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 .
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.
Claims 1-2 and 10-20 are 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”).
Claims 3-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12344294 in view of Buschelman (US 20240137635).
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 support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points.”
Buschelman teaches wherein the support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points (FIG. 3; see [0033], [0034], [0036]).
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 Buschelman’s teachings to include wherein the support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points in order to produce a better quality image of the train as it moves through the portal (Buschelman; [0012]).
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12344294 in view of Riley (US 20070040911).
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 “further comprising one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location.”
Riley teaches one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location (see [0052]).
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 Riley’s teachings to include one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location in order to effectively increase the camera's field of view by extending the "viewing distance" (Riley; [0069]).
Claims 1-2, 10-11 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 15-18 of copending Application No. 19254077 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 application claims include all of the limitations of the instant application claims, respectively. The reference application claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective reference application claims. As such, the instant application claims are anticipated by the reference application 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 application invention" and the instant “application claims are generic to species of invention covered by the reference application 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.
Claims 3-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19254077 and over claim 1 of copending Application No. 19254081 in view of in view of Buschelman (US 20240137635).
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 reference applications. Reference application claims recite all limitations found in instant claims except for “wherein the support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points.”
Buschelman teaches wherein the support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points (FIG. 3; see [0033], [0034], [0036]).
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 Buschelman’s teachings to include wherein the support structure is a truss structure; wherein the overhead inspection system is attached to the overhead portion of the support structure; wherein the first side inspection system is attached to the first side of the support structure; wherein the second side inspection system is attached to the second side of the support structure; wherein the support structure comprises one or more modular attachment points; wherein each of the overhead inspection system, the first side inspection system, and the second side inspection system are detachably attached to the support structure via at least one corresponding modular attachment point of the one or more modular attachment points in order to produce a better quality image of the train as it moves through the portal (Buschelman; [0012]).
Claim 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19254077 and over claim 1 of copending Application No. 19254081 in view of Riley (US 20070040911).
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 reference applications. Reference application claims recite all limitations found in instant claims except for “further comprising one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location.”
Riley teaches one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location (see [0052]).
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 Riley’s teachings to include one or more motorized devices disposed on the support structure, each of the one or more motorized devices being configured to move a corresponding one of the inspection portal cameras from a first location on the support structure to a second location on the support structure that is different from the first location in order to effectively increase the camera's field of view by extending the "viewing distance" (Riley; [0069]).
Claims 12-14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19254077 and over claim 1 of copending Application No. 19254081 in view of Smythe et al (US 11891098).
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 reference applications. Reference application claims recite all limitations found in instant claims except for “wherein the one or more overhead cameras comprises an overhead line scan camera and an overhead area scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is a line scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is an area scan camera.”
Smythe teaches wherein the one or more overhead cameras comprises an overhead line scan camera and an overhead area scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is a line scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is an area scan camera (FIG. 1).
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 Smythe’s teachings to include wherein the one or more overhead cameras comprises an overhead line scan camera and an overhead area scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is a line scan camera; wherein at least one of the one or more first cameras, the one or more second cameras, the one or more undercarriage cameras, or the one or more third cameras is an area scan camera in order to detect areas of concern for railcars (Smythe; col. 3, lines 1-19).
Claims 15-16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19254077 and over claim 1 of copending Application No. 19254081 in view of Mesher (US 20180237041).
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 reference applications. Reference application claims recite all limitations found in instant claims except for “further comprising: a second support structure comprising a third side inspection system configured to capture images of a region of the first side of the railcar, the third side inspection system comprising one or more fourth cameras and one or more fourth lights; and a third support structure comprising a fourth side inspection system configured to capture images of a region of the second side of the railcar, the fourth side inspection system comprising one or more fifth cameras and one or more fifth lights; wherein the third side inspection system is configured to capture images of a brake and/or shoe region of the first side of the railcar and the fourth side inspection system is configured to capture images of a brake and/or shoe region of the second side of the railcar.”
Mesher teaches further comprising: a second support structure comprising a third side inspection system configured to capture images of a region of the first side of the railcar, the third side inspection system comprising one or more fourth cameras and one or more fourth lights (FIG. 7, 26A); and a third support structure comprising a fourth side inspection system configured to capture images of a region of the second side of the railcar, the fourth side inspection system comprising one or more fifth cameras and one or more fifth lights (FIG. 7, 26B); wherein the third side inspection system is configured to capture images of a brake and/or shoe region of the first side of the railcar and the fourth side inspection system is configured to capture images of a brake and/or shoe region of the second side of the railcar (FIG. 4, FIG. 7; see [0057]-[0058]).
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 Mesher’s teachings to include a second support structure comprising a third side inspection system configured to capture images of a region of the first side of the railcar, the third side inspection system comprising one or more fourth cameras and one or more fourth lights; and a third support structure comprising a fourth side inspection system configured to capture images of a region of the second side of the railcar, the fourth side inspection system comprising one or more fifth cameras and one or more fifth lights; wherein the third side inspection system is configured to capture images of a brake and/or shoe region of the first side of the railcar and the fourth side inspection system is configured to capture images of a brake and/or shoe region of the second side of the railcar in order to provide an accurate, reliable, robust and cost-effective broken wheel detection system that is capable of identifying rolling stock wheel defects continuously at full track speed for any type of wheels with no impact to traffic flows, for all wheels in each train consist (Mesher; [0006]).
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-20 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.
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/BOUBACAR ABDOU TCHOUSSOU/Primary Examiner, Art Unit 2482
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