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 .
Status of the Claims
Claims 1-16 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 26 November 2024 was filed before the mailing date of the first Office Action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 12,188,185 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims fully encompass the subject matter of the instant application claims.
Allowable Subject Matter
Claims 1-16 would be allowable if the Double Patenting rejection(s) set forth in this Office action is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach the combination of limitations as recited in claim 1, as identified in the Parent Application 17/616,290, Nelson (US 1357180 A) teaches a jacking tie for raising and lowering adjacent rails of a railroad, the jacking tie comprising:
an elongate body (10) (Fig. 1) configured to span beneath the adjacent rails (26), the elongate body having an upper section (12) and a lower section (11),
a first jack (16, on the left) (Fig. 3) configured to lift a first end of the upper section relative to the lower section (col. 2, lines 74-80), and
a second jack (16, on the right) configured to lift an opposite, second end of the elongate body relative to the lower section (col. 2, lines 74-80),
Nelson does not teach wherein the upper section and lower section are pivotably coupled together. Rather, Nelson teaches completely separate upper and lower sections where the operation of the first and second jacks together or independently causes the upper section to rise or pivot relative to the lower section.
Other references such as Kenneth (US 3230895 A), Franz (US 3101676 A), and Stewart (US 3965822 A) all teach jack systems including a pivot connection. However, none of these references suggest connecting separate upper and lower sections of a jacking tie by a pivoting connection such that the operation of the first and second jacks together or independently cause vertical adjustment of the upper section relative to the lower section.
It would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the jacking tie of Nelson to include the pivot connections of Kenneth, Franz, or Stewart while further including connecting the upper and lower shells of Nelson by that pivoting connection as the modifications needed would require an improper amount of hindsight, i.e., the modifications necessary would require a complete redesign of Nelson.
Thus, Claim 1 is non-obvious in view of the prior art of record. Claims 2-16 are also allowed due to dependence upon claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES WILLIAM JONES whose telephone number is (571)270-7063. The examiner can normally be reached M-F: 11am-7pm.
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/JAMES WILLIAM JONES/ Examiner, Art Unit 3615
/S. Joseph Morano/ Supervisory Patent Examiner, Art Unit 3615
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