemblies includes a holder part (lower portion of 90,90a,92,92a provide a holder part that holds the wear part 136) configured to be coupled with a rail vehicle that moves along the rail and a wear part (136 of Figure 5) coupled with the holder part and shaped to engage a corresponding first rail plate or a second rail plate to support the first rail plate or the second rail plate while the rail tie is removed beneath the rail plates (as depicted in Figures 5-7; Col 4, Lines 55-74), the wear part being configured to be separated from the holder part and replaced with another wear part (the wear part is secured by removable fasteners and located on tongue 143 such that it can be removed and replaced).
Claim 9: Miller further discloses that the plural external rail plate grasping assemblies are configured to be on an opposite side of the rail than the plural internal rail plate grasping assemblies (as depicted in Figure 4).
Claim 10: Miller further discloses that the holder part includes one or more tongues (143 of Figure 5), and the wear part includes one or more recesses shaped to receive the one or more tongues of the holder part (as depicted in Figure 5 the tongue is inserted into a recess in 136; Col. 4, Lines 56-75).
Claim 11: Miller further discloses that the holder part and the wear part include coaxial fastener openings positioned to receive fasteners (138,137 of Figure 5) that secure the wear part to the holder part (Col. 4, Lines 58-62).
Claim 12: Miller further discloses that the holder part includes one or more tongues (143 of Figure 5), and the wear part includes one or more recesses shaped to receive the one or more tongues of the holder part (as depicted in Figure 5 the tongue is inserted into a recess in 136; Col. 4, Lines 56-75).
Claim 13: Miller further discloses that the wear parts include engagement edges shaped and positioned to engage an edge of the rail plate ties (as depicted in Figures 5-7 the wear part 136 is depicted as provided a part of the bottom surface of the plate grasping assembly).
Claim 16: Miller a plate grasping assembly comprising: an internal grasping tool (90a,92a of Figure 4) configured to be mounted to a rail vehicle that moves along one or more rails of a track with the one or more rails coupled with rail plates that are coupled with rail ties, the internal grasping tool configured to be pivotally mounted for movement between an open position and a closed position in which the internal grasping tool is configured to engage a forward edge of a first rail plate of the rail plates and a rearward edge of the first rail plate of the rail plates (Col. 5, line 56 to Col. 6, Line 50); an external grasping tool (90,92 of Figure 4) configured to be pivotally mounted to the rail vehicle for movement between an open position and a closed position in which the external grasping tool is configured to engage the forward edge of the first rail plate and the rearward edge of the first rail plate (Col. 5, Line 56 to Col 6, Line 50); and one or more spacers (115 of Figure 4) configured to be positioned between the internal grasping tool and the external grasping tool, the one or more spacers configured to: increase a distance between the internal grasping tool and the external grasping tool in a direction transverse to the route responsive to the one or more spacers being in a first position, or decrease the distance between the internal grasping tool and the external grasping tool in a direction transverse to the route responsive to the one or more spacers being in a second position (Col. 4, Lines 10-21).
Claim 17: Miller further discloses a wear part (136 of Figure 5) is configured to be coupled with the internal grasping tool, the wear part positioned to engage the rail plates to support the rail plates while the rail ties are removed from beneath the rail plates, the wear part configured to be separated from the internal grasping tool and replaced with another wear part (the wear part is secured by removable fasteners and located on tongue 143 such that it can be removed and replaced).
Claim 18: Miller further discloses an internal actuator (116,118,126,128 of Figure 4) configured to be mounted to the internal grasping tool and configured to move the internal grasping tool between the open and closed position; and an external actuator (one of 116,118 are provided on the internal and external grasping tool in order to open and close the internal and external grasping tool) configured to be mounted to the external grasping tool and configured to move the external grasping tool between the open and closed position.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 3,117,531) in view of Sivon (US 3,127,847).
Claim 4: As addressed above Miller discloses that the holder part includes one or more tongues (143), and the wear part includes one or more recesses shaped to receive the one or more tongues of the holder part (Col 4, Lines 56-75), but fails to disclose that the holder part and the wear part include coaxial fastener openings that extend through the one or more tongues and that are positioned to receive fasteners that secure the wear part to the holder part.
However, Sivon teaches that it is known in the art to secure a wear part (107 of Figure 10) to a holder part (103 of Figure 7) using a tongue and a fastener that extends through the tongue and wear part.
Therefore, it would have been obvious to one of ordinary skill in the art to secure the wear part of Miller to the holder part using a coaxial extending faster that extended through the wear part and holder part because the fastener would provide a positive removable connection between the wear part and the holder part.
Further the examiner notes that while Miller and Sivon fail to provide a plurality of recess, tongues, and fasteners it has long been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St, Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Sivon provides the tongue on the wear part and the recess on the holder part however it has long been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70.
Claim 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 3,117,531),
Claims 6 and 14: Miller further discloses that the wear part forms either part but less than an entirety of a bottom surface of the rail plate grasping assembly that faces the rail ties (as depicted in Figures 5-7 the wear part 136 is depicted as provided a part of the bottom surface of the plate grasping assembly), but fails to disclose that the wear part forms the entirety of the bottom surface of the rail plate grasping assembly that faces the rail ties.
However, this modification would require only the change in shape of the wear part of Miller.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the shape of the wear part such that it provided the entire bottom surface of the plate grasping assembly because there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 3,117,531) in view of Pritzl et al. (US 11,453,981 B2)
Claims 7 and 15: Miller fails to disclose that the wear part includes a collection opening configured to allow parts of the rail ties to move from between the wear part and the rail plates.
However, Pritzl et al. teaches a plate clamping assembly that includes a collection opening (see opening formed in 60 of Figure 4) configured to allow parts of the rail ties to move from between the wear part and the rail plates.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the wear part of Miller such that it includes the collection opening of Pritzl et al. because it is prima facie obvious to combine prior art elements by known method in order to achieve predictable results (MPEP 2143(A)). In the instant case the predictable result would be that the wear plate of Miller would include the collection opening taught by Pritzl et al.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 3,117,531) in view of Boczkiewicz et al. (US 11,486,099 B2)
Claim 19: Miller fails to disclose that the internal grasping tool includes a first grasping tool and a second grasping tool, further comprising meshing fingers on complementary facing edges of the first grasping tool and the second grasping tool.
However, Boczkiewicz et al. teaches an internal and external grasping tool (76a,76b of Figure 3 that includes meshing fingers on complementary facing edges of the first grasping tool and the second grasping tool (as depicted in Figure 3).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Boczkiewicz et al. with that of Miller in order to provide the internal and external grasping tool of Miller with meshing fingers. This modification would have been obvious to and well within the ability of one ordinary skill in the art to make because it is prima facie obvious to combine prior art element by known method in order to achieve predictable results (MPEP 2143(A)). In the instant case the predictable results would be that the internal and external grasping tool of Miller would include meshing fingers.
Claim 20: Boczkiewicz et al. further teaches a pocket configured to be formed between adjacent meshing fingers of the second grasping tool, wherein the meshing fingers of the first grasping tool are configured to engage the pocket (as depicted in Figure 3).
Response to Arguments
Applicant's arguments filed 01/14/2026 have been fully considered but they are not persuasive. Applicant contends throughout the remarks that the wear part of Miller is configured for use with and contact of a rail anchor and not a rail plate as recited in the pending claims. The examiner agrees that that wear part of Miller is intended for used with a rail anchor and not a rail part. However, the recitation of a new intended use for an old product does not make a claim to an old product patentable. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The shape and configuration of the wear part of Miller does not preclude it from use with a rail plate, and the wear part of Miller is capable of use with a rail plate. Even in contacting the rail anchor the wear part of Miller indirectly contacts the rail plate. There are no structural limitations found within the claims that distinguish the claimed apparatus over that of Miller. Applicant’s remarks confirm this as there are no remarks or arguments toward the structure of the apparatus of Miller. Applicant’s remarks only address the intended use of the apparatus of Miller. As addressed above the apparatus of Miller is capable of use, without modification, with a rail plate, is configured in accordance with the structural limitations of the claims, and therefore meets the limitations of at least independent claims 1 and 16.
Further the examiner notes that it is known in the prior art to grip rail plates using similar apparatus to that claimed. Plasser et al., US 3,690,264, teaches a rail plate gripping device (18 of Figure 1) that includes two gripping arms (23 of Figure 1) for gripping a rail plate. Bryan, Jr., US 3,881,422, teaches a rail plate biting and gripping device (80 of Figure 4b) that includes teeth (96 of Figure 4b) that would be considered a wear part. Theurer et al., US 5,063,856, teaches a rail plate gripping device (70 of Figure 8). Glomski et al., US 5,617,795, teaches a rail plate gripping device (68 of Figure 4). Johnson et al., US 6,863,717 B2, teaches a device for removing rail plate that includes gripping jaws (52 of Figure 4). Even if applicant’s arguments in regard to the intended use of the apparatus of Miller, there is sufficient teaching in the prior art to render obvious trying or attempting to use the apparatus of Miller with rail plates instead of rail anchors. Further since no physical modification of the device of Miller is necessary to meet the limitations of the apparatus recited in claims 1 and 16 there would be a reasonable expectation for success when applying the device of Miller to a rail plate instead of a rail anchor.
Conclusion
THIS ACTION IS MADE FINAL. 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 JASON L VAUGHAN whose telephone number is (571)270-5704. The examiner can normally be reached Mon-Friday 8:30 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at (571) 272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON L VAUGHAN/Primary Examiner, Art Unit 3726 03/09/2026