William Cherrick. Schoonmaker et al.

Patent Trials and Appeals Board

Nov 21, 2019

14161747 - (D) (P.T.A.B. Nov. 21, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/161,747 01/23/2014 William Cherrick Schoonmaker 268790-2 (552-206US) 2358
91959 7590 11/21/2019
The Small Patent Law Group, LLC
225 S. Meramec, Suite 725
St. Louis, MO 63105
EXAMINER
TUNGATE, SCOTT MICHAEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/21/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Docket@splglaw.com
TransportationPatentCorrespondence@ge.com
john.kramer1@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM CHERRICK SCHOONMAKER,
DAVID ALLEN ELDREDGE,
JARED KLINEMAN COOPER, JOHN WELSH McELROY,
and TIMOTHY ROBERT BROWN
____________________

Appeal 2018-0005860
Application 14/161,7471
Technology Center 3600
____________________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 4, 6–11, 13, 15–20, and 22, which are all of
the claims pending in this application. Appellant canceled claims 2, 5, 12,
14, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as General
Electric Company. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention is directed generally to a
system for simulating performance of a mission over a route by a vehicle
using route and vehicle information. Spec. ¶ 27.2
Claims 1, 6, and 15 are independent claims. Claim 1 is representative
of the subject matter on appeal and reads as follows (with format changes
and paragraph lettering added):
1. A system comprising at least one processor
configured to:
[a] simulate performance of a first mission over at least
one route by a first vehicle, the at least one route comprising a
track including one or more rails configured for passage thereon
by a rail vehicle, the at least one processor configured to simulate
the performance of the first mission using route information
corresponding to one or more characteristics of the at least one
route and vehicle information corresponding to one or more
characteristics of the first vehicle, the at least one processor
configured to determine performance characteristics for the first
mission, the performance characteristics comprising at least one
fuel usage characteristic evaluated for plural sections of the at
least one route;
[b] provide a fuel efficiency map describing fuel usage
along at least a portion of the at least one route using the
performance characteristics;

2 Our Decision refers to the Final Office Action mailed June 29, 2017
(“Final”) and Advisory Action mailed September 29, 2017 (“Advisory”);
Appellant’s Appeal Brief filed January 22, 2018 (“Appeal Br.”) and Reply
Brief filed May 17, 2018 (“Reply Br.”); the Examiner’s Answer mailed
March 19, 2018 (“Ans.”); and the original Specification filed January 23,
2014 (“Spec.”).

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[c] determine at least one rail wear characteristic resulting
for the first mission based at least on the at least one fuel usage
characteristic; and
[d] control tractive efforts of at least one of the first vehicle
or one or more other vehicles, while said at least one of the first
vehicle or the one or more other vehicles actually travel over the
at least one route, said control based at least in part on at least
one of the fuel efficiency map or the at least one rail wear
characteristic.
Appeal Br. 27 (Claims App.).

Rejections on Appeal3
1. Claims 1, 3, 4, 6–11, 13, 15–20, and 22 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final 12–
15.
2. Claims 1, 3, 4, 6–11, 13, 15–20, and 22 stand rejected under 35
U.S.C. § 103 as being unpatentable over Sujan et al. (US 2012/0239588 A1;
Sept. 20, 2012) (“Sujan”) and Kumar et al. (US 2010/0023190 A1; Jan. 28,
2010) (“Kumar”). Id. at 15–27.

ANALYSIS
I. Section 101 Rejection
A. Applicable Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and

3 The Examiner also rejected claims 3, 4, 6–11, and 13 under 35 U.S.C.
§ 112(b), as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. Final 11–12. However, the Examiner withdrew this
rejection. Ans. 3.
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useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites one of the abstract ideas listed in the Revised Guidance
(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
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determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we first analyze whether claim 1 is
directed to an abstract idea.4
B. Abstract Idea
The Examiner determines that the claims are directed to an abstract
idea. Final 13–14. In particular, the Examiner determines claims 1, 6, and 15
“are directed to the abstract idea of obtaining performance information,
analyzing it and displaying certain results of the collection and analysis” and
are “described by . . . obtaining information, performing a simulation,
determining performance characteristics, determining wear characteristics,
and providing a fuel efficiency map.” Id. at 13. The Examiner explains that,
these claims recite limitations “similar to the idea of collecting information,
analyzing it, and displaying certain results of the collection and analysis
found by the courts to be abstract in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016).” Id. at 14.
Appellant contends that claim 1 is directed not to an abstract idea
itself or the mere obtaining of performance characteristics, but instead to
“the control of tractive efforts of a vehicle.” Appeal Br. 15, see id. at 11–16;

4 Appellant argues claim 1 as representative of all the pending claims
(hereinafter “the claims”). See Appeal Br. 9–16.
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Reply Br. 4–5. More specifically, Appellant argues the Examiner’s analysis
under Step 2A of the Alice/Mayo framework ignores the control-related
limitations of claim 1, which “expressly and particularly recite[] . . . the
control of a vehicle based at least in part on at least one of a fuel efficiency
map or at least one rail wear characteristic.” Appeal Br. 12. According to
Appellant, “controlling tractive efforts of a vehicle while the vehicle travels
over a route as fully set forth by Claim 1 . . . . is a physical activity, not an
abstract idea.” Reply Br. 4; see also Appeal Br. 11.
The Examiner responds that although the “claims may recite a
physical control operation . . . , not every claim that recites concrete,
tangible components escapes the reach of the abstract-idea inquiry.” Final 3
(quoting In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016)). In that regard, the Examiner cites several cases where the
Federal Circuit concluded claims were directed to patent-ineligible abstract
ideas despite reciting physical elements, such as a scanner, interface,
network, database, or playing cards. Id. at 3–4 (citing Alice, 573 U.S. at
225–26); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Mortg. Grader, Inc. v.
First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016); In re
Smith, 815 F.3d 816, 819 (Fed. Cir. 2016). Thus, in the Examiner’s view,
that “claims [are] necessarily performed in the physical rather than the
conceptual realm . . . is beside the point.” Ans. 4 (citing Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1373 (Fed. Cir.
2017)).
Appellant responds that “[i]n contrast to the cases listed by the Final
Office Action, the present claims are not limited to computer-related
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elements such as a network or database, but instead relate, among other
things, to the physical movement of a vehicle along a track.” Appeal Br. 13–
14.
1. USPTO Step 2A, Prong One
Beginning with Prong One of the first step of Alice, we must
determine “whether the claims at issue are directed to one of those patent-
ineligible concepts,” including the abstract ideas enumerated in the Revised
Guidance. Alice, 573 U.S. at 217. One of the subject matter groupings
identified as an abstract idea in the Revised Guidance is “mental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” See Revised Guidance, 84 Fed. Reg. at 52,
53. The Revised Guidance explains that “mental processes” include acts that
people can perform in their minds or using pen and paper, even if the claim
recites that a generic computer component performs the acts. See id. at 52
n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Limitations [a] and [c] of claim 1 recite steps that “simulate
performance of a first mission over at least one route by a first vehicle . . .
using route information . . . and vehicle information . . . to determine
performance characteristics for the first mission . . . comprising at least one
fuel usage characteristic . . . [and] determine at least one rail wear
characteristic resulting for the first mission based at least on the at least one
fuel usage characteristic.” Considered together, these limitations recite the
concept of simulating performance of an activity by determining
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performance and activity information—i.e., evaluation that could be
performed in the human mind or with pen and paper. Accordingly,
consistent with our Office Guidance and case law, we determine that
limitations [a] and [c] of claim 1 recite a mental process and, thus, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52; see also, e.g., Papst
Licensing GmbH & Co. KG v. Xilinx Inc., 193 F.Supp.3d 1069, 1084, 1090–
91 (N.D. Cal. 2016), aff’d, 684 F. App’x 917 (Fed. Cir. 2017) (concluding
claims reciting “the use of a simulator to determine whether a memory test
violates a set of rules” as “capable of being performed mentally or with
pencil and paper” and, thus, drawn to an abstract idea); Vehicle Intelligence
& Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App’x 914, 916–17 (Fed.
Cir. 2015) (concluding claims that “screen equipment operators for
impairment, selectively test those operators, and control the equipment if an
impairment is detected . . . . are drawn to a patent-ineligible concept,
specifically the abstract idea of testing operators of any kind of moving
equipment for any kind of physical or mental impairment”).
In view of the foregoing, we determine that claim 1 recites an abstract
idea in the “mental processes” grouping, pursuant to the Revised Guidance.
See Revised Guidance, 84 Fed. Reg. at 52. Thus, we determine that claim 1
recites an abstract idea.
With respect to Appellant’s argument that the Examiner
“overgeneralizes the claim language, which is much more tailored and
specific than the mere obtaining, analyzing, and displaying,” we do not
agree. Appeal Br. 11, see also id. at 15–16 (disputing the Examiner’s
characterization of the claims as “allowing a train to go faster downhill” in
the Advisory Action); Reply Br. 7–8. Rather, the Examiner identifies and
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considers the underlying steps of claim 1 as a basis for describing and
explaining the abstract idea. Final 12–14. For example, in the Final Office
Action, having identified the recited abstract idea, the Examiner explains
that “the concept of ‘obtaining performance information, analyzing it and
displaying certain results of the collection and analysis,’ is described by the
obtaining information, performing a simulation, determining performance
characteristics, determining wear characteristics, and providing a fuel
efficiency map.” Id. at 13–14. The Examiner further explains in the Answer
how the identified abstract idea maps to the particular limitations of the
claims. Ans. 5–6, see also id. at 11 (“although Appellant submits that the
claimed subject matter is not as general as the identified abstract idea, the
elements identified by Appellant merely add a degree of particularity to the
underlying abstract idea.”). The Examiner’s approach is consistent with
Supreme Court and Federal Circuit precedent, which support reasonably
synthesizing the claim language when identifying a recited abstract idea.
See, e.g., Bilski, 561 U.S. at 611 (“Claims 1 and 4 in [P]etitioners’
application explain the basic concept of hedging, or protecting against risk
. . . . The concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea, just like
the algorithms at issue in Benson and Flook.”); Alice, 573 U.S. at 218–219;
Smart Sys. Innovations, 873 F.3d at 1371 n.8 (concluding that the district
court did not err in determining that claims covered the abstract concept of
paying for a subway or bus ride with a credit card: “[t]he District Court
here, as we have instructed, looked to the language of the claims to discern
the character of the patent.”). Those claim elements not addressed while
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identifying the recited abstract idea have been addressed as additional
limitations in Step 2A, Prong Two or Step 2B of the § 101 analysis.
Additionally, contrary to Appellant’s argument that the Examiner’s
Step 2A analysis ignores the control-related limitations of claim 1 (Appeal
Br. 12), the Examiner directly addresses these limitations by explaining that,
although the “claims may recite a physical control operation . . . , not every
claim that recites concrete, tangible components escapes the reach of the
abstract-idea inquiry.” Final 3–4; Ans. 4; see also Revised Guidance, 84
Fed. Reg. 52 n.14. Moreover, claim 1’s control-related limitations are not
part of the recited abstract idea, but instead are additional limitations
addressed in further detail in Step 2A, Prong Two and Step 2B of the § 101
analysis.
2. USPTO Step 2A, Prong Two
Because we determine that claim 1 recites an abstract idea, we turn to
Prong Two of Step 2A of the Alice/Mayo framework analysis and consider
whether claim 1 integrates this abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether
there are any additional elements beyond the abstract idea that, individually
or in combination, “integrate the [abstract idea] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.”5 Id. at 54–55.

5 We acknowledge that some of these considerations may be properly
evaluated under step two of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate them under step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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As an initial matter, claim 1 additionally recites limitation [b], which
“provide[s] a fuel efficiency map describing fuel usage along at least a
portion of the at least one route using the performance characteristics.” We
note that this limitation, along with limitation [a]’s implied collection of
route information and vehicle information, recite the type of extra-solution
activity (i.e., in addition to the judicial exception) the courts have
determined insufficient to transform judicially excepted subject matter into a
patent-eligible application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55, 55
n.31; see Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp.
2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687 F.3d 1266 (Fed. Cir. 2012)
(explaining that “storing, retrieving, and providing data . . . are
inconsequential data gathering and insignificant post solution activity”);
Bilski v. Kappos, 561 U.S. 593, 612 (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power Grp.,
830 F.3d at 1355 (explaining that “selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes”).
Claim 1 additionally requires “a system comprising at least one
processor configured to,” as recited in the preamble, and limitation [d],
which recites that the processor is configured to
control tractive efforts of at least one of the first vehicle or one
or more other vehicles, while said at least one of the first
vehicle or the one or more other vehicles actually travel over
the at least one route, said control based at least in part on at
least one of the fuel efficiency map or the at least one rail wear
characteristic.
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The Examiner determines that “[t]here is no indication that the
combination of [claimed] elements improves the functioning of a computer
or improves any other technology. Their collective functions merely provide
conventional computer implementation.” Final 15. The Examiner explains
that the claims “do not recite a technical solution to a technical problem” and
“do not offer an improvement in computer technology similar to the claims
found eligible” in Bascom6 and Amdocs,7 but rather are limited to
“improvements to the performance of the abstract idea itself.” Ans. 10–11.
The Examiner further explains that claim 1 does not recite a specific means
or method that improves the relevant technology, but instead merely recites
“a result because the claim broadly requires that the control is ‘based on’ the
fuel efficiency map rather than describing what the control actually is or
how the control is done.” Final 4.
Appellant argues
the control of a vehicle as recited in the independent claims . . .
is not merely a result or effect of the abstract idea (e.g., the
obtaining, analyzing, or displaying of performance information
as asserted by the Office Action), but instead relates to specific
improvements in relevant technology, such as the improved use
or control of a vehicle traversing a route.
Appeal Br. 14–15.
We are not persuaded by Appellant’s arguments. Instead, we agree
with the Examiner that the claims do not recite an improvement in the
functioning of a computer or other technology or technological field. See

6 Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016)
7 Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300–01 (Fed.
Cir. 2016)
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Final 4, 15; Ans. 10–11. We see nothing in claim 1 or the Specification that
suggests a technological advance or improvement. Appellant has failed to
demonstrate that the operations of claim 1 invoke any asserted inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is performed using other than generic computer components. Nor
has Appellant demonstrated that the vehicle of claim 1 or the control of its
tractive efforts is a meaningful limitation beyond generally linking the use of
the abstract idea to a particular technological environment. Appellant asserts
that the control of a vehicle as claimed amounts to the improved use or
control of a vehicle traversing a route, but limitation [d] of claim 1 merely
recites control of a travelling vehicle’s tractive efforts based on one of a fuel
efficiency map or a rail wear characteristic. Further, the portions of the
Specification that discuss vehicle control do not provide any specificity as to
how the vehicle is to be controlled based on a fuel efficiency map or rail
wear characteristic. See, e.g., Spec. ¶¶ 4, 15, 28, 42, 64, and 69. In other
words, Appellant does not persuade us that the vehicle or its control based
on a fuel efficiency map or a rail wear characteristic represents a
technological advance or improvement over conventional vehicle control
systems. Accordingly, the additional elements of claim 1 do not integrate the
recited abstract idea into a practical application. See Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this case,
the claims are directed not to an improvement in cellular telephones but
simply to the use of cellular telephones as tools in the aid of a process
focused on an abstract idea. That is not enough to constitute patentable
subject matter.”); Revised Guidance, 84 Fed. Reg. at 55 (explaining that
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courts have identified “merely us[ing] a computer as a tool to perform an
abstract idea” as an example of when a judicial exception may not have been
integrated into a practical application).
Thus, consistent with the Examiner’s determinations, and in view of
Appellant’s Specification, we determine that claim 1 does not integrate the
judicial exception into a practical application. In particular, we determine
that claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B – Inventive Concept
We now consider whether claim 1 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” Revised Guidance, 84
Fed. Reg. at 56. “Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
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determination.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018).
The Examiner determines
that the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements amount to nothing
more than a generic computer performing generic computer
function. The claims recite a generic computer performing
generic computer function by reciting a tangible and non-
transitory computer readable medium, and one or more
processors. The claims recite generic computer functions by
reciting receiving, processing, and displaying information. The
claims recite well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality by controlling the vehicle.
Final 14.
Appellant argues that the additional elements of claim 1 are not
well-understood, routine, and conventional at least because “the control of
the vehicles is performed using the wear characteristics and/or fuel
efficiency aspects recited by the claims, which are not well-understood,
routine or conventional.” Appeal Br. 13.
The Examiner finds that the control elements recited in the claims and
specification are generic in view of paragraphs 15, 42, and 64 of the
Specification. Ans. 4 (citing Spec. ¶¶ 15, 42, and 64). The Examiner
explains that the claims are similar to those in Smart Sys. Innovations, which
related to the control of a turnstile in a transit system, but were found
patent-ineligible because the turnstile was generic and the claims were
directed to the collection, storage, and recognition of data, i.e., an abstract
idea. Id. at 6–7 (citing Smart Sys. Innovations, 873 F.3d at 1372), see also id.
at 9.
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Appellant responds that “the Examiner’s Answer does not provide any
of the four allowable ways of establishing that limitations are ‘well-
understood, routine, or conventional,’” pursuant to Berkheimer and the
guidelines8 issued thereafter by the USPTO. Reply Br. 7. Appellant argues
that “a mere assertion that the controls are ‘generic’ or somehow not novel is
not enough to properly support a finding that the limitations are
conventional, well-understood, or routine.” Id. at 6.
Appellant’s arguments do not persuade us that the Examiner errs. As
an initial matter, the Examiner’s determinations that the additional
computing elements are “well-understood, routine, and conventional” is
amply supported by, and fully consistent with, the Specification, which
describes Appellant’s invention in a manner that requires no more than a
general-purpose computer with generic computing elements. Spec. ¶¶ 4, 7,
70, 75–78. Additionally, contrary to Appellant’s arguments, the Examiner
provides sufficient evidence from the Specification to show that the control
elements of the claim are no more than well-understood, routine, and
conventional. Ans. 4 (citing Spec. ¶¶ 15, 42, and 64). And as discussed
above, the Specification does not provide any specificity as to how the
vehicle is to be controlled based on a fuel efficiency map or rail wear
characteristic. See, e.g., Spec. ¶¶ 4, 15, 28, 42, 64, and 69.
Further, Appellant has not established that the instant patent eligibility
inquiry contains an underlying issue of fact. It is true that the court
in Berkheimer held that “[t]he patent eligibility inquiry may contain

8 See Robert W. Bahr, Changes in Examination Procedures Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.), USPTO 1–5 (2018) (“Berkheimer Memo”).
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underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting Mortgage
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d at 1325 (“[T]he
§ 101 inquiry ‘may contain underlying factual issues.’”)). The court also
held, however, that “[w]hen there is no genuine issue of material
fact regarding whether the claim element or claimed combination is well-
understood, routine, [and] conventional to a skilled artisan in the relevant
field, this issue can be decided on summary judgment as a matter of law.”
Id. at 1368 (emphasis added). Here, although Appellant asserts that certain
limitations have not been shown as well-understood, routine, and
conventional, Appellant does not explain specifically why these limitations
are not well-understood, routine, and conventional, nor does Appellant
identify any passages from the Specification that support their assertions.
See Appeal Br. 13; Reply Br. 6–7. Thus, the record fails to show that any
factual issues exist regarding a claim element’s well-understood, routine, or
conventional nature in light of Berkheimer.
In view of the foregoing, considering claim 1 as a whole, we
determine that the additional elements recited in claim 1 do not provide “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field.” Revised Guidance,
84 Fed. Reg. at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56. Accordingly, we agree with the Examiner that claim 1 does not
have an inventive concept.

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4. Conclusion
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under § 101 of independent claims 6 and 15, and the
Examiner’s rejection under § 101 of dependent claims 3, 4, 7–11, 13, 16–20,
and 22, which are not separately argued.

II. Section 103 Rejection
A. Claims 1, 4, 6–11, and 15–20
We have reviewed the Examiner’s rejection of claims 1, 4, 6–11, and
15–20 as unpatentable under 35 U.S.C. § 103 over the combination of Sujan
and Kumar, and are not persuaded the Examiner has erred. Unless otherwise
noted, with respect to the rejection of these claims under 35 U.S.C. § 103,
we adopt as our own the findings and reasons set forth by the Examiner in
the Office Action from which this appeal is taken (Final 16–27), and in the
Examiner’s Answer (Ans. 13–19), and we concur with the conclusions
reached by the Examiner. Appellant proffers several contentions as to why
the claims are not obvious in light of the cited prior art references. See
Appeal Br. 18–24; see also Reply Br. 9–12. We are not persuaded by any of
these arguments for the reasons provided below.
We begin our analysis with a brief overview of the Kumar reference.
Kumar is directed generally to a system for determining and implementing
an operating strategy for a train such that the train’s operations may be
monitored and controlled in order to improve performance while satisfying
schedule and speed constraints. Kumar ¶ 36. In a disclosed embodiment, the
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system monitors and controls speed, acceleration, and deceleration,
especially in curves and track switches, to minimize a train’s wheel wear and
track wear. Id. According to Kumar, various equations may be employed to
minimize a train’s wheel and track wear, as well as its fuel consumption. See
id. ¶¶ 55–65. For example, total fuel consumption F may be minimized
based on the train’s notch (throttle) command input over time u(t):
min
𝑢𝑢(𝑡𝑡)
� 𝐹𝐹�𝑢𝑢(𝑡𝑡)�𝑑𝑑𝑡𝑡
𝑇𝑇𝑓𝑓
0
. See id. ¶ 58. In addition, the train’s total wear rate L—
“proportional to the combined loss rate of wheel and rail wear in (mm3) of
material at location x moving a [sic] speed v at time t”—may be minimized
based in part on u(t): min
𝑢𝑢(𝑡𝑡)
∫ 𝐿𝐿(𝑥𝑥(𝑡𝑡), 𝑣𝑣(𝑡𝑡),𝑢𝑢(𝑡𝑡))𝑑𝑑𝑡𝑡𝑇𝑇𝑓𝑓0 . Kumar ¶ 63. These
equations may be used, along with others, to form an optimal control
formulation such as an objective function minimized subject to certain
constraints. See id. ¶¶ 53, 64, and 80. The optimal control function may be
used in an optimized trip plan that optimizes performance components and
meets trip objectives. Id. ¶¶ 4, 49, 53, 55, and 80. By implementing the
optimized trip plan, Kumar’s computerized system may control the tractive,
accelerating, and braking forces of the train based on the trip objectives to
optimize speed and reduce wear during operation of the train over a segment
of track. See id. ¶¶ 12, 36, 44, 45, and 83.
In rejecting claim 1, the Examiner finds Kumar teaches, among other
things: “determine at least one rail wear characteristic resulting for the first
mission based at least on the at least one fuel usage characteristic.” Final 18
(citing Kumar ¶¶ 57, 58, and 62–67).
Appellant argues “[t]he cited art does not teach determination of a rail
wear characteristic based on a fuel usage characteristic . . . as fully set forth
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by Claim 1.” Appeal Br. 19. In particular, Appellant assert that because
“Kumar teaches the simultaneous minimization of fuel and rail wear . . . , it
is not possible for Kumar to teach determining either fuel usage or rail wear
based on the other, as they are simultaneously determined in Kumar.” Id. at
20. Additionally, Appellant assert that Kumar’s disclosure of an objective
function containing both fuel usage F and track wear L fails to teach the
disputed limitation because “the fuel usage term and track wear term are
separate factors that are determined independently (e.g., the ‘F’ and ‘L’
terms are used in separate and distinct integrals which are combined along
with other terms for the minimization).” Id. at 21. Appellant further submits
that Kumar’s disclosure of optimizing a notch position does not teach
solving for wear characteristic based on fuel usage. Id. at 22.
In response, the Examiner explains that
that the claims recite a “fuel usage characteristic,” not “fuel
usage.” If fuel usage is the amount of fuel used, then a fuel
usage characteristic is a characteristic that describes or
determines the fuel usage. In Kumar, the input u(t) represents
the notch position of a locomotive. In a locomotive the notch
position is a term used when describing the throttle. The
amount of throttle being used determines the amount of fuel
being used. More throttle means more fuel, and less throttle
means less fuel. Therefore, u(t) has been mapped to the fuel
usage characteristic in the claim because it determines the fuel
usage.
Ans. 14. Accordingly, the Examiner finds Kumar teaches the disputed
“determine” limitation in view of its “Minimize total wear” equation, which
“teaches determining rail wear (L) based on a fuel usage characteristic
(u(t)).” Id. (citing Kumar ¶ 63).
Appellant respond that paragraph 63 of Kumar “does not show an
‘equation,’ but instead merely shows a function that may be minimized,” and
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“the Examiner’s Answer provides no explanation regarding how the function
of [0063] may be solved or otherwise used to determine ‘rail wear(l)’ based
on u(t).” Reply Br. 9.
Appellant’s arguments are not persuasive because the arguments are
not commensurate with the scope of the claim and do not fully appreciate the
teachings and suggestions of Kumar, which satisfy the disputed limitation.
As an initial matter, we agree with the Examiner that claim 1’s “fuel usage
characteristic” broadly, but reasonably encompasses Kumar’s function
u(t)—notch (throttle) command input over time—because it is a determinant
of fuel usage, such that a change in a train’s notch (throttle) position will
yield a change in fuel usage. See Ans. 14 (citing Kumar ¶ 58), see also id.
(“More throttle means more fuel, and less throttle means less fuel.”). This is
consistent with Appellant’s Specification, which does not provide a special
definition of “fuel usage characteristic” (see Spec. ¶ 28) and, in fact,
confirms the Examiner’s asserted relationship between fuel usage and
throttle (see id. ¶ 30, providing a table showing that as “average throttle”
increases, “fuel used” increases). We also agree with the Examiner that
Kumar’s total wear rate L, which is proportional to the combined loss of
wheel and rail wear, is a “rail wear characteristic” at least because of its
relation to rail wear. This is consistent with Appellant’s Specification, which
does not provide a special definition of “rail wear characteristic,” but instead
merely provides non-limiting examples of the term. See, e.g., id. ¶ 31.
Contrary to Appellant’s assertions, although the “rail wear characteristic”
may be “rail wear” itself, the claim term is not so limiting and also reads on
a variable such as Kumar’s total wear rate L, which accounts for rail wear.
Therefore, we agree with the Examiner that Kumar’s “Minimize total wear”
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equation— min
𝑢𝑢(𝑡𝑡)
∫ 𝐿𝐿(𝑥𝑥(𝑡𝑡), 𝑣𝑣(𝑡𝑡),𝑢𝑢(𝑡𝑡))𝑑𝑑𝑡𝑡𝑇𝑇𝑓𝑓0 —minimizes the total wear rate
L—a “rail wear characteristic”—based in part on u(t)—a “fuel usage
characteristic.” See Kumar ¶ 63. Consistent with the Examiner’s findings,
Kumar also discloses that this equation may be used in an optimal control
formulation (such as an objective function minimized subject to certain
constraints) for creating an optimized trip plan that optimizes performance
components and meets trip objectives for controlling a train. See, e.g., id.
¶¶ 49, 53, 64, 80, 83, and 103. These disclosures would have suggested to
one of ordinary skill in the art that by using the “Minimal total wear
equation,” a rail wear characteristic (Total wear L) for a mission would have
been “determine[d]” based on a fuel usage characteristic (u(t)). Additionally,
contrary to Appellant’s assertions, one of ordinary skill in the art would have
understood “how the function of [0063] may be solved or otherwise used to
determine ‘rail wear (L)’ based on u(t)” (Reply Br. 9). See KSR, 550 U.S. at
418 (explaining that an obviousness analysis can take account of the
inferences and creative steps of a person of ordinary skill in the art); DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1360 (Fed. Cir. 2006) (explaining that basic principles unlikely to be
restated in cited references are considered as included in the prior art).
Appellant further argues that Kumar does not teach “the determination
and control of a vehicle,” but Appellant does not explain why beyond the
reasons advanced for the “determine” limitation. Appeal Br. 19, see also id.
at 22, 23; Reply Br. 9. As an initial matter, we are not persuaded of error for
the same reasons as those discussed above with respect to the “determine”
limitation. Moreover, because Appellant’s argument does not specifically
point out how the claim language at issue (“control tractive efforts of . . . the
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first vehicle”) is patentably distinguishable from the cited disclosure of the
references, we are not persuaded because the argument amounts to a general
allegation that the claims define a patentable invention. See 37 C.F.R.
§ 41.37(c)(1)(vii) (noting that an argument that merely points out what a
claim recites is unpersuasive); see also In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
Additionally, Appellant’s argument is not responsive to the
Examiner’s rejection, which relies on the combination of Sujan and Kumar,
not Kumar alone, to teach or suggest claim 1. See Final 16–18. One cannot
show non-obviousness by attacking references individually when the
rejection is based on a combination of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d
413, 425 (CCPA 1981). Claim 1 recites, in relevant part, a processor
configured to
control tractive efforts of at least one of the first vehicle or one
or more other vehicles, while said at least one of the first vehicle
or the one or more other vehicles actually travel over the at least
one route, said control based at least in part on at least one of the
fuel efficiency map and the at least one rail wear characteristic.

The Examiner finds, and Appellant does not rebut, that Sujan teaches a fuel
efficiency map. Final 17 (citing Sujan ¶ 26). The Examiner additionally
finds that Kumar teaches or suggests the concept of controlling the tractive
efforts of a vehicle based at least on a rail wear characteristic. See id. at 18
(citing Kumar ¶ 83). The Examiner concludes it would have been obvious to
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include Kumar’s teachings in the system of Sujan
since the claimed invention is merely a combination of old
elements in the art of route planning, and in the combination each
element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.

Final 18. The Examiner also reasons that the proposed combination would
provide “improved functionality to manage rail specific parameters along the
route.” Id. Appellant does not persuade us that the Examiner’s findings,
reasoning, or conclusion are erroneous.
Accordingly, for the reasons provided above, we sustain the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103. For the same
reasons, we sustain the Examiner’s § 103 rejection of independent claims 6
and 15, and the Examiner’s § 103 rejection of dependent claims 4, 7–11, and
16–20, which are not separately argued.
B. Claim 3, 13, and 22
Claim 3 recites, in relevant part,
wherein the at least one processor is configured to determine a
portion of fuel consumed for a curved section of the track
attributable to a curvature in the curved section of the track using
a proportion of resistance due to the curvature to a total
resistance, wherein the total resistance is for the curved section
of the track.
Appeal Br. 28 (Claims App.). In finding Kumar teaches this limitation, the
Examiner cites Kumar’s disclosures that fuel consumption is a trip/mission
performance component and that total wear L is being determined based on
the radius of curvature R. Final 19 (citing Kumar ¶¶ 64–67, 80).

Appellant argues
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the mere use of a radius in determining rail wear does not teach
anything with respect to the proportion of resistance used as
claimed or determining an amount of fuel consumed that is
attributable to the curvature, let alone the determination of a rail
wear characteristic using the fuel consumed that is attributable to
the curvature.
Appeal Br. 24.
In response, the Examiner maintains that Kumar teaches the disputed
limitation, explaining that “Kumar discusses throughout the reference
segmentation of routes” and “[b]oth fuel usage and rail wear equations are
integrated over the travel time of the route to account for each segment of
the route.” Ans. 20. The Examiner additionally cites paragraphs 68 and 72 of
Kumar as describing a “cant deficiency” formula that accounts for “rail wear
due to the radius of a particular curve” and is applied to each segment of a
route. See id. (citing Kumar ¶¶ 68, 72).
Appellant respond that paragraph 68 of Kumar “merely teaches use of
‘useful surrogate for the exact rate of wear in curved track . . . with wear
defined in terms of a cant deficiency.’” Reply Br. 12 (quoting Kumar ¶ 68
(internal quotation marks omitted)). Accordingly, Appellant argues that
“[s]uch a cant deficiency does not teach, for example, determining a portion
of fuel consumed attributable to curvature, or, as another example, using a
proportion of resistance due to curvature to total resistance as fully set forth
by Claim 3.”
We are persuaded by Appellant’s arguments that the Examiner erred.
Paragraphs 64 through 66 of Kumar describe an objective function based on
the minimization of the total wear rate L and the total fuel consumption F,
subject to adjoined constraints such as a fuel consumption limit. Kumar
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¶¶ 64–66. Paragraph 67 of Kumar discloses that total wear rate L may be
determined based in part of the radius of curvature of the track. Id. ¶ 67.
Paragraph 80 of Kumar discloses that the optimal control function may be
amended to consider certain objectives, such as reducing emissions or wheel
and track wear, wherein trip/mission performance components may include,
for example, fuel consumption and wheel or track wear. Id. ¶ 80. Paragraphs
68 and 72 of Kumar describe a “cant deficiency” formula that accounts for
the radius of curvature of a track and may be used to determine wear cost
through a curved track segment. Id. ¶¶ 68, 72. But the Examiner has not
persuasively shown—nor do we determine—that any of the cited disclosures
of Kumar teach or suggest “determin[ing] a portion of fuel consumed . . .
attributable to a curvature in the curved section of the track” or “using a
proportion of resistance due to the curvature to a total resistance.” Nor does
the Examiner cite Sujan or otherwise articulate an obviousness rationale to
cure this deficiency. See Final 16–19.
Accordingly, on this record, we are constrained to find the Examiner
erred because the Examiner has not shown that the combination of Sujan and
Kumar teaches or suggests the disputed limitation of claim 3 and, therefore,
that the combination of Sujan and Kumar renders claim 3 obvious under
35 U.S.C. § 103. Thus, we do not sustain the Examiner’s rejection under
§ 103 of claim 3. For the same reasons, we do not sustain the Examiner’s
rejection under § 103 of claims 13 and 22, which recite similar limitations.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3, 4, 6–11, 13, 15–20,
and 22 under 35 U.S.C. § 101.
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We affirm the Examiner’s rejection of claims 1, 4, 6–11, and 15–20
under 35 U.S.C. § 103.
We reverse the Examiner’s rejection of claims 3, 13, and 22 under
35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3, 4, 6–11, 13,
15–20, 22
101 Eligibility 1, 3, 4,
6–11, 13,
15–20,
22

1, 3, 4, 6–11, 13,
15–20, 22
103 Sujan,
Kumar
1, 4, 6–
11, 15–
20
3, 13, 22
Overall
Outcome
1, 3, 4,
6–11, 13,
15–20,
22

AFFIRMED