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 without traverse of Group II (Claims 12-21) in the reply filed on 06/19/2025 is acknowledged.
Claims 1-11 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/19/2025.
Information Disclosure Statement
The information disclosure statements filed 03/18/2025 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because they do not properly identify/cite the non-patent literature documents.
Per 37 CFR 1.98(b)(5), each publication listed in an information disclosure statement must be identified by publisher, author (if any), title, relevant pages of the publication, date, and place of publication. Several NPL citations only include authors or a link, others don’t include an author, or a date. See MPEP 707.05(e)(III) for information on citing publications. Further, it appears that there are more listed NPL documents, than there are copies of NPL documents provided in the file wrapper, so at least some of the struck-through references are also not considered for also failing to provide a legible copy ( CFR 1.98(a)(2)(ii)). Finally, It is noted that the listed book “Up by Roots” is not considered, given the applicant solely provided a webpage of a site to purchase the book, rather than a copy of the actual cited literature.
The IDSs have been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to for including photographs (Figs 3 and 6). Per 37 CFR 1.84 (b)(1), photographs are not ordinarily permitted unless photographs are the only practicable medium for illustrating the claimed invention (e.g. electrophoresis gels, blots, auto-radiographs, cell cultures). Further, photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. The photographs in the drawings do not meet these conditions for acceptance, and as such, the examiner requires black and white line drawing(s) in place of the photograph(s) present.
Further, Figures 1-2, 4, and 12-14 are objected to as including greyed-out lines that are hard to visualize and which are non-uniform in thickness. Per 37 CFR 1.84(a)(1), black and white drawings are normally required with solid black lines of India ink or its equivalent Further, per and 37 CFR 1.84(l), all drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
Specification
The disclosure is objected to because of the following informalities:
¶000100: “. Based” should read –Based--
Appropriate correction is required.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code (¶0004; ¶00035; ¶00096; ¶00099). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 19 and 21 are objected to because of the following informalities:
Claim 19: “wherein genus of” should read –wherein a genus of—
Claim 21: “a plurality of plants known to interrelate with a mycorrhizal fungus planted in various locations” should read -- a plurality of plants, known to interrelate with a mycorrhizal fungus, planted in various locations--.
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 12-21 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.
Claim 12 recites the limitation "the roots of the urban trees" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 14 recite the limitation "the surface" in line 1. There is insufficient antecedent basis for this limitation in the claim. Similarly for claim 20.
Claim 15 recites “wherein each soil conduit has a top surface with a grate at least partially covering its top surface.” It is unclear whether the applicant is considering the grate as forming at least part of each soil conduits top surface, or if the grate simply covers the top surface of the soil conduit, not being a part of the soil conduit itself. If the prior, it is unclear how something which is considered a part of the top surface may cover that same surface.
Claim 18 recites “wherein, the genus of the trees is selected to associate with…fungi.” It is unclear whether the applicant is attempting to, improperly, positively claim a method step of selecting a tree genus, or if the applicant is simply trying to limit the species of the trees claimed. Similarly with claim 12 “the soil conduits are inoculated with a mycorrhizal fungus” When both an apparatus and the method steps of using the apparatus are claimed within the same claim, it is unclear whether infringement would occur when the apparatus is constructed or when the apparatus is used; therefore, the claim has an indefinite scope. See MPEP § 2173.05(p)(II). For examination purposes, as best understood, “the genus of the trees is selected to associate with…fungi” will be understood as –the trees are of a genus that is configured to associate with…fungi--; and “the soil conduits are inoculated with a mycorrhizal fungus” will be understood as –the soil conduits comprise a mycorrhizal fungus--.
The term “shallow” in claim 20(c) is a relative term which renders the claim indefinite. The term “shallow” 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 the scope of the invention.
Claim 21 recites the limitation "the contents of the material" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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 12-14 and 16-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to laws of nature and natural phenomena without significantly more.
Effective January 7, 2019, subject matter eligibility determinations under 35 U.S.C. § 101 follow the procedure explained in the Federal Register notice titled 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No.4, 50-57), which is found at: https://www.qgovinfo.gov/content/pkq/FR-2019-01- 07/pdf/2018-28282.pdf. Applicants are kindly asked to review this guidance as well as MPEP 2106.
The statutory categories of invention under 35 U.S.C. 101 are processes, machines, manufactures, and compositions of matter. However, certain members of these categories constitute judicial exceptions, i.e., the courts have determined that these entities are not patentable subject matter. These judicial exceptions include abstract ideas, laws of nature, and natural phenomena. The Office released guidance on December 16, 2014 for the examination of claims reciting natural products under 35 U.S.C. 101 in light of the recent Supreme Court decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. (569 U.S._, 133 S. Ct. 2107, 2116, 106 USPQ2d 1972 (2013)) and Mayo Collaborative Services v. Prometheus Laboratories (566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012)), Diamond v. Chakrabarty, 447 U.S. 303 (1980)) and Funk Brothers Seed Co. v. Kala Inoculant Co. - 333 U.S. 127 (1948)). (Inter alia). See e.g. MPEP 2106.04(b)
The Supreme Court has explained that the judicial exceptions reflect the Court's view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (quoting Myriad, 133 S. Ct. at 2116, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ). The Supreme Court's concern that drives this "exclusionary principle" is pre-emption. Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980. The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena; i.e., one may not patent every "substantial practical application" of an abstract idea, law of nature, or natural phenomenon, even if the judicial exception is narrow.
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. Cellz Direct, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible.
Products of Nature: When a law of nature or natural phenomenon is claimed as a physical product, the courts have often referred to the exception as a "product of nature". Products of nature are considered to be an exception because they tie up the use of naturally occurring things, but they have been labeled as both laws of nature and natural phenomena. See Myriad 133 S. Ct. at 2116-17, 106 USPQ2d at 1979 (claims to isolated DNA held ineligible because they "claim naturally occurring phenomena" and are "squarely within the law of nature exception"); Funk Bros. Seed Co. v. Kala Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948) (claims to bacterial mixtures held ineligible as "manifestations of laws of nature" and "phenomena of nature"). Step 2A of the Office's eligibility analysis uses the terms "law of nature" and "natural phenomenon" as inclusive of "products of nature".
It is important to keep in mind that product of nature exceptions include both naturally occurring products and non-naturally occurring products that lack markedly different characteristics from any naturally occurring counterpart. Instead, the key to the eligibility of all non-naturally occurring products is whether they possess markedly different characteristics from any naturally occurring counterpart.) When a claim recites a nature-based product limitation, examiners use the markedly different characteristics analysis discussed in MPEP § 2106.04(c) to evaluate the nature-based product limitation and determine the answer to Step 2A. Nature-based products, as used herein, include both eligible and ineligible products and merely refer to the types of products subject to the markedly different characteristics analysis used to identify product of nature exceptions.
The Markedly Different Characteristics Analysis
The markedly different characteristics analysis is part of Step 2A, because the courts use this analysis to identify product of nature exceptions. If the claim includes a nature based product that has markedly different characteristics, then the claim does not recite a product of nature exception and is eligible. If the claim includes a nature- based product that does not exhibit markedly different characteristics from its closest naturally occurring counterpart in its natural state, then the claim is directed to a "product of nature" exception (Step 2A: YES), and requires further analysis in Step 2B to determine whether any additional elements in the claim add significantly more to the exception.
Nature-based Product Claim Analysis
Where the claim is to a nature-based product by itself, the markedly different characteristics analysis should be applied to the entire product. Where the claim is to a nature-based product produced by combining multiple components, the markedly different characteristics analysis should be applied to the resultant nature-based combination, rather than its component parts. Where the claim is to a nature-based product in combination with non-nature based elements, the markedly different characteristics analysis should be applied only to the nature-based product limitation. For product-by-process claims, the analysis turns on whether the nature-based product in the claim has markedly different characteristics from its naturally occurring counterpart.
The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Markedly different characteristics can be expressed as the product's structure, function, and/or other properties, and are evaluated based on what is recited in the claim on a case-by- case basis. If the analysis indicates that a nature-based product limitation does not exhibit markedly different characteristics, then that limitation is a product of nature exception. If the analysis indicates that a nature-based product limitation does have markedly different characteristics, then that limitation is not a product of nature exception. Because the markedly different characteristics analysis compares the nature- based product limitation to its naturally occurring counterpart in its natural state, the first step in the analysis is to select the appropriate counterpart(s) to the nature-based product. When there are multiple counterparts to the nature-based product, the comparison should be made to the closest naturally occurring counterpart. When the nature-based product is a combination produced from multiple components, the closest counterpart may be the individual nature-based components of the combination. Because there is no counterpart mixture in nature, the closest counterparts to the claimed mixture are the individual components of the mixture, /.e., each naturally occurring species by itself. See, e.g., Funk Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture of bacterial species to each species as it occurs in nature).
Markedly changed characteristics can include structural, functional, chemical changes. In order to show a marked difference, a characteristic must be changed as compared to nature, and cannot be an inherent or innate characteristic of the naturally occurring counterpart or an incidental change in a characteristic of the naturally occurring counterpart. Myriad, 133 S. Ct. at 2111, 106 USPQ2d at 197 4-75. Thus, in order to be markedly different, applicant must have caused the claimed product to possess at least one characteristic that is different from that of the counterpart. If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception.
Analysis
Claim 12: Ineligible
Claim 12 recites “a more resilient tree architecture in an urban environment comprising:
a plurality of soil conduits extending between the roots of urban trees in an urban environment,
wherein the soil conduits are inoculated with a mycorrhizal fungus and form fungal networks between roots of the urban trees.
Step 1 (Falls in a statutory category?) -- YES
The roots, trees, soil, and fungus are composed of matter; thus the claim is directed to at least one statutory category (composition of matter)
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The claimed structure amounts to soil conduits extending between trees with mycorrhizal fungi therein. This structure is not markedly different from its naturally occurring counterpart, that being mycorrhizally connected trees growing in soil. A naturally occurring grouping of mycorrhizally connected trees growing in soil have soil conduits extending between their roots (a conduit is understood as a passage under plain meaning BRI, trees in shared soil form passages between their roots, the passages being formed by the naturally occurring soil therebetween). The formation of fungal networks between roots of trees via mycorrhizal fungi is a naturally occurring phenomenon, and would result in the soil between the host plants roots being ‘inoculated’ with the mycorrhizae due to the natural spreading structure and behavior of the fungi. This assertion is supported by the applicant’s own disclosure, which acknowledges that mycorrhizal connections between trees is a well-documented naturally occurring phenomenon, mycorrhizal fungi connecting roots of trees in soil (¶00034-00035; ¶00042; ¶00094; ¶00099). It is also noted that the description of the trees as being ‘urban’ or ‘in an urban environment’ do not serve to provide a marked difference to the trees, soil conduits or fungi themselves (a tree planted in a park in a city does not differ from an identical tree planted in a park in a rural area), or provide additional structure to the claims beyond that which may occur naturally; these limitations appear to be purely an intended use of where to locate the invention. There is no indication in the record of any markedly different characteristics (either structural or functional) of the product as broadly claimed
Because the BRI of this claim encompasses the naturally occurring tree/fungi/soil architecture, and the claimed structure does not have markedly different characteristics from this naturally occurring counterpart, the claimed resilient tree architecture is a “product of nature” exception. Association for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107, 2116 (2013) (naturally occurring things are “products of nature” which cannot be patented). Thus, the claim is directed to at least one exception.
Step 2B (Additional elements add significantly more?) – NO
In this case the combination of claimed elements (trees, soil conduits, and mycorrhizal fungi) occurs in nature. No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil). As explained above in step 2A, the recitation of an urban environment does not amount to significantly more, given it is purely intended use, and does not provide a marked change to the naturally occurring product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 13: Ineligible
Claim 13 recites “wherein the soil conduits extend to the surface and have a water permeable top surface.”
Step 1 (Falls in statutory category?) -- YES:
Claim 13 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Naturally occurring soil that makes up the ground extends to ‘the surface’, as best understood, as the soil of the earth makes up the surface of the earth. Further, naturally occurring soil is water permeable, in order to facilitate the exchange of water to a plant’s roots to help it grow. As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 14: Ineligible
Claim 14 recites “wherein the soil conduits extend to the surface and have a gas permeable top surface.”
Step 1 (Falls in statutory category?) -- YES:
Claim 14 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Naturally occurring soil that makes up the ground extends to ‘the surface’, as best understood, as the soil of the earth makes up the surface of the earth. Further, naturally occurring soil is gas permeable, in order to facilitate the exchange of gas to a plant’s roots to help it grow. As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 16: Ineligible
Claim 16 recites “wherein the soil conduits include a soil medium through which roots can form.”
Step 1 (Falls in statutory category?) -- YES:
Claim 16 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Naturally occurring soil that makes up the ground is a ‘soil medium’ under BRI. As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 17: Ineligible
Claim 17 recites “wherein the soil medium is a horticultural soil.”
Step 1 (Falls in statutory category?) -- YES:
Claim 17 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Naturally occurring soil that makes up the ground in which trees grow is a ‘horticultural soil’ under BRI, given it is capable of allowing the trees to grow therein. As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 18: Ineligible
Claim 18 recites “wherein, the genus of the trees is selected to associate with arbuscular mycorrhizae (AM) fungi to create a common mycorrhizal network (CMN)”.
Step 1 (Falls in statutory category?) -- YES:
Claim 18 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Trees which associate with arbuscular mycorrhizae (AM) fungi are found in nature linked by mycorrhizae fungi in soil. This assertion is supported by the applicant’s own disclosure, which affirms that such trees exist and are well documented (¶00094). As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
Claim 19: Ineligible
Claim 19 recites “wherein, the genus of the trees is selected to associate with ectomycorrhizae (ECM) fungi to create a common mycorrhizal network (CMN)”.
Step 1 (Falls in statutory category?) -- YES:
Claim 19 is directed to at least one statutory category for the same reasons the independent claim on which it depends is.
Step 2A, including markedly different characteristics analysis, (Directed to a judicial exception?) – YES;
The additional limitations present in the claim do not provide markedly different characteristics to the claimed product over its closest naturally occurring counterpart. Trees which associate with ectomycorrhizae (ECM) fungi are found in nature linked by mycorrhizae fungi in soil. This assertion is supported by the applicant’s own disclosure, which affirms that such trees exist and are well documented (¶00094). As such, the claimed product remains directed to a “product of nature” exception.
Step 2B (Additional elements add significantly more?) – NO
No other specific limitations other than what is well-understood, routine and conventional in the field at a high level of generality have been added to the claimed nature-based product (e.g., mycorrhizally connected trees in soil) in this dependent claim, thereby there are no additional elements that add ‘significantly more’ to the product. To be integrated into a practical application the claims must have specific and well defined features as applied to the practical application, i.e., a physical embodiment of the practical application. Mere instructions to apply an exception cannot provide an inventive concept nor a feature that is well understood, routine, or conventional in this art.
Thus, the claimed product is not eligible subject matter under current 35 USC 101 standards.
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.
Claim(s) 12-17 and 20-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gangadhar (NPL: “Insertion of Green Webs”), hereinafter referred to as Gangadhar, as best understood in light of the 112(b) rejections addressed above.
Regarding claim 12:
Gangadhar discloses a more resilient tree architecture in an urban environment comprising:
a plurality of soil conduits extending between the roots of the urban trees in an urban environment (see annotated Figure 19 below – the soil in the boxed areas; Pg 69),
PNG
media_image1.png
277
461
media_image1.png
Greyscale
wherein the soil conduits are inoculated with a mycorrhizal fungus and form fungal networks between roots of the urban trees (Pg 72: “Green Webs”; Pg iv-v: “Green Webs are networks of mature trees with interconnected root systems made possible via mycorrhizal fungal activity…connecting tree roots below ground by mycorrhizal networks”).
Regarding claim 13:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein the soil conduits extend to the surface and have a water permeable top surface (as best understood, the soil conduits extend to the surface, given that the ground itself, and thereby its surface, is defined by the bounds of the soil within the soil conduit; further, the soil in each of the soil conduits has a water permeable top surface, as it must to be able to allow plant growth in the planting areas, as contemplated).
Regarding claim 14:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein the soil conduits extend to the surface and have a gas permeable top surface (as best understood, the soil conduits extend to the surface, given that the ground itself, and thereby its surface, is defined by the bounds of the soil within the soil conduit; further, the soil in each of the soil conduits has a water permeable top surface, as it must to be able to allow plant growth in the planting areas, as contemplated).
Regarding claim 15:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein each soil conduit has a top surface with a grate at least partially covering its top surface (see annotated Fig 19 below).
PNG
media_image2.png
277
461
media_image2.png
Greyscale
Regarding claim 16:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein the soil conduits include a soil medium through which roots can form (Pg 69; Pg 72; Pg iv-v).
Regarding claim 17:
Gangadhar discloses the limitations of claim 16 above and further discloses wherein the soil medium is a horticultural soil (under BRI and plain meaning of “horticultural”, horticultural soil is understood as a soil capable of being used to cultivate plants; given the fact that plants are contemplated as being grown in the areas where the soil is located – see trees in Fig 19, and “planting area” reference on Pg 72 – this soil fulfills the claim limitation).
Regarding claim 20:
Gangadhar discloses an urban vegetation arrangement comprising:
a plurality of plants known to interrelate with a mycorrhizal fungus planted in various locations within an urban environment (see trees, Fig 19; Pg 72: “Green Webs”; Pg iv-v: “Green webs are networks of mature trees with interconnected root systems made possible via mycorrhizal fungal activity…connecting tree roots below ground by mycorrhizal networks”);
a plurality of soil conduits connecting roots of the plants (see annotated Figure 19 below – the soil in the boxed areas; Pg 69; Pg iv-v),
PNG
media_image1.png
277
461
media_image1.png
Greyscale
wherein the soil conduits are shallow, elongated passages that open to the surface (see annotated Fig 19 above), and are filled with a soil conducive to root growth inoculated with the mycorrhizal fungus (Pg 72: “Green Webs”; Pg iv-v: “Green Webs are networks of mature trees with interconnected root systems made possible via mycorrhizal fungal activity…connecting tree roots below ground by mycorrhizal networks”); and
an air and water permeable solid structure on a top side of the conduits functioning to prevent compaction of the contents of the materials in the soil conduits (see “grates” annotated on Fig 19 below; functional language: capable of preventing compaction).
PNG
media_image3.png
277
461
media_image3.png
Greyscale
Regarding claim 21:
Gangadhar discloses the limitations of claim 20 above and further discloses wherein the structure is a grate (see Fig 19).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gangadhar, as applied to claim 12 above, as best understood in light of the 112(b) rejections addressed above.
Regarding claim 18:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein, the genus of the trees is selected to associate with mycorrhizae fungi to create a common mycorrhizal network (CMN) (Pg 72: “Green Webs”; Pg iv-v: “Green Webs are networks of mature trees with interconnected root systems made possible via mycorrhizal fungal activity…connecting tree roots below ground by mycorrhizal networks” - such a ‘Green Web’ effect would require trees of a genus capable of associating with a common mycorrhizae fungi)
Gangadhar does not explicitly disclose that the trees in the pictured tree architecture embodiment shown in Fig 19 are of a genus that associates with the specific mycorrhizae, Arbuscular Mycorrhizae (AM).
However, Gangadhar further discusses common mycorrhizae forms, contemplating that Arbuscular Mycorrhizae (AM) and Ectomycorrhizae (EM) are the most important forms of mycorrhizae in the urban setting because of their prominence on many economically important garden and landscape plants and known benefits to their related plant hosts (Pg 16, section 2.3.2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have specifically included trees which associate with arbuscular mycorrhizae in the tree architecture embodiment disclosed by Gangadhar, as suggested by Gangadhar, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Gangadhar, Arbuscular Mycorrhizae (AM) and Ectomycorrhizae (EM) are the most important forms of mycorrhizae in the urban setting because of their prominence on many economically important garden and landscape plants and known benefits to their related plant hosts (Pg 16, section 2.3.2).
Regarding claim 19:
Gangadhar discloses the limitations of claim 12 above and further discloses wherein, the genus of the trees is selected to associate with mycorrhizae fungi to create a common mycorrhizal network (CMN) (Pg 72: “Green Webs”; Pg iv-v: “Green Webs are networks of mature trees with interconnected root systems made possible via mycorrhizal fungal activity…connecting tree roots below ground by mycorrhizal networks” - such a ‘Green Web’ effect would require trees of a genus capable of associating with a common mycorrhizae fungi)
Gangadhar does not explicitly disclose that the trees in the pictured tree architecture embodiment shown in Fig 19 are of a genus that associates with the specific mycorrhizae ectomycorrhizae (ECM) fungi.
However, Gangadhar further discusses common mycorrhizae forms, contemplating that Arbuscular Mycorrhizae (AM) and Ectomycorrhizae (EM) are the most important forms of mycorrhizae in the urban setting because of their prominence on many economically important garden and landscape plants and known benefits to their related plant hosts (Pg 16, section 2.3.2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have specifically included trees which associate with ectomycorrhizae (ECM) fungi in the tree architecture embodiment disclosed by Gangadhar, as suggested by Gangadhar, the result having a reasonable expectation of success. One would have been motivated to make such a modification because, as disclosed in Gangadhar, Arbuscular Mycorrhizae (AM) and Ectomycorrhizae (EM) are the most important forms of mycorrhizae in the urban setting because of their prominence on many economically important garden and landscape plants and known benefits to their related plant hosts (Pg 16, section 2.3.2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Doherty (NPL – “Positively the Pits!”), Landscape Architect (NPL – ‘Market Street Tree Grate’), Lilborn (US 2008/0155891), Urban (US 2005/0155285), Cohen (CN 111587067 A), Sandlin (US 20080098647), Allen (US 20090255868), Zhang (CN 108843081 A), Yu (CN 108157111 B), Tuser (WO 2024183837 A2), Park (KR 900004710 Y1), and Dunkel (EP 0141772 B1) exhibit similarities to the present invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOK V SCHMID whose telephone number is (571)270-0141. The examiner can normally be reached M-F 8:30-5:30ish.
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, Joshua Huson, can be reached on 571-270-5301. The 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.
/B.V.S./Examiner, Art Unit 3642
/JOSHUA D HUSON/ Supervisory Patent Examiner, Art Unit 3642