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 .
Response to Arguments
Applicant's arguments filed 21 August 2025 have been fully considered but they are persuasive only in part.
First, the rejection under 35 U.S.C. 103, being overcome by applicant’s amendments, is withdrawn.
Second, applicant’s arguments regarding the rejection under 35 U.S.C. 112(a), description requirement, are not convincing.
In this respect, applicant argues (regarding possession by applicant):
For example, one or more geographic areas are identified due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature. [00131]. A need for derating an engine may occur in situations where the performance of the engine could be compromised, degraded, or decreased. These situations may include operation of the engine in elevated ambient temperatures. [0017]. If a need for deration or a high likelihood of deration is associated with a geographic area due to elevated temperatures, then the trip plan can be created or modified to direct the same vehicle system to travel through the same area but at a different time of day (e.g., night), when the temperatures may be cooler. [0080]
However, the above arguments do not appear to evidence possession by describing any algorithm(s) or steps/procedure for performing the claimed invention – see MPEP 2161.01, I. – but only apparently describe desired results (e.g., perhaps a hypothetical possibility). Here, the examiner notes that applicant does not apparently claim, in any claim, any “elevated ambient temperatures”, but only that the temperatures exceed “a [any] threshold temperature” which apparently could be a low temperature such as a freezing temperature. (The examiner notes he will not read limitations from the specification about SATP into the claims. See MPEP 2111.01, II.) Moreover, elevated ambient temperatures are apparently not (e.g., from the teachings of the specification) a sufficient condition, by themselves, for any algorithm to identify where there will likely be a need to derate the engine or a requirement to derate the engine to avoid damaging the engine. For example, if the engine is not being called on to produce significant power when the ambient temperature is elevated (such as when the vehicle group is descending a slope in Arizona during the summer), it may be likely that the engine will not need to be derated, since any derating at that time would apparently be ineffectual e.g., since or when the engine is not producing significant power. Accordingly, applicant’s arguments are not persuasive in this respect.
Third, since applicant has not argued the rejections under 35 U.S.C. 112(b), the rejections are repeated herein.
Fourth, regarding the rejections under 35 U.S.C. 101, the examiner has requested guidance from a TQAS (training quality assurance specialist) and accordingly maintains the rejections in view of the guidance, with slight changes to accommodate the amended claim language, for the reasons indicated below. For example, the inventions appear to merely recite an improved abstract ideas for creating/modifying trip plans, without significantly more.
In this respect, applicant argues first:
To facilitate compact prosecution, the Applicant amended independent Claims 1, 8, and 15 to expressly recite that one or more geographic areas are identified due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature, and a trip plan is created or modified to direct a vehicle group to travel through the one or more geographic areas at a different time to avoid the ambient temperatures that exceed the threshold temperature. The Applicant submits that the amended claims satisfy all requirements of 35 U.S.C. 101 for at least the reasons discussed below.
The identifying of geographic area(s), based on a temperature above a threshold temperature or even based on an elevated temperature above SATP (which is not claimed), is a mental process, and the examiner understands that an improved mental process is still a mental process. See e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a *new* abstract idea is still an abstract idea") (emphasis in original).
Next, applicant argues:
The Applicant submits that amended independent Claims 1, 8, and 15 are not directed to a judicial exception because it provides an improvement in the respective technological field. Such improvement is discussed, for example, in the present application as follows:
[0018] An engine may be derated more for warmer ambient temperatures, and derated less for ambient temperatures that are warmer than the temperature threshold, but still exceed the temperature threshold.
[00131] The processor(s) can identify the geographic area(s) due to ambient temperatures in the geographic area(s) exceeding a threshold temperature. The processor(s) can create or modify the trip plan to direct the vehicle group to travel through the geographic area(s) at a different time to avoid the ambient temperatures that exceed the threshold temperature.
[0080] The trip plan can be created or modified to avoid traveling through areas where a need for deration is identified (or has a likelihood exceeding a threshold) during certain times. For example, if a need for deration or a high likelihood of deration is associated with a geographic area due to elevated temperatures, then the trip plan can be created or modified to direct the same vehicle system to travel through the same area but at a
different time of day (e.g., night), when the temperatures may be cooler. As another example, if a need for deration or a high likelihood of deration is associated with a geographic area due to weather conditions, then the trip plan can be created or modified to direct the same vehicle system to travel through the same area but at a different time of day (e.g., another day or week), when the weather conditions may change (e.g., and
be cooler, have more oxygen in the air, etc.).
Accordingly, amended independent Claims 1, 8, and 15 are not "directed to" a judicial exception as is required by Step 1 of the Alice/Mayo test, and for at least this reason alone, the Applicant requests that all rejections under 35 U.S.C. Sec. 101 be withdrawn.
Applicant’s arguments are not convincing as not reflecting any improvement, as described in the specification, in a technological field (e.g., a “trip plan” is an abstract plan to do something in the future, it is not an improvement to a technological field) and additionally as being not commensurate with the claim scope (applicant does not apparently claim any “elevated temperatures”, etc.)
Next applicant argues:
As discussed above, in amended independent Claims 1, 8, and 15, the one or more geographic areas are identified due to the ambient temperatures in the one or more geographic areas exceeding the threshold temperature, and the trip plan is created or modified to direct the vehicle group to travel through the one or more geographic areas at a different time to avoid the ambient temperatures that exceed the threshold temperature.
Again, the creation or modification of a “trip plan” is an abstract idea that can be practically performed in the human mind (e.g., the examiner can create a trip plan in his mind for a train to travel from Texas to California while avoiding e.g., hot areas like Death Valley).
Regarding Step 2B, the examiner previously cited to express statements in the applicant’s specification and court decisions cited in the MPEP, and now also supports the rejection with literature already of record in the parent case 15/918,002.
Accordingly, applicant’s arguments are only persuasive in part.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1 to 6, 8 to 13, 15, 16, and 18 to 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claims 1 and 8, applicant has apparently not described, in sufficient detail, by what algorithm(s)1, or by what steps or procedure2, he identified one or more geographic areas through which a vehicle group is scheduled to travel for an upcoming trip where there is an increased likelihood of a need for derating one or more engines of the vehicle group. No algorithm(s) or steps/procedure for identifying any or all geographic areas which would have “increased likelihood of a need for derating” one or more engines (e.g., perhaps areas with low-quality fuel, areas with sustained high-power travel, areas serviced by older locomotives, etc.) due e.g., (as now claimed) to ambient temperatures in the one or more geographic areas exceeding a/any “threshold temperature” (e.g., such as perhaps absolute zero, freezing [32° F], etc., as the claims necessarily cover and encompass, with the claims neither specifying nor being limited to SATP[3]) is apparently described, in sufficient detail, in the specification, with the specification also not apparently describing what such an increased likelihood of a need for derating might possibly objectively comprise (e.g., possibly a 0.01% increase in the need likelihood?) and how the “need” (depending on which factors of the train, locomotive, engine, etc.?) and/or its “likelihood” was/were objectively determined, nor is it apparently described (in sufficient detail) by what algorithm(s) or steps/procedure any or all needs for derating, or increased likelihoods thereof, would be identified/determined, from the teachings of the specification, but rather applicant has apparently only described a desired result (e.g., that areas with increased likelihoods of needs for derating should be identified apparently based solely on outside temperature being above a/any threshold temperature such as but not limited to SATP). Accordingly, the examiner believes that applicant has not evidenced possession of the full scope4 of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Regarding claims 1 and 8, applicant has apparently not described, in sufficient detail, by what algorithm(s) or by what steps or procedure he created or modified a trip plan to (always/necessarily/effectively) avoid a decrease in total power output from the vehicle group within the one or more geographic areas. No algorithm(s) or steps procedure are apparently described, in sufficient detail, to “avoid” a/any/all decrease(s) in total power output from the vehicle group in the areas (e.g., to have vehicle power never decrease e.g., on a downgrade or when the speed limit decreases), with the claim language apparently being repeated in ipsis verbis, as a desired result, in published paragraphs [0005], [0006], [0127], and [0132] of the specification. Accordingly, the examiner believes that applicant has not evidenced possession of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Regarding claims 5 and 12, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he created or modified a trip plan to reduce or eliminate the likelihood of the need for derating both the first and the second engines of the vehicle group within the one or more geographic areas by reducing a throttle setting of the first engine while increasing a throttle setting of a second engine. Other than repeating the claim language at published paragraph [0129], no algorithm(s) or steps/procedure for performing the computer-implemented function is/are apparently described, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced possession of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Regarding claims 6 and 13, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he created or modified a trip plan to direct a reduction in the electric energy generated by the one or more engines to be supplanted with the electrical energy during the travel. Other than repeating the claim language at published paragraph [0130], no algorithm(s) or steps/procedure for performing the computer-implemented function is/are apparently described, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced possession of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Regarding claim 15, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he identified a geographic area in which an ambient condition “requires deration” of a first engine in a multi-vehicle system “to avoid damaging the engine”. No algorithm(s) or steps/procedure for identifying any or all geographic areas in which an ambient temperature condition (e.g., and as claimed by amendment, of a temperature exceeding any or all threshold temperatures e.g., such as perhaps absolute zero, freezing [32° F], etc., as the claims necessarily cover and encompass, with the claims neither specifying nor being limited to SATP) would require deration of a first engine in a multi-vehicle system to avoid damaging the engine are apparently described, in sufficient detail, nor is it apparently described (in sufficient detail) by what algorithm(s) or steps/procedure any or all requirements for derating to avoid damaging the engine would be identified/determined, from the teachings of the specification, but rather applicant has only described a desired result (e.g., that areas requiring derating to avoid engine damage should be identified by merely looking to an/any ambient temperature exceeding any or all threshold temperatures). Accordingly, the examiner believes that applicant has not evidenced possession of the full scope5 of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
In this respect, paragraphs [0017], [0018], [0022], and [0061] of the published specification indicate:
[0017] In one embodiment, engine deration can be the intentional or purposeful reduction in power output or performance of an engine due to various factors, such as environmental conditions, operational limitations, or system malfunctions. The power output or performance can be the horsepower or torque generated by the engine, and can be reduced by reducing a throttle setting of the engine. Engine deration can be used to protect the engine from damage and/or to ensure safe operation of the engine under adverse conditions. A need for derating an engine may occur in situations where the performance of the engine could be compromised, degraded, or decreased. These situations may include operation of the engine in elevated ambient temperatures, operation of the engine in areas with decreased availability of oxygen, malfunction of an engine component, decreased fuel quality, or the like.
[0018] Elevated ambient temperatures can occur when the temperature of the air surrounding the vehicle system is warmer than a threshold temperature, such as the temperature of standard room temperature conditions (also known as standard ambient temperature and pressure (SATP)). These conditions can include a temperature of twenty-five degrees Celsius or seventy-seven degrees Fahrenheit, an air pressure of one atmosphere o[f] 101.325 kilopascals, and a relative humidity of 50%. Engines may generate more heat in warmer environments with excessive heat potentially leading to overheating and damage to the engine. To prevent this, the engine may be derated to reduce power output and operating temperature while operating in elevated ambient temperatures. An engine may be derated more for warmer ambient temperatures, and derated less for ambient temperatures that are warmer than the temperature threshold, but still exceed the temperature threshold.
[0022] Operation of the vehicle system according to manual control and/or a trip plan can result in a need to derate the engine(s) of the vehicle system in one or more locations and/or during movement of the vehicle system through one or more segments of a trip (where the locations or segments are individual, geographic coordinates or areas that encompass less than all the total length of the trip). For example, control of the vehicle system under the manual control and/or according to the designated settings of the trip plan can result in the vehicle system moving through and operating in areas with elevated ambient temperatures (e.g., temperatures warmer than the threshold temperature), the vehicle system moving through and operating in areas with decreased oxygen (e.g., oxygen below a designated oxygen content threshold), the vehicle system moving and operating with less than a threshold amount of fuel, etc. As described above, one or more of these conditions may cause a need to derate the engine to avoid damaging the engine and/or components of the engine.
[0061] As described herein, the environmental conditions, such as temperature, pressure, and air constituency, can affect the performance capability of an engine of the vehicle system, and may be a basis for needing to derate the engine to avoid or reduce the likelihood of damage to the engine and/or components of the engine. For example, the vehicle system may not be able to perform as well at hot ambient temperatures over 90° F. than at cool ambient temperatures (e.g., between 30° F. and 60° F.). Air constituency may refer to the make-up of the ambient air through which the vehicle system travels. The air constituency may include oxygen concentration, nitrogen oxide (e.g., NOx) concentration, smoke and particulate matter levels, and the like. The vehicle system may be able to perform better within ambient air that has a greater oxygen concentration than within ambient air with a reduced oxygen concentration.
However, these paragraphs apparently describe mere hypothetical possibilities (e.g., that engines may apparently need to be derated at elevated ambient temperatures above SATP [i.e., 77 degrees Fahrenheit, per the specification], or oxygen below a designated oxygen content threshold) and that derating the engine may avoid or reduce a likelihood of damage to the engine. The disclosure does not apparently describe, in sufficient detail, by what algorithm(s) or by what steps/procedure any or all geographic areas where an ambient temperature exceed a/any threshold (e.g., such as perhaps absolute zero, freezing [32° F], etc., as the claims necessarily cover and encompass, with the claims neither specifying nor being limited to SATP) were identified in which an ambient condition “requires deration . . . to avoid damaging the engine”. Accordingly, the examiner believes that applicant has not evidenced possession of the full scope of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Regarding claim 15, applicant has apparently not described, in sufficient detail, by what algorithm(s), or by what steps or procedure, he configured the one or more processors to control one or more of (a) a second engine in the multi-vehicle system to supplant a reduction in power output by the first engine during travel through the geographic area or (b) an onboard energy storage device to power a motor and supplant the reduction in power output by the first engine during travel through the geographic area. Other than repeating the (indefinite) claim language at published paragraph [0007], [0130], and [0133], no algorithm(s) or steps/procedure for performing the computer-implemented function is/are apparently described, in sufficient detail. Accordingly, the examiner believes that applicant has not evidenced possession of the full scope of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
In this respect, see e.g., MPEP 2161.01, I., which indicates, “[O]riginal claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
See also e.g., MPEP 2163, I., A. which indicates, “However, as discussed in subsection I, supra, issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the inventor had possession of the claimed invention at the time of filing. . . . An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.”
See also MPEP 2163.03, V. which indicates, “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).”
Claims 1 to 6, 8 to 13, 15, 16, and 18 to 20 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.
In claim 1, lines 2ff, and in claim 8, lines 2ff, “identifying one or more geographic areas through which a vehicle group is scheduled to travel for an upcoming trip where there is an increased likelihood of a need for derating one or more engines of the vehicle group” is fully indefinite and not reasonably certain6, e.g., being facially subjective, from the teachings of the specification. For example, how are the likelihoods particularly/objectively defined/determined from the teachings of the specification? What objective standard (perhaps a non-increased likelihood as a baseline?) is the “increased likelihood” measured/determined in relation to so that “increased” is not facially subjective? Regarding facially subjective terms, see MPEP 2173.05(b), IV. How is a “need for derating” defined so as to not be facially subjective (e.g., what objective condition makes derating to be “need[ed]” in the context of the claim(s), a need based on what determination or objective standard? Additionally, it is unclear in the claim context and from the teachings of the specification (which appear contradictory in parts) what actions or restrictions would or would not constitute the claimed “derating” of an engine, with reasonable certainty, since no clear definition of “derat[ion]”, or description of what it would mean in a control context, is apparently provided in the specification and the term is apparently used differently by different entities in the industry for describing different situations (e.g., reducing an engine output at particular times, not allowing the engine output to reach a rated output at other times, etc.), with published paragraph [0017] suggesting that an engine may be derated by intentionally reducing a throttle setting, with published paragraph [0028] suggesting that the deration to avoid engine damage is something other than/beyond merely a reduced/lower throttle setting, with published paragraph [0029] indicating that lower throttle settings themselves may avoid the need to derate the engine, and with published paragraph [0079] indicating that an engine directed to derate will be directed “to generate no more power than a reduced limit that is lower than the rated power capability of the engine or another, previous greater limit on power output by the engine”. These apparently contradictory usages of “derate”, “deration”, “derating”, etc. in the specification7 make all usages of “derate” (e.g., derate, derating, derates, deration, derated, etc.), and its “need” or “require[ment]”, in the claim context unclear and not reasonably certain in scope. See MPEP 2173.02, I., “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.” For example, does the claimed “derating” or “deration” effect some physical/real-world change of the engine’s actual/real-time performance (e.g., reduce an actual throttle/notch[8] setting of the engine, reduce a power output of the engine, etc.?) or does the claimed “derating” or “deration” only affect some hypothetical/possible performance of the engine which is never even required by the claims (e.g., how much power the engine could output upon a hypothetical request for power output being made, where the request need never occur (and the power need never be outputted) in any of the claims?)
In claim 1, lines 7ff, and in claim 8, lines 7ff, “create or modify the trip plan to avoid a decrease in total power output from the vehicle group within the one or more geographic areas” is indefinite in the claim context and from the teachings of the specification. For example, it is unclear what decrease in the total power output is being referred to, when the specification apparently refers to no decrease in total power output (e.g., “total” and “power output” of the vehicle group defined particularly how, perhaps power output from an engine, a generator, a generator driven by the engine and the engine totaled together?) It is unclear what the “decrease” that is avoided is a decrease relative to (e.g., a decrease relative to power output at a previous instant, a decrease relative to a minimum or designated or desired or expected power output, a decrease relative to an available or rated power output, etc.?) Moreover, the decrease in “power output” is unclear in the claim context when the claim requires no power outputting at all. Additionally, it is unclear how it would be determined if a/any possible “decrease” in total power output was/would have been “avoid[ed]”, if the decrease was hypothetically avoided and thus did not occur. For example, at any instant power output could/might be hypothetically decreased, so an infinite number of hypothetical decreases in power output might be said to be avoided whenever power output might increase or might not change (e.g., when the locomotive was climbing a grade, cruising, etc. This is unclear.
In claim 1, lines 10ff, in claim 8, lines 12ff, “due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature” is indefinite and vaguely ambiguous (e.g., exceeding a threshold temperature at what time/when particularly, and a threshold temperature9 defined particularly how?)
In claim 1, line 12, and in claim 8, line 15, “different time” is vague and indefinite (e.g., different from what, particularly?) in the claim context. For example, if the trip plan is not modified but is rather e.g., “create[d]” for the first time as the claim apparently clearly permits, then what time that the vehicle group travels through the one or more geographic area is the “different time” different from, when no time is claimed for the ambient temperatures exceeding the threshold temperature?
In claim 5, lines 4ff, and in claim 12, lines 3ff, “to reduce or eliminate the likelihood of the need for derating both the first and second engines of the vehicle group within the one or more geographic regions by reducing a throttle setting of the first engine while increasing a throttle setting of the second engine . . .” is indefinite from the teachings of the specification which does not clarify the reduction or elimination of the need to derate both engines, or how such a reduction/elimination of “the likelihood” of “the need” (whatever those are) might be effected by the recited throttle setting control. Note that the claim language is repeated without clarification in published paragraph [0129].
In claim 6, lines 3ff and in claim 13, lines 3ff, “to direct a reduction . . . [in generated electric energy] to be supplanted with [onboard or off-board supplied electric energy] . . .” is indefinite and not reasonably certain from the teachings of the specification.
In claim 6, lines 4ff, and in claim 13, line 4, “the electric energy” is unclear with insufficient antecedent basis, since the previously recited electric energy was instead “generated by operation of the one or more engines” (and apparently cannot also be supplied by an onboard energy storage device or an off-board energy source, as the claim requires).
Throughout method claims 8 to 13, the use of “passive voice” is indefinite because (per MPEP 2106.03, I.), methods comprise acts or steps defining actions, and it is unclear why applicant is confusingly using passive voice in the method claims to potentially ort possibly (?) define actions, perhaps in an attempt to further limit the claims, or to obfuscate the claim scope. It is thus unclear and not reasonably certain whether the passive voice is connoting steps/acts in the claimed method, or mere conditions precedent to the method that need not be practiced in the claimed method. See MPEP 2173.02, I., “For example, if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate.”
For example, in claim 8, lines 7ff, it is unclear, due to the use of passive voice, whether “the trip plan created or modified to avoid a decrease in total power output . . .” is intended to be a step/act in the claimed method or not.
In claim 8, lines 12ff, it is unclear, due to the use of passive voice, whether “geographic areas are identified due to ambient temperatures . . .” is intended to be a step/act in the claimed method or not.
In claim 8, lines 13ff, it is unclear, due to the use of passive voice, whether “the trip plan is created or modified to direct the vehicle group to travel . . .” is intended to be a step/act in the claimed method or not.
In claim 9, lines 1ff, it is unclear, due to the use of passive voice, whether “geographic areas are identified from a prior trip . . .” is intended to be a step/act in the claimed method or not.
In claim 10, lines 1ff, it is unclear, due to the use of passive voice, whether “geographic areas are identified based on . . .” is intended to be a step/act in the claimed method or not.
In claim 12, lines 3ff, it is unclear, due to the use of passive voice, whether “the trip plan is created or modified to reduce or eliminate the likelihood of the need . . .” is intended to be a step/act in the claimed method or not.
In claim 13, lines 2ff, it is unclear, due to the use of passive voice, whether “the trip plan is created or modified to direct a reduction . . .” is intended to be a step/act in the claimed method or not.
In claim 15, lines 2ff, “to identify a geographic area in which an ambient condition requires deration of a first engine in a multi-vehicle system to avoid damaging the engine” is indefinite and not reasonable certain, being facially subjective (MPEP 2173.05(b), IV.), from the teachings of the specification. For example, how is it determined whether or not, and what does it mean that, any or all ambient conditions in a particular geographic area would “require[] deration”, without the requirement being facially subjective (e.g., “require[d]” based on what objective standard, under what other conditions of travel, from the teachings of the specification, and required in what context particularly?) and with deration being unclearly described in the specification (see published paragraph [0017] which seems to contradict published paragraph [0029], as indicated/expounded upon above at paragraph 17 of this Office action10), how is “damaging the engine” defined (e.g., perhaps to cover normal wear and tear, or perhaps to only cover some special wear and tear or some component failure, or perhaps to cover a degradation/decrease in remaining useful life, or a decrease in performance due to aging?) with reasonable certainty, and how is/can the damaging the engine “[be] avoid[ed]” by the required deration in a world necessarily marked by friction, heat, stress, decay, etc. which all cause, or can cause, engine damage? That is, no engine lasts/can last “forever” and no vehicle control system can avoid any or all engine damage. Thus, the claim is unclear.
In claim 15, lines 5ff and 7ff (two occurrences), “[to] supplant [a/the] reduction in power output by the first engine during travel through the geographic area” is unclear in the claim context which does not require that the first engine even output any power, and so it is unclear and not reasonably certain (and facially subjective) what the “reduction” would be relative to (e.g., is it relative to the immediately preceding instant, relative to an unclaimed trip plan, relative to an available or rated power output, relative to a desired/planned power output, etc.?), whether the reduction is necessarily a result of the deration or if it may be the result of something else (e.g., an engine failure, perhaps, or the simply a desired reduction in travel speed?), and how the “reduction . . . through the geographic area” would be determinable, when nothing in the claim even requires that anything/specifies that anything travels or should travel through the geographic area, or that/how power is particularly outputted in the geographic area, or specifies any baseline for power output during travel through the geographic area. Thus, the claim language is vague and indefinite.
In claim 15, lines 9ff, “due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature” is indefinite and vaguely ambiguous (e.g., exceeding a threshold temperature at what time/when particularly, and a threshold temperature11 defined particularly how?)
In claim 15, line 12, “different time” is vague and indefinite (e.g., different from what, particularly?) in the claim context. For example, if the trip plan is not modified but is rather e.g., “create[d]” for the first time as the claim apparently clearly permits, then what time that the multi-vehicle system travels through the geographic area is the “different time” different from, e.g., when no time is claimed for the ambient temperature exceeding the threshold temperature?
The “identify[ing]” in (lines 2ff of) claims 16 to 20 is similarly unclear (as indicated with respect to claim 15, lines 2ff) and not reasonably certain, being facially subjective, from the teachings of the specification.
Claim(s) depending from claims expressly noted above are also rejected under 35 U.S.C. 112 by/for reason of their dependency from a noted claim that is rejected under 35 U.S.C. 112, for the reasons given.
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 1 to 6, 8 to 13, 15, 16, and 18 to 20 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.
Step 1 and Step 2A, Prong I:
Claim(s) 1 to 6, 8 to 13, 15, 16, and 18 to 20, while (each) reciting a statutory category of invention defined in 35 U.S.C. 101 (a useful process, machine, manufacture, or composition of matter), is/are directed to an abstract idea, which is a judicial exception, the recited abstract idea being that of i) identifying one or more geographic areas (e.g., due to the ambient temperatures exceeding the threshold temperature as is now claimed) through which a vehicle group is scheduled to travel for an upcoming trip where there is an increased likelihood of a need for derating one or more engines of the vehicle group, creating or modifying a trip plan that dictates one or more operational settings of the vehicle group for one or more of different locations, distances, or times of the upcoming trip, and creating or modifying the trip plan to avoid a decrease in total power output from the vehicle group within the one or more geographic areas, or ii) identifying a geographic area (e.g., due to the ambient temperature exceeding the threshold temperature as is now claimed) in which an ambient condition requires deration of a first engine in a multi-vehicle system to avoid damaging the engine, wherein the geographic area is identified due to the geographic area including a tunnel, due to the ambient temperature or oxygen level exceeding or being less than a threshold, based on a prior trip of the multi-vehicle system or another vehicle system through the geographic area, e.g., by providing one or more processors (e.g., human brains) configured to identify one or more geographic areas through which a vehicle group is scheduled to travel for an upcoming trip where there is an increased likelihood of a need for derating one or more engines of the vehicle group, the one or more processors configured to create or modify a trip plan that dictates one or more operational settings of the vehicle group for one or more of different locations, distances, or times of the upcoming trip, the one or more processors configured to create or modify the trip plan to avoid a decrease in total power output from the vehicle group within the one or more geographic areas; wherein the one or more processors are configured to identify the one or more geographic areas from a prior trip of one or more of: (a) the vehicle group or (b) at least one other vehicle group through the one or more geographic areas where deration of: (c) the one or more engines of the vehicle group or (d) at least one other engine of the at least one other vehicle group previously occurred; wherein the one or more processors are configured to identify the one or more geographic areas based on a location of one or more airflow restricted areas; wherein the one or more airflow restricted areas include a tunnel; wherein the one or more engines of the vehicle group (as a field of use) include a first engine onboard a first vehicle of the vehicle group and a second engine onboard a second vehicle of the vehicle group, and the one or more processors are configured to create or modify the trip plan to reduce or eliminate the likelihood of the need for derating both the first and second engines of the vehicle group within the one or more geographic areas by reducing a throttle setting of the first engine while increasing a throttle setting of the second engine during travel through the one or more geographic areas; wherein the vehicle group (as a field of use) includes one or more motors powered by electric energy generated by operation of the one or more engines, and the one or more processors are configured to create or modify the trip plan to direct (as an intended use or result) a reduction in the electric energy generated by the one or more engines to be supplanted with the electric energy supplied by one or more of an onboard energy storage device or an off-board energy source during travel through the one or more geographic areas; wherein the one or more processors are configured to identify the one or more geographic areas due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature, the one or more processors configured to create or modify the trip plan to direct the vehicle group to travel through the one or more geographic areas at a different time to avoid the ambient temperatures that exceed the threshold temperature; and/or a method, comprising: identifying one or more geographic areas through which a vehicle group is scheduled to travel for an upcoming trip where there is an increased likelihood of a need for derating one or more engines of the vehicle group; creating or modifying a trip plan that dictates one or more operational settings of the vehicle group for one or more of different locations, distances, or times of the upcoming trip, the trip plan created or modified to avoid a decrease in total power output from the vehicle group within the one or more geographic areas; and (as an “apply it” type limitation recited at a high level of generality and constituting insignificant extra-solution activity not even particularly how the vehicle group is or might be controlled particularly) controlling operation of the vehicle group to move through the one or more geographic areas according to the one or more operational settings of the trip plan that is created or modified; wherein the one or more geographic areas are identified from a prior trip of one or more of: (a) the vehicle group or (b) at least one other vehicle group through the one or more geographic areas where deration of: (c) the one or more engines of the vehicle group or (d) at least one other engine of the at least one other vehicle group previously occurred; wherein the one or more geographic areas are identified based on a location of one or more airflow restricted areas; wherein the one or more airflow restricted areas include a tunnel; wherein the one or more engines of the vehicle group include a first engine onboard a first vehicle of the vehicle group and a second engine onboard a second vehicle of the vehicle group, and the trip plan is created or modified to reduce or eliminate the likelihood of the need for derating both the first and second engines of the vehicle group within the one or more geographic areas by reducing a throttle setting of the first engine while increasing a throttle setting of the second engine during travel through the one or more geographic areas; wherein the vehicle group includes one or more motors powered by electric energy generated by operation of the one or more engines, and the trip plan is created or modified to direct a reduction in the electric energy generated by the one or more engines to be supplanted with the electric energy supplied by one or more of an onboard energy storage device or an off-board energy source during travel through the one or more geographic areas; wherein the one or more geographic areas are identified due to ambient temperatures in the one or more geographic areas exceeding a threshold temperature, and the trip plan is created or modified to direct the vehicle group to travel through the one or more geographic areas at a different time to avoid the ambient temperatures that exceed the threshold temperature; and a vehicle control system, comprising: one or more processors configured to identify a geographic area in which an ambient condition requires deration of a first engine in a multi-vehicle system to avoid damaging the engine, the one or more processors configured to control one or more of (a) a second engine in the multi-vehicle system to supplant a reduction in power output by the first engine during travel through the geographic area or (b) an onboard energy storage device to power a motor and supplant the reduction in power output by the first engine during travel through the geographic area (as an “apply it” type limitation recited at a high level of generality and constituting insignificant extra-solution activity not even particularly how the vehicle group is or might be controlled particularly to supplant the reduction); wherein the one or more processors are configured to identify the geographic area due to the geographic area including a tunnel; wherein the one or more processors are configured to identify the geographic area due to an ambient temperature of the geographic area exceeding a threshold temperature; wherein the one or more processors are configured to identify the geographic area due to an oxygen level in the geographic area being less than a threshold oxygen level; wherein the one or more processors are configured to identify the geographic area based on a prior trip of the multi-vehicle system through the geographic area; and wherein the one or more processors are configured to identify the geographic area based on a prior trip of another vehicle system through the geographic area.
This abstract idea falls within the grouping(s) of mathematical concepts, mental processes, and/or certain methods of organizing human activity, distilled from case law, because I could be practically performed in the human mind as a mental process.
Step 2A, Prong II and Step 2B:
Additionally, applying a preponderance of the evidence standard, the abstract idea is not integrated (e.g., at Step 2A, Prong II) by the recitation of additional elements/limitations into a practical application (using the considerations set forth in MPEP §§ 2106.04(d), 2106.05(a)-(c) and (e)-(h)) because merely using a computer as a tool to perform an abstract idea or adding the words "apply it" (e.g., to create or modify or use a trip plan that dictates operational settings of avoids a total power output decrease, merely controlling operation of a vehicle group to move in any way through a geographical area based on any or all operational settings of a trip plan, controlling an engine to “supplant” any or all reductions in power outputs of another engine or control a storage device to power a motor and supplant the reduction, with such limitations being indefinite, etc.) is not integrating the idea into a practical application of the idea, and e.g., looking at the claim as a whole and considering any additional elements/limitations individually and in combination, no (additional) particular machine, transformation, improvement to the functioning of a computer or an existing technological process or technical field, or meaningful application of the idea, beyond generally linking the idea to a technological environment (e.g., "implementation via computers", Alice; and an environment including a vehicle group or multi-vehicle system which can travel through a geographic area) or adding insignificant extra-solution activity (e.g., controlling any operation of a vehicle group including insignificant operations according to operational settings of a trip plan, controlling an engine or motor to insignificantly “supplant” even insignificant/indefinite/unclear reductions in engine power output, etc.), is recited in or encompassed by the claims.
Moreover, applying a preponderance of the evidence standard, the claim(s) does/do not include additional elements/limitations/steps (e.g., at Step 2B) that are, individually or in ordered combination, sufficient to amount to significantly more than the judicial exception because the elements/limitations/steps are recited at a high level of generality (e.g., vehicle groups, multi-vehicle systems, engines, a motor, etc.) so as to not favor eligibility (MPEP § 2106.05(d)) and/or are used e.g., for data/information gathering only or for other activities that were well-understood, routine, and conventional activity in the industry, for example as indicated in applicant's specification at published paragraphs [0003] and [0004], with the creation, modification, and use/control of/by trip plans also being well-understood, routine, and conventional as evidenced by the literature cited with this Office action12, and moreover, the generically recited computer elements (e.g., one or more processors, etc.; see e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 110 USPQ2d 1984 (2014); buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 115 USPQ2d 1090 (Fed. Cir. 2015); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1321, 120 USPQ2d 1353, 1362; Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-1355, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016); Mobile Acuity, Ltd. v. Blippar Ltd., Case No. 22-2216 (Fed. Cir. Aug. 6, 2024); see also the 2019 PEG Advanced Module at pages 89, 145, etc.) do not add a meaningful limitation to the abstract idea because their use would be routine (and conventional) in any computer implementation of the idea.
Moreover, limiting or linking the use of the idea to a particular technological environment (e.g., a system or method having a vehicle group, a multi-vehicle system, etc. as claimed) is not enough to transform the abstract idea into a patent-eligible invention (Flook[13]) e.g., because the preemptive effect of the claims on the idea within the field of use would be broad.
Conclusion
Applicant's amendment necessitated 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 David A Testardi whose telephone number is (571)270-7876. The examiner can normally be reached Monday, Tuesday, Thursday, 8:30am - 5:30pm E.T., and Friday, 8:30 am - 12:30 pm E.T.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachid Bendidi can be reached at (571) 272-4896. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID A TESTARDI/Primary Examiner, Art Unit 3664
1 See the 2019 35 U.S.C. 112 Compliance Federal Register Notice (Federal Register, Vol. 84, No. 4, Monday, January 7, 2019, pages 57 to 63). See also http://ptoweb.uspto.gov/patents/exTrain/documents/2019-112-guidance-initiative.pptx . Quoting the FR Notice at pages 61 and 62, "The Federal Circuit emphasized that ‘‘[t]he written description requirement is not met if the specification merely describes a ‘desired result.’ ’’ Vasudevan, 782 F.3d at 682 (quoting Ariad, 598 F.3d at 1349). . . . When examining computer-implemented, software-related claims, examiners should determine whether the specification discloses the computer and the algorithm(s) that achieve the claimed function in sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as 'a finite sequence of steps for solving a logical or mathematical problem or performing a task.' Microsoft Computer Dictionary (5th ed., 2002). Applicant may 'express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.' Finisar, 523 F.3d at 1340 (internal citation omitted). It is not enough that one skilled in the art could theoretically write a program to achieve the claimed function, rather the specification itself must explain how the claimed function is achieved to demonstrate that the applicant had possession of it. See, e.g., Vasudevan, 782 F.3d at 682–83. If the specification does not provide a disclosure of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention that achieves the claimed result, a rejection under 35 U.S.C. 112(a) for lack of written description must be made. See MPEP § 2161.01, subsection I."
2 See http://www.uspto.gov/sites/default/files/documents/fnctnllnggcmptr.pptx at page 29.
3 I.e., 77 degrees Fahrenheit, per the specification.
4 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
5 See MPEP 2161.01, I. and LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) cited therein ("Whether the flaw in the specification is regarded as a failure to demonstrate that the applicant possessed the full scope of the invention recited in [the claim] or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under [§ 112(a)]").
6 See Nautilus, Inc. v. Biosig Instruments, Inc. (U.S. Supreme Court, 2014) which held, "A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." See also In re Packard, 751 F.3d 1307 (Fed.Cir.2014)(“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”) and Ex Parte McAward, Appeal No. 2015-006416 (PTAB, Aug. 25, 2017, Precedential) (“Applying the broadest reasonable interpretation of a claim, then, the Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear.”)
7 E.g., paragraph [0017] indicates reducing the throttle setting is derating the engine while paragraph [0029] indicates that lower throttle settings may avoid the need to derate the engine. The examiner understands the concept of “derating” an engine in other contexts, but derating usually relates to engine control/limitation (e.g., related to capability restriction/limitation), and not simply to a reduced throttle setting, which engine control/limitation is not apparently claimed by applicant or even clearly disclosed in this application, other than a desired result (see published paragraph [0079]).
8 The examiner understands that diesel engines do not have physical throttles, and that the power amount output by a locomotive engine is conventionally controlled by (e.g., eight) notch settings.
9 Perhaps absolute zero, freezing [32°F], etc.
10 For example, does the claimed “deration” effect some physical/real-world change of the engine’s actual/real-time performance (e.g., reduce an actual throttle/notch setting of the engine, reduce a power output of the engine, etc.?) or does the claimed “deration” only affect some hypothetical/possible performance of the engine which is never even required by the claims (e.g., how much power the engine could output upon a hypothetical request for power output being made, where the request need never occur (and the power need never be outputted) in any of the claims?) See e.g., MPEP 2173.02, I.
11 Perhaps absolute zero, freezing [32°F], etc.
12 These references were cited by the examiner previously in conjunction with parent patent application 15/918,002, now U.S. Patent 10,781,763 (of record).
13 See e.g., Bilski v. Kappos, 561 U.S. 593 ("Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable.")
Prosecution Insights