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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a particle size measuring instrument”, “a color measuring instrument”, and “an estimation circuit” in claim 12 (and its related dependent claims).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) an abstract idea, specifically “estimating corrosion…based on the particle size…and the color measurement value”, which falls within the “mental processes” grouping (concepts performed in the human mind, including observation, evaluation, judgement, opinion) and/or the “mathematical concepts” grouping (mathematical relationships/calculations) (see MPEP 2106.04(a)(2)). This judicial exception is not integrated into a practical application because the measurement steps are extra-solution data gathering (see MPEP 2106.05(g)). The estimation step is the abstract idea itself. No improvement to computer technology, no particular machine, no transformation of matter, and no meaningful limitation on a field of use is present. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because measuring particle size and color of soil using conventional techniques (sieving, laser diffraction, colorimetry) is well-understood, routine, and conventional (see MPEP 2106.05(d)). Applying known correlations between soil properties (texture via particle size, organic/iron content via color) and corrosivity to buried steel is also routine in the art of corrosion engineering and geotechnical site assessment. Viewing the elements as an ordered combination adds nothing more. Therefore, the claim is not patent eligible.
Claims 8–11 are also rejected under 35 U.S.C. 101 for the same core reasons as independent claim 7. The added limitations do not meaningfully rescue the claims from being directed to an abstract idea without significantly more. These claims introduce somewhat more structured mathematical adjustment/correction to the estimation step (obtain base corrosion rate, obtain a “magnification” or multiplier from color, multiply to get corrected rate, estimate corrosion from corrected rate). The claims recite an abstract idea falling within the enumerated groupings: (“mental processes” -– concepts performed in the human mind (observation, evaluation, judgement), such as observing/measuring soil properties (particle size, color), evaluating/correlating those properties to a corrosivity adjustment, and judging/estimating a corrosion level or rate; “mathematical concepts” –mathematical relationships/calculations, including obtaining a rate, obtaining a magnification factor, and multiplying the corrosion rate by the magnification to obtain a corrected rate (MPEP 2106.04(a)(2)). The judicial exception is not integrated into a practical application. The measurement steps remain extra-solution activity (conventional data collection). Obtaining a “corrosion rate” from particle size and a “magnification” from color are applications of known correlations between soil texture/aeration/organic content and corrosivity (no improvement to the estimation technology). Multiplying values is insignificant extra-solution math. No particular machine is meaningfully required, no transformation of the soil/steel occurs, and there is no specific, non-preemptive application beyond the broad field of corrosion estimations. The claims do not improve computer functionality, or apply the exception in a meaningful way that goes beyond generally linking the use of the judicial exception to the field of soil corrosion analysis. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because measuring particle size and color of soil using conventional techniques (sieving, laser diffraction, colorimetry) is well-understood, routine, and conventional (see MPEP 2106.05(d)). Deriving a base corrosion rate from particle size, a magnification from color, and multiplying is equivalent to conventional mathematical application of known soil corrosivity correlations (soil color as proxy for aeration/organics/moisture retention is routine). There is no unconventional combination, no improvement to accuracy/speed beyond what is inherent in applying known rules of thumb or tables. Therefore, the claims are not patent eligible.
Claims 12–24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the same judicial exception/abstract idea(s) as applied to claims 7–11, shown above. The additional elements (instruments, circuit, sample handling) are recited at high generality and amount to mere data gathering and generic implementation of the exception. The judicial exception is not integrated into a practical application (MPEP 2106.04(d)). Measuring particle size/color (via instruments) and sample obtaining/storing/drying are extra-solution activity (conventional pre/post solution data gathering; see MPEP 2106.05(g)). The estimation circuit performs the abstract idea (correlation/math) at a high level of generality with no particular machine or improvement to technology. There is no claimed improvement to the functioning of a computer/other technology, no transformation of matter (soil/steel unchanged), no particular treatment, and no meaningful non-preemptive field-of-use limitation. The claims amount to generally linking the judicial exception to corrosion estimation using soil data. The additional elements do not add significantly more. Particle size/color measuring instruments and sample preparation are well-understood, routine, and conventional in soil testing/corrosion site assessment (sieves/laser diffraction, colorimeters, standard drying protocols). The generic “estimation circuit” implementing known correlations/rate adjustments/multiplication is a routine application of math to conventional data. When viewed as an ordered combination, the elements do not transform the claim, as they merely automate/apply the abstract idea using conventional tools (MPEP 2106.05(f)). Therefore, the claims are not patent eligible.
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 7, 12, 17, and their related dependent claims (8–11, 13–16, and 18–24) 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.
Regarding claims 7 and 12, the claims set forth, “estimate[ing] corrosion of a steel material buried in the soil…”. Regarding claim 17, the claim sets forth, “estimating corrosion of a steel material buried at the location…”. These claims fail to comply with the enablement requirement because the specification does not set forth any specific proximity, location, distance, etc., from the steel material, of the soil being collected/tested. The “steel material buried in the soil/at the location” inherently occupies a certain volume where soil contacts or surrounds the steel material. Notably, estimation of corrosion values/rate, etc., would vary depending on proximity/location/distance to the steel material. However, a person of ordinary skill in the art should not have to guess this information, to make/use the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7, 12, 17, and their related dependent claims (8–11, 13–16, and 18–24) 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.
Regarding claims 7 and 12, the claims set forth, “estimate[ing] corrosion of a steel material buried in the soil…”. Regarding claim 17, the claim sets forth, “estimating corrosion of a steel material buried at the location…”. Each of these limitations are unclear. Because these claims do not set forth any specific proximity, location, distance, etc., from the steel material, of the soil being collected/tested, the claims are indefinite. The “steel material buried in the soil/at the location” inherently occupies a certain volume where soil contacts or surrounds the steel material. Without knowing how far from the steel material the soil should be collected (location proximity), it is unclear how corrosion could be estimated accurately, since this characteristic would wildly vary, depending distance from the steel material the soil is collected from.
Claims 7 and 12 (and their related dependent claims) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
Claims 7 and 12 do not recite any “soil collection/gathering” steps which appear essential to the claims. If the estimation steps are “measuring particle size/color measurement value(s)”, it appears as though soil would necessarily need to be collected (again, where would this occur/ proximity? – see 112(a)/112(b) above). Furthermore, even though claim 12 is directed to a device, in view of the above 112(a) and 112(b) rejections, it is unclear how it would function as a device without “collecting/gathering” soil, prior to the estimating step as performed by the “circuit”.
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.
Claim(s) 7, 8, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arbabi (“Corrosive Soils: Causes, Effects, and Mitigation”; Testing Engineers; published October 30, 2009; https://web.archive.org/web/20091030165759/https://www.testing-engineers.com/case1.html), hereinafter referred to as Arbabi.
Regarding claim 7, Arbabi teaches, “A corrosion estimation method comprising: a particle size measurement step of measuring a particle size of soil (see page 1, 3rd paragraph, “Aeration” – “The particle size and gradation within the soil plays a major role in determining the amount of aeration. Sandy soils are generally desirable, as the relatively large particles allow for better aeration, and facilitate faster evaporation rates after water has been introduced into the soil.”); a color measurement step of measuring a color measurement value related to a color of the soil (see page 1, 3rd paragraph, “Aeration” – “A quick way to classify soils in terms of their aeration is by examining their color. Reddish, brown, or yellow soils indicate good aeration, while gray soil is indicative of poor aeration.”); and an estimation step (looking at the particle size and color as described above; see also pages 1–3 of document, describing corrosion in combination with particle size/color of steel and soil at the material) of estimating corrosion of a steel material buried in the soil based on the particle size measured in the particle size measurement step and the color measurement value measured in the color measurement step.”
Regarding claim 8, Arbabi teaches, “wherein the estimation step comprises: obtaining a corrosion rate; and estimating the corrosion of the steel material based on the corrosion rate (this is achieved by viewing the material at different points in time; also described in “pH” section, which directly correlates to moisture content/particle size of soil).”
Regarding claim 11, Arbabi teaches, “wherein the color measurement step comprises measuring a color value as the color measurement value (“aeration” section; and looking at color and a table with known corrosivity values, this can be inferred).”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO–892 form. The references cited herewith teach sample collecting methods and devices configured similarly to the present application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN D WALSH whose telephone number is (571)272-2726. The examiner can normally be reached M-F, 8:30am-6:30pm.
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/RYAN D WALSH/Primary Examiner, Art Unit 2852