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 Final Office Action of the instant application 17/800,358 (hereinafter the ‘358 application) filed on 8/17/2022, responsive to the amendment dated 5/5/2026. 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 § 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 nor do they recite any transformative step.
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 Rail Vehicle component / 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.
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 designing / 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: providing 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; providing 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 providing 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), while specifically, pointing out rail cars, stations, and railway elements implement maintenance (see paragraphs 93, 102, and 121).
Birkelbach teaches a similar system where a database of default items can be accessed and utilized in the railways installation plan (see paragraph 10), while further providing for use of the railway customization and simulation system as a means to “construct and test” the components in the “physical field site” (see paragraphs 130-131), 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.
Response to Arguments
Applicant's arguments filed 5/5/2026 have been fully considered but they are not persuasive.
Applicant argues that the claims have “been amended to recite a method of implementing a railway installation which comprises providing several different tangible/physical items (i.e., a Rail Vehicle ("RV") component comprising a number of RVs that are preconfigured for operation on the track, a platform component, and a shop component) for implementing a railway installation quickly and at a low cost in a manner which is not addressed in the art. As such, it is respectfully submitted that independent claim 9 is plainly not directed to "a method for organizing human activities" as contended by the Examiner but instead is plainly directed to patent-eligible subject matter.”
In response, the Examiner respectfully submits that the claims are not direct toward those claimed “tangible/physical items” but rather directed to a method of organizing/providing them. Each item (“Rail Vehicle” / “platform” / “shop”) alone and their use as a group is well known in the art. The claim merely sets forth a method for using/providing them together, also well known in the art (as further evidenced by the art and the application’s background section). Merely providing / arranging / gathering physical items (like parts in a kit) without a transformative step / specific functional interaction is an abstract idea without significantly more.
With regard to the claim containing physical / tangible components MPEP 2106.05.I.A notes:
It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility:
The fact that a computer "necessarily exist[s] in the physical, rather than purely conceptual, realm," is beside the point. There is no dispute that a computer is a tangible system (in § 101 terms, a "machine"), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the § 101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility "depend simply on the draftsman’s art," Flook, supra, at 593, 98 S. Ct. 2522, 57 L. Ed. 2d 451, thereby eviscerating the rule that "‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’" Myriad, 133 S. Ct. 1289, 186 L. Ed. 2d 124, 133).
Alice Corp., 573 U.S. at 224, 110 USPQ2d at 1983-84 (alterations in original). See also Genetic Technologies Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA amplification and analysis "do not, individually or in combination, provide sufficient inventive concept to render claim 1 patent eligible" merely because they are physical steps).
Applicant argues that “Verellen contains no disclosure or suggestion of providing anything for implementing a railway, and more particularly does not disclose or suggest any of the aforementioned elements of the method of claim 9.” / “Similar to Verellen, Birkelbach contains no disclosure or suggestion of providing anything for implementing a railway, and more particularly does not disclose or suggest any of the aforementioned elements of the method of claim 9.”
In response, the Examiner respectfully submits that claim 9 is directed toward a “method of implementing a railways installation”, not any specific improvement of any of the particular elements making up the railway. The proposed combination of Verellen / Birkelbach teach a method for implementing a railway where the railway comprises each of cars / platform / shop (see paragraphs 93, 102, and 121).
Summary
Claims 9-21 are REJECTED.
Claims 1-9 are CANCELLED.
Conclusion
Applicant's amendment necessitated any the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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