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 Amendment
The amendment filed on 5/14/2026 has been entered into the prosecution for the application. Currently claims 15-20, 22 and 26-29 are pending. Claims 26-29 are withdrawn from consideration.
Applicant arguments that the capacity of the oxygen output in relation to a “natural” forest would be a straightforward calculation to one of ordinary skill in the art. Specifically that the specification gives a precise definition of natural forest emitting 15-30 metric tons per hectare per year, thus at 5-40 times the quantity, the plant of at least 580 metric tons per hectare per year satisfies the claim language.
This is not persuasive in relation to claims 15-16. Although the 580 metric tons per hectare per year is one example of an oxygen output of a forest, there is no scientific definition of a “natural” forest or how much oxygen is actual output from those forests. The oxygen output of a forest is dependent on the age, location and overall environment such that a forest like the Amazon Forest could produce more oxygen than a forest in the Rocky Mountains.
Therefore the range is not enabled to one of ordinary skill in the art to know a precise coverage of the plant in relation to oxygen output.
Appropriate correction is required.
The Examiner suggests that if Applicant desires language for the oxygen output, they use what is actually disclosed by their specification. As the specification states that a “natural” forest produces between 15-30 metric tons of oxygen per hectare per year and that the plant is 5-40 times higher, this gives an easy calculation as to the output capacity of claim 15 as 75-1200 metric tons of oxygen per hectare per year. Similarly for claim 16, the range is would be 150-1200 metric tons of oxygen per hectare per year.
As to claims 17-19, there is similarly no upper limit to the plant and thus converges on an indefinite number of infinity, thus not being enabled by one of ordinary skill in the art as the limits of the plant are unknown, indefinite and not enabled.
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.
Claims 15-20 and 22 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 15-19 contain language that pertains to the capacity of the system.
Claim 15 recites “oxygen output capacity of a natural forest relative to the same assumed surface area by at least 5 times.” There is no upper limit to this limitation such that one of ordinary skill in the art would not be enable to know does and does not pertain, connect or make use of the invention.
Likewise claims 16-19 have similar language with minimum language (“at least”) but not set upper limit that discloses and enables the claimed invention.
As to the Wands Factors:
There are no specific examples or guidance to set forth the limits.
The burden of experimentation necessary to determine the limits is unruly as the limits relate to natural forests which have no specific definition and thus no specific limit.
The nature of the invention is clear, but the capacity and/or use of the invention do not specific correlate to the generic structure of the invention at hand.
The state of the prior art is clear in relation to the generic structure (i.e. components), but not in relation to the capacity which is undetermined/infinite.
The other Wands factors are considered but not expounded on at this time.
Claim 20 and 22 are rejected as being dependent on claim 15.
Terminal Disclaimer
The terminal disclaimer filed on 5/14/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent application 18/277,920 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claim 15 now includes the limitations of previously filed claim 25 (and the claims from which it originally depended). If Applicant fixes the 112(a) issues as discussed above, the application is in condition for allowance for the claims dependent on claim 15.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRIAN W COHEN whose telephone number is (571)270-7961. The examiner can normally be reached M-F: 9 am to 5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRIAN W. COHEN
Primary Examiner
Art Unit 1759
/BRIAN W COHEN/ Primary Examiner, Art Unit 1759
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