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 a Non-Final Office Action of the instant application 17/800,358 (hereinafter the ‘358 application) filed on 8/17/2022. The ‘358 application claims priority to PCT/US22/71614 which has an international filing date of 4/8/2022 and to U.S. Provisional Application Serial Number 63/172,439 filed 4/8/2021.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Specifically, the open grouping language used in the claims is improper for a Markush grouping. In this instance the list of alternatives is not a closed grouping causing the Markush group to be so expansive that persons skilled in the art cannot determine the metes and bounds of the claimed invention.
MPEP 2173.05 (h):
A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022) (each independent claim recites "a selection from the group comprising a person, an animal, an animated character, a creature, an alien, a toy, a structure, a vegetable, and a fruit." … (emphasis added). "Given the breadth of variation among the specified alternatives and the use of the open-ended word ’comprising’ to define the scope of the list, we affirm the Board's conclusion that the pending claims recite improper Markush language and are indefinite under § 112(b)."). If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See also MPEP § 2111.03.
Claim Rejections - 35 USC § 112
Claims 9-21 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of at least one of: an integration and control document component / a safety and operational component / an amount of application engineering / a platform component / a shop component is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: these are separate distinct components usable together in a railway installation, therefor not functional equivalents nor having a common use.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Independent claim 9 (along with each of its corresponding dependent claims) are directed to the abstract idea of being directed to a method for organizing human activities.
Subject Matter Eligibility Standard
In the Supreme Court’s decision, Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (“Alice Corp."), the Supreme Court made clear that it applies the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __(2012) (Mayo), to analyze claims directed towards laws of nature and abstract ideas. Alice Corp. also establishes that the same analysis applies for all categories of claims (e.g., product and process claims).
When considering subject matter eligibility under 35 U.S.C. 101, the basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I). First, it must be determined (in Step 1) whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. Second, if the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). Under the two-part analysis for judicial exceptions it is first determined (in Step 2A) whether the claims are directed to a judicial exception. Step 2A is broken down in to two parts:
Step 2A Prong 1- a determination is made if the claim recites an Abstract Idea, Law of Nature, or a Natural Phenomenon, under the 2019 PEG groupings of Abstract Ideas.
Step 2A Prong 2- a determination is made if the claim recites additional elements that integrate the judicial exception into a practical application.
If the claim is determined to be directed to a judicial exception, a determination is then made (in Step 2B) as to whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea. See “2014 Interim Guidance on Patent Subject Matter Eligibility” 79 Fed. Reg. 241 (Dec. 16, 2014), pp. 74621-74624. As discussed below, the claims are directed to an abstract idea, and the claims do not recite additional elements or combination of elements that amount to significantly more than the abstract idea.
Examples of abstract ideas referenced in Alice Corp. Include:
a. Fundamental economic practices;
b. Certain methods of organizing human activities;
c. An idea itself; and
d. Mathematical relationships/formulas.
e. Mental Processes
Limitations reference in Alice Corp. that may be enough to qualify as “significantly more” when the claim features include, as non-exclusive examples:
a. Improvements to another technology or technical field;
b. Improvements to the functioning of the computer itself;
c. Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Examples that are NOT enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples:
a. Adding words “apply it” (or an equivalent) with an abstract idea, or mere instructions to implement an abstract idea on a computer;
b. Requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.
Analysis
The following analysis is based on the “2019 Revised Patent Subject Matter Eligibility Guidance” (hereinafter “2019 PEG”) published in January 2019.
Claim 1 (the independent claim) pertains to a method (Step 1), for implementing a railway installation onto at least one of a track the is pre-existing and another track that is either at least partially pre-existing or not pre-existing.
Here the sequence of steps are directed to a familiar class of claims “directed to” a patent-ineligible concept which has been viewed by the courts to be abstract (Step 2A1). The focus of the asserted claims, as illustrated by the claims quoted above, is on implementing a railway installation by providing a kit.
If a claim limitation, under its broadest reasonable interpretation, pertains to providing an element for sale, then it falls within the “Organizing Human Activity” grouping of abstract ideas (e.g., see: MPEP 2106.04(a)(2)(II)). The present claims recites “providing a fully integrated, pre-configured package (or “kit”) comprising…”. The specification describes this step as “selling or otherwise offering and/or providing the kit 4 to a customer 12” (see paragraph 22), with the kit being made up of “standardized components” generic in nature so as to be usable across multiple different railways (see paragraphs 1 and 9). Accordingly, the claim recites an abstract idea.
The claims are therefore directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). Specifically, the case parallels the fact patterns in Bilski and further in Ultramerical v. Hulu and WildTangent (2014 U.S. App. LEXIS 21633 (Fed. Cir. 2014).
Furthermore, the claim does not recite additional elements that integrate the judicial exception into a practical application (Step 2A2). The claims merely use generic computer components to provide the kit to an end user while not describing the transfer in any meaningful way.
The Examiner does not see improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a); Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo; Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b); Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c); Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo.
In summary -
The claims of the ‘358 application are clearly focused on the abstract idea process itself. The advance they purport to make is the supplying of this “kit”, and not any particular assertedly inventive technology for performing the functions of the kit. They are therefore directed to an abstract idea.
The claims as a whole do not amount to significantly more than the abstract idea itself. In particular, the additional claim elements (Step 2B) of an integration and control document component / a safety and operational component / an amount of application engineering / a platform component / a shop component, pertain to components that are provided as part of the kit and are simply an attempt to limit the abstract idea to a particular environment (that of a railway installation). These claim elements are not sufficient to amount to significantly more than the judicial exception. The claim as a whole does not amount to significantly more than the Judicial Exception. It is further noted that each of these additional claim elements are part of an improper Markus grouping, thus the degree to which they are limiting is uncertain.
Thus, the claim is not patent eligible.
Dependent claims 10-21 do not add significantly more than the abstract idea presented in the parent claims and are therefore rejected for the same reasons.
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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Verellen et al., U.S. Publication No. 2023/0014504 (as supported by provisional documents), hereinafter Vereleen and Birkelbach et al., U.S. Publication No. 2004/0059442, hereinafter Birkelbach.
With regard to claim 9, which teaches “A method of implementing a railway installation onto at least one of a track that is pre-existing and another track that is either at least partially pre-existing or not pre-existing”, Vereleen teaches a railway visualization system for use in installation of new components to an existing railways where that railway may comprise an already installed track portion (see paragraphs 3, 93, and 133).
With regard to claim 9, which teaches “comprising: providing a fully integrated, pre-configured package (or “kit”) comprising: a Rail Vehicle (“RV”) component comprising a number of RVs that are preconfigured for operation on at least one of the track and the another track”, Vereleen teaches a CAD design for each component of the railway installation, wherein the design includes railway vehicle preconfigured for operation on the railway infrastructure (see paragraph 93).
With regard to the claim limitation, “further comprising at least one item selected from among a group of items, the group of items comprising: an integration and control document (ICD) component comprising a number of ICDs that have a number of specifications that pertain to a number of interactions between the number of RVs and at least one of the track and the another track; a safety and operational component comprising a number of safety case documents that are related to the railway installation, the number of safety case documents being usable as at least a portion of a basis for obtaining approval from a number of governmental entities to operate the railway installation; an amount of applications engineering; a platform component comprising at least one of: a platform plan that comprises at least one of a platform design that is usable to construct a number of platforms and an installation guide that is usable to install the number of platforms adjacent at least one of the track and another track, a number of preconfigured platforms and an installation guide that is usable to install the number of platforms adjacent at least one of the track and the another track, and a number of installed preconfigured platforms that are situated adjacent at least one of the track and the another track; and a shop component comprising at least one of: a shop plan that comprises at least one of a shop design and an equipment guide, the shop design being usable to construct a shop in the vicinity of at least one of the track and the another track, the equipment guide comprising a description that comprises a number of specifications of a set of equipment that is usable to service the number of RVs and a number of positions in the shop where the set of equipment can be situated, a preconfigured shop kit from which the shop can be constructed with the use of the shop design, and a set of equipment that can be positioned in the shop according to the equipment guide”, Vereleen teaches enabling the customization of generic railway components to meet the needs of the specific configuration (see paragraph 128).
Birkelbach teaches a similar system where a database of default items can be accessed and utilized in the railways installation plan (see paragraph 10), but further teaches the customization of each of the “vehicles, station platforms, station signs, signal heads, and grade crossings” to best fit the projects unique situation (see paragraphs 55 and 107). It would be obvious to one of ordinary skill in the art at the time to utilize Birkelbach customization of a multitude of railway components, in the system of Vereleen, to best adapt to unique situations of the install.
Summary
Claims 9-21 are REJECTED.
Claims 1-9 are CANCELLED.
Conclusion
The prior art made of record and not relied upon is considered pertinent to
applicant's disclosure: Salciccia (U.S. Pub. No. 2022/0274285) and Thomas (U.S. Pub. No. 2011/0061336).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS G BONSHOCK whose telephone number is (571)272-4047. The examiner can normally be reached M-F 7:15 - 4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS G BONSHOCK/Primary Examiner, Art Unit 3992