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
This is the first non-final office action on the merits. Claims 1-12 are currently pending.
Priority
The Acknowledgment is made of applicant’s claim for priority under provisional Application No. 63/028,707, filed on 05/22/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/16/2025 have been received and considered by the examiner.
Drawings
The drawings are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites the same limitations as claim 7, of which claim 9 depends on. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 4696237 A), in view of Zurcher (US 0401530 A).
Regarding claim 1, Miller teaches (Fig. 1-3): A method of converting a railroad hopper car (10) having a car body with two or more hoppers (Fig. 1), comprising: (a) severing the car body of the railroad hopper car along a vertical plane (along cut line 33; Fig. 1) to form a first portion (14) and a second portion (18) of the railroad hopper car (Fig. 1 and 3); (b) separating the first portion (14) from the second portion (18) to define a space therebetween (Fig. 1); and (c) reassembling and welding the end sections of severed hopper sections together (Fig. 3).
Miller does not teach the method of converting the hopper vehicle body to increase its total volume capacity; and installing, in the space formed after separating the first portion from the second portion, various components to define one or more additional separate hoppers of the car body.
However, Zurcher teaches an alternate hopper car, having (Fig. 2-3): an increased volume capacity, wherein the total volume of hoppers on one side of a transverse center plane of the car body is greater than the total volume of hoppers on the other side of the transverse center plane (page 1, col. 1, lines 32-44; Fig. 2-3).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, for Miller to reconstruct the separated hopper car sections by adding components therebetween to define one or more additional separate hoppers having an increased volume capacity, as disclosed by Zurcher, with a reasonable expectation of success because severing the hopper car body and reassembling the sections is well-known in the art for maximizing carrying capacity to transport different materials or shapes, and maximizing stability by evenly distributing weight.
It is noted that claim 1 is drawn to a product defined in terms of the method or process by which it is made. The patentability of a product-by-process claim is based on the product itself, not on the method of making it. The product in the instant claim(s) does not appear to be patentably distinct from products of the prior art, regardless of the process by which it is made. See MPEP § 2113.
Regarding claim 2, Miller further teaches (Fig. 1-3 and 5): severing the car body includes severing along the vertical plane (through cut line 33) such that transverse sheets (side sheet 34) of the first portion (14) of the car body are severed but none of end slope sheets (slope plates 88) and intermediate slope sheets of the first and second portions (14, 18) of the car body is severed (Fig. 1-3 and 5).
Regarding claim 10, Miller further teaches (Fig. 1-3 and 5): removing opposed transverse sheets (14) from at least one of the first portion or the second portion (14, 18).
The combination of Miller and Zurcher teaches the method of installing new transverse sheets in the first and second portions, a portion of the new transverse sheets extending into the space (the reassembling of the hopper car body to achieve the increased volume capacity shown in Zurcher’s structure would require adding new transverse sheets as components in the space).
Allowable Subject Matter
Claims 3-9 and 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claims and if all rejections in view of 35 USC § 112 are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3 and its depending claim(s) 4-9, the prior art fails to teach adding sloped transverse sheets in the first and second severed portions. While Miller further teaches (Fig. 1-3 and 5): removing the severed transverse sheets (14) from the first and second portions (14, 18); and the combination of Miller and Zurcher teaches the method of installing new transverse sheets in the first and second portions, a portion of the new transverse slope sheets extending into the space (the reassembling of the hopper car body to achieve the increased volume capacity shown in Zurcher’s structure would require adding new transverse slope sheets as components in the space), the examiner finds no obvious reason to modify the added transverse sheets to be sloped sheets. Such a modification would require improper hindsight reasoning and modifications to a modifying reference.
It is noted that Miller’s severed transverse sheets are straight, vertical sheets (shown in Figs. 1-2). Removing the straight side sheets and adding sloped side sheets would require improper hindsight reasoning.
Regarding claim 11 and its depending claim(s) 12, the prior art fails to teach the method of removing at least a substantial portion of one or more intermediate slope sheets from at least one of the first portion or the second portion; and attaching one or more new intermediate slope sheets to an unremoved portion of the one or more intermediate slope sheets in the at least one of the first portion or the second portion. While Miller teaches (Fig. 1-3 and 5): (a) severing the car body of the railroad hopper car along a vertical plane (along cut line 33; Fig. 1) to form a first portion (14) and a second portion (18) of the railroad hopper car (Fig. 1 and 3); (b) separating the first portion (14) from the second portion (18) to define a space therebetween (Fig. 1), the examiner finds no obvious reason to remove a portion of one or more intermediate slope sheets from at least one of the first portion or the second portion, and attach one or more new intermediate slope sheets to an unremoved portion of the one or more intermediate slope sheets. Such a modification would require improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure of a railway vehicle with different hopper car constructions and modification procedures for increasing capacity: US-1268118-A, US-1422133-A, US-1827997-A, US-2271464-A, US-3776142-A, US-4230048-A, US-4352331-A, US-4608931-A, US-4696088-A, US-4898101-A, US-7861659-B2, US-20180127004-A1, US-10562545-B2, US-10807615-B2, US-10906561-B2, US-20210362752-A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG XI LIN whose telephone number is (571)272-6102. The examiner can normally be reached Mon. through Fri. 9:00am to 6:00pm EST.
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/CHENG LIN/Examiner, Art Unit 3615
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