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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 25 February 2026 has been entered.
Response to Arguments
Applicant's arguments filed 25 February 2026 have been fully considered but they are persuasive only in part.
First, regarding the rejection under 35 U.S.C. 112(a), description requirement, applicant’s arguments in conjunction with the claim amendments are convincing as to claims 1, 6, 8, 13, and 15. However, applicant’s arguments and amendments are not convincing as to claims 5 and 12, since an algorithm that would reduce or eliminate “the need for derating BOTH the first and second engines” has apparently not been described in the specification, in sufficient detail.
In this respect, applicant may apparently overcome this rejection under 35 U.S.C. 112(a), description requirement, by changing (in claims 5 and 12) the phrase “the need for derating both the first and second engines” to “the need for derating engine
Second, regarding the previous rejections under 35 U.S.C. 112(b), these are largely overcome by applicant’s amendments, with suggestions made below by the examiner for correcting remaining issues.
In this respect, the examiner believes that the claim clauses at claim 1, lines 12 to 16 and at claim 8, lines 8 to 13 might be made definite in the below manner, with such an amendment, in combination with the other recited limitations in the remainder of the claim(s), providing an invention that is distinguished over the prior art of record under 35 U.S.C. 103[1][2]:
modify[ing] a trip plan to reduce a power output of a first engine of the vehicle group within the one or more geographical areas and replace the reduction in power output with increased power from another power source, thereby supplanting the reduction in power with the increased power when the increased likelihood is predicted
Third, applicant’s amendments and arguments overcome the rejection under 35 U.S.C. 101, which is withdrawn.
Accordingly, applicant’s arguments are only persuasive in part.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: antecedent basis should be provided in the specification for the new claim terminology, without adding new matter[]: “modify[] a trip plan to maintain a total power output from the vehicle group within the one or more geographic areas relative to a total power output commanded by the trip plan for the geographic area by supplanting a predicted power loss from the derating of the one or more engines” (claims 1 and 8), “modify a trip plan to control . . . to maintain a total power output of the multi-vehicle system relative to a total power output commanded by the trip plan” (claim 15), and “to cause the multi-vehicle system to operate to maintain the rated power output capability of the multi-vehicle system” (claim 15).
Claim (Specification) Objections
Claim 15 is objected to because of the following informalities: in claim 15, lines 25ff, “one or more operational setting dictated . . .” should apparently read, “one or more operational settings dictated . . .”, for grammatical correctness. Appropriate correction is required.
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 5 and 12 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 claims 5 and 12, applicant has apparently not described, in sufficient detail, by what algorithm(s)3, or by what steps or procedure, he 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. (For example, where is it described how reducing the throttle setting of a first engine would reduce or eliminate a need for derating the 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 full scope4 of the claimed invention, to those skilled in the art, but has only (if anything) described a desired result.
Claims 1 to 6, 8 to 13, 15, 16, and 18 to 20 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, line 13, in claim 8, line 10, and in claim 15, line 12, “to maintain a total power output [of the vehicle group or multi-vehicle system]’ is indefinite from the teachings of the specification which does not apparently provide context or antecedent basis for this “maintain[ing]” terminology (e.g., does maintain in this context mean that the total power output is not decreased while the vehicle travels through the area(s), that the total power output is not decreased when the trip plan is modified, or something else entirely?) (The examiner has suggested above language that might replace this language in claims 1 and 8. Claim 15 would require additional consideration with similar5 amendments appearing to be possible – the applicant may contact the examiner if the issues/path forward is/are not clear, for claim 15, in this respect.)
In claim 1, lines 14ff, and in claim 8, lines 12ff, “the geographic area” is indefinite with insufficient antecedent basis (since only “one or more geographic areas” have been previously recited), and could be changed to, “one or more geographic areas” to overcome this portion of the rejection, if such be applicant’s intent.
In claim 1, line 15, and in claim 8, line 12, “a predicted power loss from the derating” is indefinite from the teachings of the specification which apparently does not use or clarify this terminology. (The examiner has suggested above language that might replace this language.)
In claim 15, line 7, “a rated power output capability” is indefinite and unclear (e.g., a rated power output capability of what, particularly?) and could be changed to, e.g., “a rated power output capability of the first engine” (cf. published paragraph [0068] of the specification), if such be applicant’s intent.
In claim 15, lines 23ff, “to maintain the rated power output capability of the multi-vehicle system” is indefinite (e.g., as described above regarding “maintain”) with insufficient antecedent basis (since only “a rated power output capability” has been previously recited), and could perhaps be changed to, e.g., “at a total power output commanded for the multi-vehicle system”, if such be applicant’s intent.
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.
Allowable Subject Matter
Claims 1 to 4, 6, 8 to 11, 13, 15, 16, and 18 to 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David A Testardi whose telephone number is (571)270-3528. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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 e.g., published paragraphs [0079], [0080], [0097], [0099], [0103], [0131], etc. of the specification for support for e.g., such a claim amendment.
2 Such an amendment to claims 1 and 8 would apparently also require amendments to claims 5 and 12 to change “a first engine” to “the first engine”.
3 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."
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)]"). See also MPEP 2163.02.
5 Though not identical.
Prosecution Insights