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 .
INFORMATION DISCLOSURE STATEMENT
The information disclosure statements (IDS) submitted on 24 June 2024, 01 October 2025, 05 November 2025, 05 February 2026, and 29 April 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner herein.
CLAIM STATUS
Claims 1-15 were originally filed.
Claims 1-15 were canceled by the preliminary amendment filed 01 April 2024.
Claims 16-33 were added by the preliminary amendment filed 01 April 2024.
Claims 16-33 are currently pending and have been examined herein.
INITIAL REMARKS
Applicant is reminded that in order to be entitled to reconsideration or further examination, the Applicant or patent owner must reply to the Office action. The reply by the Applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner' s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims, be held in abeyance until allowable subject matter is indicated. The Applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Should the Applicant believe that a telephone conference would expedite the prosecution of the instant application, Applicant is invited to call the Examiner.
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.
Claims 16-33 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, for failing to be fully enabled by the Applicant’s Specification.
Re claim 16, because the Specification, while being enabling for the following limitations:
A wheel testing system adapted for testing a wheel of a railroad vehicle, the wheel testing system comprising:
a first testing device including a rail on which a test wheel rolls;
a second testing device including a rail wheel that rotates together with the test wheel while being in contact with the test wheel; and
it does not reasonably provide enablement for the full scope of these limitations:
a test data processing device that processes pieces of test data of μ-S characteristics obtained by the first testing device and the second testing device,
wherein the test data processing device converts a test result by the second testing device into a test result by the first testing device based on the test result by the first testing device and the test result by the second testing device.
In other words, the Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. More specifically, the following factors were considered by the Examiner and support the determination that Applicant’s claimed invention is not fully enabled:
(A) The breadth of the claims – due to the largely mathematical nature of the invention, the breadth of the claims is nearly infinite, weighing against full enablement
(B) The nature of the invention – the nature of the invention is directed toward the mathematical processing rail wheel testing data, thus weighing against full enablement
(C) The state of the prior art – relatively limited, weighing against full enablement
(D) The level of one of ordinary skill – relatively high given the advanced mathematics, thus weighing in favor of full enablement
(E) The level of predictability in the art – due to the immense scope of the possible mathematical manipulations, it weighs against full enablement
(F) The amount of direction provided by the inventor – the Applicant discloses a single algorithm for “processing” the test data, however, due to the large breadth of the claimed invention, more disclosure is required to sufficiently enable the full scope
(G) The existence of working examples – no working examples, thus weighing against full enablement
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure – due to the large breadth of the claimed invention, a large amount of experimentation would be needed to make or use the invention’s full scope
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.
Claims 16-33 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.
Re claim 16, Applicant recites the feature, “pieces of test data of µ-S characteristics”. However, while Applicant has disclosed separate equations for µ and S separately, Applicant has not disclosed what constitutes a µ-S characteristic, only how it is measured. Due to the largely mathematical nature of this feature and the lack of sufficient disclosure, the Examiner is unable to ascertain the scope of this feature. Accordingly, it is indefinite and appropriate correction is required.
Further re claim 16, Applicant recites the feature, “test data processing device converts…”. Similarly, due to the largely mathematical nature of this feature and the lack of sufficient disclosure, the Examiner is unable to ascertain the scope of this feature. Accordingly, it is indefinite and appropriate correction is required.
Re claims 17-33, Applicant recites limitations respectively dependent from claim 16, but that fail to cure the deficiencies discussed in the rejection above. Accordingly, claims 17-33 are rejected based at least on the same reasons applied to claim 16.
Re claim 18, Applicant recites the features, “slow speed” and “which is difficult to conduct…”, which are relative terms that render the claim indefinite. In particular, such limitation is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of its scope. Thus, appropriate correction is required.
Re claims 31-33, Applicant recites limitations respectively dependent from claim 18, but that fail to cure the deficiencies discussed in the rejection above. Accordingly, claims 31-33 are rejected based at least on the same reasons applied to claim 18.
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 16-21 and 31-33 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Following the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (89 FR 58128 and MPEP § 2106, hereinafter 2024 GUIDANCE), the claim(s) appear to fall into one of the enumerated statutory categories and recites at least one judicial exception, as explained in the Step 2A, Prong I analysis below. Furthermore, the judicial exception(s) does/do not appear to be integrated into a practical application as explained in the Step 2A, Prong II analysis below. Further still, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception(s) as explained in the Step 2B analysis below.
STEP 2A, PRONG I:
Step 2A, prong I, of the 2024 GUIDANCE, first looks to whether the claimed invention recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes).
Re claim 16, Applicant recites the following limitations:
a test data processing device that processes pieces of test data of μ-S characteristics obtained by the first testing device and the second testing device, wherein the test data processing device converts a test result by the second testing device into a test result by the first testing device based on the test result by the first testing device and the test result by the second testing device
These steps are directed to a mathematical concept, such as determining a mathematical relationship or performing a mathematical calculation. The 2024 GUIDANCE expressly recognizes such mathematical relationships and calculations as constituting patent-ineligible abstract ideas. Accordingly, these limitations can reasonably be characterized as reciting a patent-ineligible abstract idea.
STEP 2A, PRONG II:
Step 2A, prong II, of the 2024 GUIDANCE, next analyzes whether the claimed invention recites additional elements that individually or in combination integrate the judicial exception into a practical application. In particular, the 2024 GUIDANCE identifies various considerations indicative of whether an additional element or combination of elements integrate the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field.
Re claim 16, in addition to reciting the above-noted abstract idea(s), the judicial exception recited in the claim is not integrated into a practical application because the additional elements recited, namely “A wheel testing system adapted for testing a wheel of a railroad vehicle, the wheel testing system comprising: a first testing device including a rail on which a test wheel rolls; a second testing device including a rail wheel that rotates together with the test wheel while being in contact with the test wheel”, fail to sufficiently integrate the judicial exception into a practical application. Specifically, these additional elements merely reflect insignificant extra-solution activity. An example such activity is a step of gathering data for use in a claimed process. Here, the “first testing device” and “second testing device” merely represent generic tools for data gathering. Furthermore, nothing in the claim reasonably indicates that anything other than a generic computer (i.e., “computer processor”) needs to be used to carry out the abstract idea.
STEP 2B:
Step 2B of the 2024 GUIDANCE, next analyzes whether the claimed invention adds any specific limitations beyond the judicial exception that, either alone or as an ordered combination, amount to more than “well-understood, routine, conventional” activity in the field.
Re claim 16, the additional limitation(s) recited above only generally link the judicial exception to a particular technological field. Furthermore, these additional elements do not appear to be sufficient to amount to significantly more than the judicial exception because they again merely reflect insignificant extra-solution activity (i.e., data gathering) while only generally linking the judicial exception to a particular technological field (i.e., rail wheel testing). Further still, this/these additional limitation(s) does/do not, as an ordered combination, amount to more than “well-understood, routine, conventional” activity in the field.
Accordingly, claim 16 is rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter for at least these reasons.
Re claims 17-21 and 31-33, these claims do not cure the deficiencies noted above with regard to claim 16, from which they depend, as they merely add further mathematical processing steps and/or other extra-solution activity. Accordingly, they are rejected under the same or substantially similar analysis, as outlined above.
CLAIM REJECTIONS - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 16-33 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Lee et al., KR20200049140A (hereinafter “LEE”).
Re claim 16, LEE discloses a wheel testing system adapted for testing a wheel of a railroad vehicle [Fig.1 and associated text], the wheel testing system comprising:
a first testing device including a rail on which a test wheel rolls [Fig.1/120];
a second testing device including a rail wheel that rotates together with the test wheel while being in contact with the test wheel [Fig.1/130]; and
a test data processing device that processes pieces of test data of μ-S characteristics obtained by the first testing device and the second testing device [Fig.1/170], [pp.3-4],
wherein the test data processing device converts a test result by the second testing device into a test result by the first testing device based on the test result by the first testing device and the test result by the second testing device [Fig.1/170], [pp.3-4]
Re claim 17, LEE discloses the system of claim 16, as shown above. LEE further discloses wherein the test data processing device:
compares the test result by the first testing device with the test result by the second testing device; determines, based on a result of the comparison, a correction formula for converting the test result by the second testing device into the test result by the first testing device [pp.3-5]; and
converts the test result by the second testing device into the test result by the first testing device using the correction formula [pp.3-5]
Re claim 18, LEE discloses the system of claim 17, as shown above. LEE further discloses wherein the test data processing device:
determines the correction formula based on the test results by the first testing device and the second testing device within a first speed range being a slow speed range within which the test can be performed with both the first testing device and the second testing device [pp.3-5]; and
converts the test result by the second testing device within a second speed range being a high-speed range faster than the first speed range into the test result by the first testing device within the second speed range using the correction formula, wherein the second speed range is a speed range within which it is difficult to conduct the test with the first testing device [pp.3-5]
Re claim 19, LEE discloses the system of claim 17, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by regression analysis of a curve of an error between the μ-S characteristic by the second testing device and the μ-S characteristic by the first testing device [pp.3-5]
Re claim 20, LEE discloses the system of claim 19, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by the regression analysis with a slip ratio S as an explanatory variable and a friction coefficient error μ2-μ1 as an objective variable, where μ1 is a friction coefficient measured by the first testing device, and μ2 is a friction coefficient measured by the second testing device [pp.3-5]
Re claim 21, LEE discloses the system of claim 17, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by a regression analysis with a slip ratio S as an explanatory variable and a friction coefficient ratio μ1/μ2 as an objective variable, where μ1 is a friction coefficient measured by the first testing device, and μ2 is a friction coefficient measured by the second testing device [pp.3-5]
Re claim 22, LEE discloses the system of claim 16, as shown above. LEE further discloses wherein the first testing device includes: a carriage that rotatably holds the test wheel and is capable of traveling along the rail with the test wheel in contact with the rail; and test wheel driver that drives the test wheel, wherein the test wheel driver includes: rotational motion supplying mechanism that supplies a rotational motion of a rotation speed corresponding to a speed of the carriage; and a slip ratio control device that controls a slip ratio between the rail and the test wheel by changing a phase of the rotational motion supplied from the rotational motion supplying mechanism [Fig.1 and associated text]
Re claim 23, LEE discloses the system of claim 16, as shown above. LEE further discloses wherein the first testing device includes: a carriage that rotatably holds the test wheel and is capable of traveling along the rail with the test wheel in contact with the rail; and test wheel driver that drives the test wheel, wherein the test wheel driver includes: rotational motion supplying mechanism that supplies a rotational motion of a rotation speed corresponding to a speed of the carriage; and torque generator that generates a predetermined torque to be applied to the test wheel by changing a phase of the rotational motion supplied from the rotational motion supplying mechanism [Fig.1 and associated text]
Re claim 24, LEE discloses the system of claim 16, as shown above. LEE further discloses wherein the second testing device includes: a rail wheel support part that rotatably supports the rail wheel; a wheel support part that rotatably supports the test wheel such that the test wheel is in contact with the rail wheel; a first electric motor that rotates the rail wheel and the test wheel; and a slip ratio control device that controls a slip ratio between the test wheel and the rail wheel, wherein the slip ratio control device includes: a rotating frame rotationally driven by the first electric motor; and a second electric motor attached to the rotating frame, wherein at least one of the rail wheel and the test wheel is connected to the first electric motor via the slip ratio control device [Fig.1 and associated text]
Re claim 25, LEE discloses the system of claim 24, as shown above. LEE further discloses wherein the slip ratio control device includes a speed reducer that reduces rotation output by the second electric motor, wherein a speed reduction ratio of the speed reducer is within a range of 45/1 to 120/1 [pp.3-5]
Re claim 26, LEE discloses the system of claim 16, as shown above. LEE further discloses wherein the second testing device includes: a rail wheel support part that rotatably supports the rail wheel; a wheel support part that rotatably supports the test wheel such that the test wheel is in contact with the rail wheel; a first electric motor that rotates the rail wheel and the test wheel; and a torque generator that controls a slip ratio between the test wheel and the rail wheel, wherein the torque generator includes: a rotating frame that is rotationally driven by the first electric motor; and a second electric motor attached to the rotating frame, wherein at least one of the rail wheel and the test wheel is connected to the first electric motor via the torque generator [Fig.1 and associated text]
Re claim 27, LEE discloses the system of claim 26, as shown above. LEE further discloses wherein the torque generator includes a speed reducer that reduces rotation output by the second electric motor, wherein a speed reduction ratio of the speed reducer is within a range of 45/1 to 120/1 [pp.3-5]
Re claim 28, LEE discloses the system of claim 24, as shown above. LEE further discloses wherein the second testing device is configured to be controllable in accordance with a procedure including: a fist step of controlling driving of the second electric motor so that no load is applied to the test wheel; after the first step, a second step of controlling driving of the second electric motor so that a predetermined torques is applied to the test wheel; and after the second step, a third step of controlling driving of the second electric motor so that no load is applied to the test wheel, wherein the first step includes a step of controlling driving of the first electric motor so that a rotation speed of the rail wheel increases up to a predetermined value, and wherein the third step includes a step of controlling driving of the first electric motor so that the rotation speed of the rail wheel decreases and the rail wheel stops rotating [pp.3-5]
Re claim 29, LEE discloses the system of claim 24, as shown above. LEE further discloses wherein an inertia moment of a rotating part of the second electric motor is 0.01kg·m2 or less [pp.3-5]
Re claim 30, LEE discloses the system of claim 24, as shown above. LEE further discloses including a transmission capable of shifting gears for the rotation output by the first electric motor [pp.3-5]
Re claim 31, LEE discloses the system of claim 18, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by regression analysis of a curve of an error between the μ-S characteristic by the second testing device and the μ-S characteristic by the first testing device [pp.3-5]
Re claim 32, LEE discloses the system of claim 31, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by the regression analysis with a slip ratio S as an explanatory variable and a friction coefficient error μ2-μ1 as an objective variable, where μ1 is a friction coefficient measured by the first testing device, and μ2 is a friction coefficient measured by the second testing device [pp.3-5]
Re claim 33, LEE discloses the system of claim 18, as shown above. LEE further discloses wherein the test data processing device determines the correction formula by a regression analysis with a slip ratio S as an explanatory variable and a friction coefficient ratio μ1/μ2 as an objective variable, where μ1 is a friction coefficient measured by the first testing device, and μ2 is a friction coefficient measured by the second testing device [pp.3-5]
RELEVANT PRIOR ART
The Examiner would like to make Applicant aware of prior art references, not relied upon in this action, but pertinent to Applicant’s disclosure. They are as follows:
JP2023031374A, Hondo – processing device processing lateral force measurement data acting between wheel and rails of a railway vehicle
DE102012013525B4, Fischer et al. – testing device for a test wheel set for a rail vehicle
US20170059452A1, Fischer et al. – test stand for rail vehicle wheel set
DE102012108706B3, Koch et al. – testing device for rail wheels
WO2013040148A2, Cuttino – tire testing system
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M HAMMOND III whose telephone number is 571-272-2215. The Examiner can normally be reached on Monday-Friday 0800-1700.
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, Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. For more information about the PAIR system, see: https://ppair-my.uspto.gov/pair/PrivatePair.
Respectfully,
/Thomas M Hammond III/Primary Examiner, GAU 2855
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