DETAILED ACTION
The Information Disclosure Statement filed on November 18, 2024, has been reviewed and considered by the Examiner.
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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 8-14 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 9-15 of prior U.S. Patent No. 12,179,811. This is a statutory double patenting rejection.
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 1-8 and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 15-18 of U.S. Patent No. 12,179,811. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the prior patent shows a modular railcar comprised of a modular top to hold coils of material with the system is comprised of a pair of side sills each having a longitudinal length and troughs disposed between the side sills with each trough holding coils of material. The railcar underframe is further comprised of coupling apparatus to detachably engage the modular top system when the top is positioned on the side sills.
It would have been obvious to one of ordinary skill in the art, before the eff3ective filing date of the instant claims, to come to the expected result that the broader claims of the instant application would be encompassed by the prior patent.
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.
Claim(s) 1-3, 7, 8 and 16-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thompson et al (US 2017/0217450).
Thompson et al discloses a modular railcar for carrying coils. The car is comprised of a pair of side sills 28 that extend the longitudinal length of the car with the car further supported by an underframe 20, having a center sill as shown in figure 6, and a pair of wheeled trucks 14. A plurality of troughs 40 are formed along the length of the car, as shown in figure 2, the troughs defined by a series of angled sheet metal plates 42 positioned in the space between the two side sills. As shown in figures 2 and 4, the sheets are shown to be sloped and meet at a flat bottom between the sloped sheets. The sheets 42 are supported by the modular gusset as shown in figure 5 and the support gusset is secured to base members 52 and are positioned along the length of the underframe of the railcar. The base members 52 and corresponding supports 54 are connected with frame supports 56 on the side sills of the car.
Allowable Subject Matter
Claims 4-6 and 20 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 claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert J McCarry Jr. whose telephone number is (571)272-6683. The examiner can normally be reached Monday-Friday 7:00-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, S. Joseph Morano can be reached on 571-272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert J McCarry Jr/Primary Examiner, Art Unit 3617
RJM
September 17, 2026
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