DETAILED ACTION
Claims 12, 13 and 16-23 are currently pending. Claims 12, 13 and 16-23 are maintained in rejection despite Applicant’s amendments/arguments filed 09/02/2026. A response to Applicant’s arguments can be found at the end of this Office action. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. This Office action is final.
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) 12, 13, 16-19, 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 0541485 A1 in view of Takeichi et al. (US 5,199,632).
Referring to Claim 12: EP 0541485 teaches a carriage body for a passenger transport vehicle, the carriage body comprising:
a carriage body shell into said openings in said metal structures (Para. [0030]), each of said wall segments (11) being embedded in a self-supporting support structure (Fig. 1) including strut-like support structure elements (19, 20) (Fig. 4) (Para. [0036] and [0038]).
Examiner notes that the side wall panels comprising “composites containing wood, plastics, fibers, fabrics and/or metals” (Para. [0030]) will be inherently permeable to mobile radio frequencies to some minor degree.
EP 0541485 does not specifically teach the carriage body shell being manufactured in an integral construction. However, Takeichi teaches railway car body structures and methods of making them, wherein “[t]he aim is to reduce the number of man-hours in production of the car body structure and to improve stiffness of the car body structure, using pre-shaped members in which frame members and the outside sheet are integral” (Col. 1, lines 29-33). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the carriage body shell in an integral construction, as taught by Takeichi, in order to reduce the number of man-hours in production of the carriage body shell and to improve stiffness with a reasonable expectation of success. Further, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). See MPEP § 2144.04(V)(B).
Referring to Claim 13: EP 0541485 further teaches the carriage body according to claim 12, wherein said metal structures are in a form of extruded profiles (Para. [0028]) or sandwich panels.
Referring to Claim 16: EP 0541485 further teaches the carriage body according to claim 14, wherein said self-supporting support structures include corner areas defining said door and/or window cut-outs (Fig. 1).
Referring to Claim 17: EP 0541485 further teaches the carriage body according to claim 12, wherein said wall segments (11) made of said material being permeable to the mobile radio frequencies are disposed at a distance from corner areas defining said door (5) and/or window cut-outs (6) (Fig. 1).
Referring to Claim 18: EP 0541485 does not specifically teach that said wall segments made of said material being permeable to mobile radio frequencies cover a proportion by area of at least 20% of said side wall, said end wall or said roof of said carriage body shell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to use the permeable material over at least 20% of the sidewall in order to optimize radio permeability relative to strength, 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).
Referring to Claim 19: EP 0541485 teaches the side wall panels comprising “composites containing wood, plastics, fibers, fabrics and/or metals” (Para. [0030]). EP 0541485 does not specifically teach that said material being permeable to the mobile radio frequencies is metal-free. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to make the material metal free in order to optimize permeability, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). See MPEP § 2144.07.
Referring to Claim 21: EP 0541485 does not specifically teach that said wall segments made of said material being permeable to the mobile radio frequencies are adhesively bonded into said openings in said metal structures. However, EP 0541485 makes reference to the fact that it is known in the art to bond railcar components using adhesive and screws (Para. [0048]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to use adhesives to bond the wall segments to the metal structures in order to reliably secure components with a reasonable expectation of success.
Referring to Claim 22: EP 0541485 does not specifically teach that said wall segments made of said material being permeable to the mobile radio frequencies are screwed to adjacent areas of said metal structures. However, EP 0541485 makes reference to the fact that it is known in the art to bond railcar components using adhesive and screws (Para. [0048]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to use screws to secure the wall segments to the metal structures in order to reliably secure components with a reasonable expectation of success.
Claim(s) 20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 0541485 in view of Takeichi and FR 2976890 A1.
Referring to Claim 20: EP 0541485 teaches the side wall panels comprising “composites containing wood, plastics, fibers, fabrics and/or metals” (Para. [0030]). EP 0541485 does not specifically teach that said material being permeable to the mobile radio frequencies is selected from the group consisting of glass fiber-reinforced plastic and carbon fiber-reinforced plastic. However, FR 2976890 teaches a carriage body made from composite material and configured to receive radio frequencies, wherein “[p]referably, the material is a thermosetting matrix composite. This choice makes it possible to respect both the railway constraints and the radiofrequency transmission constraints. By way of example, this material is a fiberglass composite with a thermosetting resin. Fiberglass can be replaced with Kevlar fiber or carbon fiber.” (see attached machine translation, page 2, last paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to use glass fiber-reinforced plastic or carbon fiber-reinforced plastic, as taught by FR 2976890, in order to optimize weight, strength and radio permeability, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). See MPEP § 2144.07.
Referring to Claim 23: EP 0541485 does not specifically teach that the mobile radio frequencies are greater than 700 MHz. However, FR 2976890 teaches a carriage body made from composite material and configured to receive radio frequencies, wherein the matrix composite material is transparent to electromagnetic waves having a range of frequencies greater than 2 GHz (abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for EP 0541485 to use a permeable material having permeability at frequencies greater than 700 MHz because FR 2976890 teaches that it is beneficial to have permeability for communications, and 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).
Response to Arguments
Applicant argues that EP 0541485 has a differential construction, not an integral construction, as recited in amended claim 12, because the frame member profiles are joined by a distinct adapter-profile system that connects lightweight frame profiles. Examiner responds that Applicant’s own Specification describes the “integral design” as consisting of extruded aluminum profiles “welded to one another” (page 4, lines 20-23). Thus, connecting profiles via weld or otherwise should not be construed as mutually exclusive to an integral design. Examiner disagrees that EP 0541485 teaches “differential construction” and asserts that this terminology is a creation by Applicant for argumentative purposes. Examiner does concede that EP 0541485 fails to explicitly disclose a carriage body shell manufactured in an “integral construction”. Thus, Takeichi (previously made of record) has been introduced for teaching integral construction, as stated in the obviousness rejection of claim 12 above. Further, regarding integral construction in general, it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). See MPEP § 2144.04(V)(B).
Applicant argues that EP 0541485 fails to teach wall segments embedded in a self-supporting supporting support structure including strut-like support structure elements, as recited in amended claim 12. Examiner responds that EP 0541485 teaches wall segments (11) being embedded in a self-supporting support structure (Fig. 1) including strut-like support structure elements (19, 20) (Fig. 4) (Para. [0036] and [0038]). Thus, the structure of EP 0541485 broadly satisfies the amended limitations.
Applicant argues that EP 0541485 is silent regarding radio frequency transmission, merely listing conventional wall materials, and that paragraph [0030] of EP 0541485 teaches away from being permeable to radio frequency because the preferred aluminum outer layer would form a Faraday cage to block radio-frequency transmissions. Examiner responds that Applicant’s own Specification describes using “extruded profiles (aluminum)” (page 4, lines 20-23), and that such aluminum material use is not mutually exclusive to radio frequency permeability. Additionally, the aluminum sheeting of EP 0541485 is merely one preferred embodiment with several other conventional materials listed. Thus, EP 0541485 does not sufficiently teach away from using permeable materials.
Applicant argues that the inherency argument made by Examiner does not meet the requisite burden because there is no showing that the missing characteristic is “necessarily present” in the prior art (see MPEP § 2112(IV)). Examiner maintains the inherency argument as sufficient and cites to the fact that “composites containing wood, plastics, fibers, fabrics and/or metals” (Para. [0030]) will inherently have some small degree of radio frequency permeability. While some materials are more permeable than others, e.g., wood versus lead, all materials will necessarily present some degree of permeability. There is no assertion by Examiner that the materials of Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. may be permeable, rather Examiner asserts the materials inherently will be permeable due to their intrinsic properties. Thus, permeability is inherent to the materials of EP 0541485. The broadly claimed “material being permeable to mobile radio frequencies” establishes no quantitative standard for what is, and what is not, magnetically permeable. The Specification gives some light to this “permeable” term by stating, “The material permeable to mobile radio frequencies is preferably metal-free in order to obtain the desired beneficial transmission properties. In particular, the material to be used can be selected from the group which comprises glass fiber-reinforced plastic (GRP) and carbon fiber-reinforced plastic (CFRP)” (page 4, lines 4-7). Thus, while being metal-free is preferable, it is not necessarily required of a permeable material in light of Applicant’s own Specification. The prior art, EP 0541485, recites plastics and fibers as suitable materials (Para. [0030]), without necessarily using less permeable metals as part of the composite, similar to Applicant’s own Specification. Examiner notes, the current claim language is being broadly interpreted as requiring some level of permeability, rather than interpreting “permeable” as a relative term which renders the claim indefinite (see MPEP § 2173.05(b)).
Applicant argues that FR 2976890 teaches a removable roof cowling rather than wall segments inserted into openings in the metal structures of a side wall, and therefore, there would be no motivation to combine EP 0541485 in view of FR 2976890, as EP 0541485 fails to recognize the mobile-radio frequency problem. Examiner maintains that the motivation to combine stated in the rejection of claims 20 and 23 is sufficient. In response to Applicant’s argument that FR 2976890 is non-analogous art, it has been held that in order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. See MPEP § 2141.01(a)(I). In this case, (1) the railcar roof materials of FR 2976890 are from the same field of endeavor as the railcar side wall materials of EP 0541485; and (2) the FR 2976890 reference is reasonably pertinent to the problem of using a composite material for railcar construction, where “[p]referably, the material is a thermosetting matrix composite. This choice allows us to respect both railway constraints and radio frequency transmission constraints. As an example, this material is a fiberglass composite with a thermosetting resin.” (See attached EPO translation, page 2, lines 23-26). Thus, FR 2976890 is analogous art, and the problem of radio frequency transmission constraints is known.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ZACHARY L KUHFUSS whose telephone number is (571)270-7858. The examiner can normally be reached Monday - Friday 10:00am to 6:00 pm CDT.
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/ZACHARY L KUHFUSS/Primary Examiner, Art Unit 3615A
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