CTNF 19/254,077 CTNF 92243 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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 1-5, 9-10, 12-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12344294. Although the claims at issue are not identical, they are not patentably distinct from each other because: The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). 08-34 AIA Claim s 6-8 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12344294 in view of Arcaini et al (US 10523858) . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of the patent. Patent claims recite all limitations found in instant claims except for “wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, and wherein the one or more sensors comprises one or more heat sensors.” However, Arcaini teaches wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, and wherein the one or more sensors comprises one or more heat sensors (col. 5, lines 34-64; col. 3, lines 30-32; col. 2, lines 26-33). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to use Arcaini’s teachings to include wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, and wherein the one or more sensors comprises one or more heat sensors in order to determine very precise and accurate measurements of the speed of a train at a given point in time and to allow the undercarriage of a train to be inspected periodically without the need to stop the train for a visual inspection (Arcaini; col. 2, lines 35-38; col. 5, lines 11-13). Claims 1-3 and 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 10-11 and 17-20 of copending Application No. 19254080 and over claims 1-20 of copending Application No. 19254081 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because: The reference Applications claims include all of the limitations of the instant application claims, respectively. The reference Applications claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective reference Applications claims. As such, the instant application claims are anticipated by the reference Applications claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the reference Applications invention" and the instant “application claims are generic to species of invention covered by the reference Applications claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented . 08-37 AIA Claim s 4-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19254080 and over claim 1 of copending Application No. 19254081 in view of Iler (US 20190094154) in view of Arcaini ((US 10523858) and in view of Mian (US 20100100275). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of the patent. Patent claims recite all limitations found in instant claims except for “wherein the one or more sensors comprises one or more pressure switches, wherein the one or more sensors comprises one or more light curtains, wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, wherein the one or more sensors comprises one or more non-contact sensors configured to detect the presence or the absence of the railcar without physically contacting the railcar, wherein the one or more sensors comprises one or more microphones, wherein the one or more sensors comprises one or more heat sensors.” Iler teaches wherein the one or more sensors comprises one or more pressure switches, wherein the one or more sensors comprises one or more light curtains (see [0045]-[0046]). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to use Iler’s teachings to include wherein the one or more sensors comprises one or more pressure switches, wherein the one or more sensors comprises one or more light curtains in order to perform a wheel scanning cycle (Iler; [0044]). Arcaini teaches wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, wherein the one or more sensors comprises one or more non-contact sensors configured to detect the presence or the absence of the railcar without physically contacting the railcar, wherein the one or more sensors comprises one or more heat sensors (col. 5, lines 34-64; col. 3, lines 30-32; col. 2, lines 26-33). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to use Arcaini’s teachings to include wherein the one or more sensors comprises one or more inductance-based sensors, wherein the one or more sensors comprises one or more metal detection sensors, wherein the one or more sensors comprises one or more proximity sensors, wherein the one or more sensors comprises one or more non-contact sensors configured to detect the presence or the absence of the railcar without physically contacting the railcar, wherein the one or more sensors comprises one or more heat sensors in order to determine very precise and accurate measurements of the speed of a train at a given point in time and to allow the undercarriage of a train to be inspected periodically without the need to stop the train for a visual inspection (Arcaini; col. 2, lines 35-38; col. 5, lines 11-13). Mian teaches wherein the one or more sensors comprises one or more microphones (see [0043], [0102]). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to use Mian’s teachings to include wherein the one or more sensors comprises one or more microphones in order to capture sounds made by a passing rail vehicle and produce greater confidence in the detection of various flaws (Mian; [0043], [0102]) . This is a provisional nonstatutory double patenting rejection. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Buschelman (US 20240137635) in view of Arcaini et al (US 10523858) in view of Mian et al (US 20200408682) . As to claim 19, Buschelman discloses an inspection portal system (FIG. 3) comprising: a support structure comprising a first side, a second side, and a top side supported by the first and second sides, the support structure configured to span across a track of a railway and to permit a railcar to pass therethrough (FIG. 3); an overhead inspection system attached to the top side, the overhead inspection system comprising one or more overhead cameras and one or more overhead lights (FIG. 3, cameras 6-7 and overhead LED lights 15); a first side inspection system attached to the first side of the support structure, the first side inspection system comprising one or more first cameras and one or more first lights and configured to capture images of a first side of the railcar (FIG. 3, right side cameras 5 and right-side LED lights 15); a second side inspection system attached to the second side of the support structure, the second side inspection system comprising one or more second cameras and one or more second lights and configured to capture images of a second side of the railcar (FIG. 3, left side cameras 5 and left-side LED lights 15); a detection system (see [0038], As the train approaches the portal 1 … The software determines the speed of the train); and one or more computing devices in electrical communication with: the detection system; inspection portal cameras comprising the one or more overhead cameras, the one or more first cameras, the one or more second cameras; and inspection portal lights comprising the one or more overhead lights, the one or more first lights, the one or more second lights (FIG. 5, controller 40) , wherein the one or more computing devices is configured to determine a capture timing for each of the inspection portal cameras based at least in part on a train speed estimation based at least in part on data from the detection system (see [0038]). Buschelman fails to explicitly disclose an undercarriage inspection system comprising one or more undercarriage inspection assemblies, each of the one or more undercarriage inspection assemblies being located between rails of the railway and comprising one or more undercarriage cameras and one or more undercarriage lights; one or more tie-mounted inspection assemblies, each of the one or more tie-mounted inspection assemblies being attached to one or more ties of the railway at a location outside the rails of the railway, and comprising one or more third cameras and one or more third lights; and a detection system configured to determine a presence or an absence of the railcar. However, Arcaini teaches an undercarriage inspection system comprising one or more undercarriage inspection assemblies, each of the one or more undercarriage inspection assemblies being located between rails of the railway and comprising one or more undercarriage cameras and one or more undercarriage lights (FIGS. 1-2); and a detection system configured to determine a presence or an absence of the railcar (col. 2, lines 59-64). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to modify Buschelman using Arcaini’s teachings to include an undercarriage inspection system comprising one or more undercarriage inspection assemblies, each of the one or more undercarriage inspection assemblies being located between the rails of a railway and comprising one or more undercarriage cameras and one or more undercarriage lights; and a detection system configured to determine a presence or an absence of the railcar in order to determine very precise and accurate measurements of the speed of a train at a given point in time and to allow the undercarriage of a train to be inspected periodically without the need to stop the train for a visual inspection (Arcaini; col. 2, lines 35-38; col. 5, lines 11-13). The combination of Buschelman and Arcaini fails to explicitly disclose one or more tie-mounted inspection assemblies, each of the one or more tie-mounted inspection assemblies being attached to one or more ties of the railway at a location outside the rails of the railway, and comprising one or more third cameras and one or more third lights. However, Mian teaches one or more tie-mounted inspection assemblies, each of the one or more tie-mounted inspection assemblies being attached to one or more ties of the railway at a location outside the rails of the railway, and comprising one or more third cameras and one or more third lights (FIG. 5 and [0038]-[0039]). At the time before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skills in the art to modify the combination of Buschelman and Arcaini using Mian's teachings to include one or more tic-mounted inspection assemblies, each of the one or more tie-mounted inspection assemblies being attached to one or more ties of a railway at a location outside the rails of the railway, and comprising one or more third cameras and one or more third lights in order to accurately measure one or more wheel attributes (Mian; [0005]). As to claim 20, the combination of Buschelman, Arcaini and Mian further discloses wherein the detection system comprises one or more non-contact sensors (Arcaini; col. 3, lines 1-2). Allowable Subject Matter Claims 1-18 would be allowable if the double patenting rejection set forth in the office action is overcome. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOUBACAR ABDOU TCHOUSSOU whose telephone number is (571)272-7625. The examiner can normally be reached M-F 8am-4pm. 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, Chris Kelley can be reached at 5712727331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BOUBACAR ABDOU TCHOUSSOU/Primary Examiner, Art Unit 2482 Application/Control Number: 19/254,077 Page 2 Art Unit: 2482 Application/Control Number: 19/254,077 Page 3 Art Unit: 2482 Application/Control Number: 19/254,077 Page 4 Art Unit: 2482 Application/Control Number: 19/254,077 Page 5 Art Unit: 2482 Application/Control Number: 19/254,077 Page 6 Art Unit: 2482 Application/Control Number: 19/254,077 Page 7 Art Unit: 2482 Application/Control Number: 19/254,077 Page 8 Art Unit: 2482 Application/Control Number: 19/254,077 Page 9 Art Unit: 2482 Application/Control Number: 19/254,077 Page 10 Art Unit: 2482 Application/Control Number: 19/254,077 Page 11 Art Unit: 2482 Application/Control Number: 19/254,077 Page 12 Art Unit: 2482
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