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 .
Election/Restrictions
Applicant’s election of Species I, a first pasture type and Species II, soil sampling in the field, in the reply filed on 02 February 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claim 4 is withdrawn from consideration as being directed to a non-elected species.
Information Disclosure Statement
The information disclosure statement filed 15 September 2023 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the publication number of citation 1 is incorrect and thus not considered by the Examiner.
Claim Objections
Claims 1, 3, 6, 8 and 9 are objected to because of the following informalities: Instant independent claim 1 recites in line 4: “one or more feature groups,” and subsequently recites: “each of the feature groups” or “the feature groups” in the claim, as well as dependent claims 6, 8 and 9. The claims must consistently further limit and/or depend from the established “one or more feature groups,” and must be amended to “each of the one or more feature groups” or “the one or more feature groups.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 6, 8 and 9 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.
Instant independent claim 1 recites in part: “calculate the carbon content of the soil.” The instant filed specification fails to define and/or describe what constitutes any calculation of the carbon content of the soil from the soil sampling, thus rendering the claim indefinite. In addition, there is no disclosure of any associated measurements and/or measurement devices that must be employed to determine and/or subsequently calculate from the measurements, the carbon content of the soil from soil samples, additionally rendering the claim indefinite. All other pending claims are similarly rejected due to their dependency from claim 1.
Instant independent claim 1 recites in part: “identifying sampling locations.” The instant filed disclosure fails to define and/or describe what exactly constitutes the process/method step of identifying/identification of sampling locations within the one or more feature groups, thus rendering the claim and it’s dependents indefinite.
Instant dependent claim 9 recites the limitation "the below ground strata" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 1, 3, 6, 8 and 9 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. Instant independent claim 1 recites the limitations: “calculate the carbon content of the soil.” The instant disclosure fails to provide any method/process details/steps in regards to any calculating/calculation of the carbon content of a soil sample, that presumably is subjected to a measurement device or system, thus failing to enable one of ordinary skill in the art to make and/or use the instant claimed invention. Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, it is clear the instant disclosure fails to provide any direction in methodology to any calculations (i.e. mathematics, formulas, etc.) of the carbon content of a soil sample, the calculations presumably involving measurements made by a measurement device/system. Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose fails to provide any working examples of any calculations to determine the carbon content of the soil sample. Wands factor (H), the quantity of experimentation needed to make or use the instant invention based on the context of the disclosure, there would be undue experimentation for one of ordinary skill in the art to determine all of the possible calculations to be performed on the soil sample to determine its carbon content, with no guarantee of success. All other claims are similarly rejected due to their dependency.
Instant independent claim 1 recites the limitations: “identifying sampling locations.” The instant disclosure fails to provide any method/process details/steps in regards to identifying required sampling locations in each of the one or more feature groups in the landscape, thus failing to enable one of ordinary skill in the art to make and/or use the instant claimed invention. Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, it is clear the instant disclosure fails to provide any direction in methodology to the identification and thus selection of a required sampling location to determine the carbon content in the one or more features of the landscape. Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose fails to provide any working examples of how one of ordinary skill in the art would identify and thus undertake soil sampling at locations within the one or more feature groups within the landscape. Wands factor (H), the quantity of experimentation needed to make or use the instant invention based on the context of the disclosure, there would be undue experimentation for one of ordinary skill in the art to identify the required locations to undertake the soil sampling within the one or more feature groups in the landscape, with no guarantee of success in determining the carbon content of the landscape. All other claims are similarly rejected due to their dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
As best understood, claim(s) 1, 3. 6, 8 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2013/0197814 to McBratney et al. McBratney et al. disclose a method of measuring soil (see entire reference) including the steps of: assessing the characteristics associated with carbon content of a landscape (“terrain attributes”) under inspection to identify one or more feature groups of the landscape under inspection and the amount of area of land (see paras 0043, 0050, 0051, 0092, 0112, claims 44 and 49) of each of the one or more features, wherein the feature groups are grouped based on observable features (irrigated lands; dryland annuals, perennials with inputs, perennials with irregular inputs) (see Figs. 2C-2E and para 0108) that have the capacity to influence the variability of the concentrations of carbon and/or the ability to sequester carbon; identifying sampling locations in each of the one or more feature groups and undertaking soil sampling for each identified sampling location (see paras 0006, 0012, 0022, 0093, 0111, 0115-0130) and measuring/calculating the carbon content of the landscape under inspection using the calculated carbon content of the soil of each of the one or more feature groups (see pars 0121, 0156, 0165) (as recited in instant independent claim 1); wherein the step of undertaking soil sampling at each identified sampling location to calculate the carbon content of the soil in each of the one or more feature groups is undertaken by soil sampling in the field (see aforementioned paragraphs) (as recited in instant dependent claim 3); wherein the step of calculating the carbon content of the landscape under inspection further the use of the amount of area of land of each of the one or more feature groups as a proportion of the total area of the landscape under inspection (see aforementioned paragraphs) (as recited in instant dependent claim 6); wherein the identifying each of the one or more feature groups of the landscape under inspection and the amount of area of land of each of the one or more feature groups includes calculating the amount of land each of the one or more feature groups as a proportion or portion of the total area of land of the landscape under inspection (see aforementioned paragraphs) (as recited in instant dependent claim 8); and further including the calculating the vertical proportion or portion of a below ground strata of the soil of each of the one or more feature groups to calculate a feature proportion or portion of the landscape under inspection (see aforementioned paragraphs, Fig. 3, and paras 0093-0098 and 0105-0153) (as recited in instant dependent claim 9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855