Alex McBratney et al.

Patent Trials and Appeals Board

Feb 25, 2022

2021003610 (P.T.A.B. Feb. 25, 2022)

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. 13/701,786 03/27/2013 Alex McBratney 025799-0003 6503 25541 7590 02/25/2022 NEAL, GERBER, & EISENBERG SUITE 1700 2 NORTH LASALLE STREET CHICAGO, IL 60602 EXAMINER CORDERO, LINA M ART UNIT PAPER NUMBER 2857 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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): ipusmail@ngelaw.com twilliams@ngelaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALEX McBRATNEY, BUDIMAN MINASNY, JAAP De GRUIJTER, and PHILIP JAMES MULVEY ____________ Appeal 2021-003610 Application 13/701,786 Technology Center 2800 ____________ Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s non-final rejection of claims 39, 40, and 42-61.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as The University of Sydney. Appeal Brief filed December 21, 2020 (“Appeal Br.”), 2. 2 Non-Final Office Action entered August 7, 2020 (“Non-Final Act.”), 1. Appeal 2021-003610 Application 13/701,786 2 CLAIMED SUBJECT MATTER Claim 39 illustrates the subject matter on appeal, and reads as follows: 39. A method of quantifying soil carbon in a unit of land, the method comprising: (a) obtaining an estimated spatial distribution of carbon content in the unit of land by: (i) correlating information associated with the unit of land with soil carbon distribution, and (ii) inputting the correlated information into a carbon content prediction model to predict the estimated spatial distribution of carbon content; and (b) thereafter, independently auditing the obtained estimated spatial distribution of carbon content in the unit of land by: (i) stratifying the unit of land into a plurality of strata based, at least partly, on the obtained estimated spatial distribution of carbon content; (ii) reducing sampling variance and fraudulent manipulation of soil carbon quantification results by randomly selecting one or more locations from each of one or more of the plurality of strata; (iii) using at least one of a CNS analyser and a near infrared spectroscopic analyser to determine sample carbon content associated with the one or more selected locations; and (iv) determining total carbon content in the unit of land based, at least partly, on the sample carbon content. Appeal Br. 33 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered March 22, 2021 (“Ans.”): Appeal 2021-003610 Application 13/701,786 3 I. claims 39, 40, 42, 48-50, 52, and 56-61 under 35 U.S.C. § 103 as unpatentable over Miklos3 in view of Gibbs4 and Graham;5 II. claims 43-47 and 53 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, and Simbahan;6 III. claims 51 and 55 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, and Peltoniemi;7 and IV. claim 54 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, Simbahan, and Peltoniemi. FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we affirm the Examiner’s rejections of claims 39, 40, and 42-61 under 35 U.S.C. § 103 for reasons well-expressed by the Examiner in the Non-Final Action and the Answer. We add the following primarily for emphasis. We review appealed rejections for reversible error based on the 3 Miklos, et al., Mapping and Comparing the Distribution of Soil Carbon Under Cropping and Grazing Management Practice in Narrabri, North- West New South Wales, 48 Australian Journal of Soil Research, 248-257 (2010). 4 Gibbs, et al., Monitoring and Estimating Tropical Forest Carbon Stocks: Making REDD a Reality, 2 Environment Research Letters, 1-13 (2007). 5 Graham, et al., Fire and Terrain Controls on Soil Carbon in Chaparral Watersheds, 2001-2006 Mission, Kearney Foundation of Soil Science: Soil Carbon and California’s Terrestrial Ecosystems, Final Report: 2002019 (2007). 6 Simbahan, et la., Fine-Resolution Mapping of Soil Organic Carbon Based on Multivariate Secondary Data, 132 Geoderma, 471-489 (2006). 7 Peltoniemi, et al., Stratification of Regional Sampling by Model-Predicted Changes of Carbon Stocks in Forested Mineral Soils, 41 Silva Fennica, 527 (2007). Appeal 2021-003610 Application 13/701,786 4 arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). Rejection I We turn first to the Examiner’s rejection of claims 39, 40, 42, 48-50, 52, and 56-61 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs and Graham. To address this rejection, the Appellant presents arguments directed to independent claim 39, and argues that independent claims 56 and 58 “are patentably distinguished over Miklos in view of Gibbs and Graham” for “similar reasoning” as claim 39. Appeal Br. 6-24. We, therefore, select claim 39 as representative, and limit our discussion of the claims subject to this rejection accordingly. 37 C.F.R. § 41.37(c)(1)(iv). The Appellant argues that although Miklos discloses “performing a stratified random sampling to determine replicate soil sampling sites within each stratum, Miklos does not employ any random selection of any locations to reduce sampling variance and fraudulent manipulation.” Appeal Br. 19 (citing Miklos pp. 248, 249). The Appellant argues that “Miklos fails to teach any reduction in any sampling variance or fraudulent manipulation of soil carbon quantification results by randomly selecting one or more locations from each of one or more of a plurality of strata.” Id. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. Appeal 2021-003610 Application 13/701,786 5 Consistent with the Examiner’s findings, Miklos discloses a method for quantifying soil carbon in a unit of land that involves conducting a preliminary soil survey using a multi-sensor platform to map areas of soil variation, using the sensor data and elevation data to divide (stratify) the land unit into 20 strata, and randomly identifying three replicate soil sampling sites within each stratum of the 20 strata, which Miklos refers to as “stratified random sampling.” Non-Final Act. 10-11 (citing Miklos p. 249; Figs. 3 and 5); see also Ans. 6. The Examiner finds-and the Appellant does not dispute-that the Appellant’s Specification indicates that “randomization of samples is required to avoid variance of samples to be manipulated, and [] fraudulent manipulation is avoided by selecting sampling points with randomness.” Compare Ans. 6 (citing Spec. ¶¶ 105, 123), with Reply Br. 2-6. Nor does the Appellant challenge the Examiner’s finding that “according to the specification, when random sampling is performed, sampling variance and fraudulent manipulation are implicitly and automatically addressed (i.e., avoided or reduced).” Id. Consequently, it is undisputed on the record before us that conducting “stratified random sampling” to determine three replicate soil sampling sites within each of 20 strata (randomly selecting one or more sampling locations from each of one or more of the plurality of strata) as disclosed in Miklos mitigates negative consequences of (reduces) sampling variance and fraudulent manipulation of soil carbon quantification results, as recited in claim 39. We note that claim 39 does not require any particular level or degree of the recited reduction in sampling variance and fraudulent manipulation of soil carbon quantification results, and, therefore, Appeal 2021-003610 Application 13/701,786 6 encompasses any degree whatsoever of such reduction. The Appellant’s arguments appear to be premised on an implicit assertion that the applied prior art references must explicitly teach a reduction in sampling variance and fraudulent manipulation of soil carbon quantification results, as recited in claim 39, in order to render this claim limitation obvious. Such a requirement does not exist, however, to establish prima facie obviousness. Rather, “inherency may supply a missing claim limitation in an obviousness analysis . . . when the limitation at issue is the ‘natural result’ of the combination of prior art elements.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194-1195 (Fed. Cir. 2014); see also In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“[M]ere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not distinguish a claim drawn to those things from the prior art.”). As discussed above, the Appellant’s Specification indicates that random sampling-as disclosed in Miklos-mitigates the effects of (reduces) sampling variance and fraudulent manipulation of soil carbon quantification results. Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir. 2012) (analyzing inherency based on the disclosure of the “patent itself”); Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327-28 (Fed. Cir. 2001) (finding that features were inherent “as evidenced by [the patentee]’s own documents”). Such reduction in sampling variance and fraudulent manipulation of soil carbon quantification, therefore, would have naturally resulted from Miklos’ stratified random sampling process. The Appellant argues that although Gibbs discloses “assessing how forest carbon stocks vary across a country before designing a stratified Appeal 2021-003610 Application 13/701,786 7 sampling scheme,” Gibbs “pertains to ‘estimating aboveground forest biomass carbon,’” and “does not pertain to any quantification of any soil carbon in a unit of land.” Appeal Br. 19 (citing Gibbs p. 2). The Appellant argues that Gibbs explicitly indicates that “[s]oil carbon stock estimation is not discussed here,” and, therefore, “Gibbs expressly disclaims any discussion of soil carbon in a unit of land.” Id. The Appellant argues that, consequently, “Gibbs cannot teach quantifying soil carbon in a unit of land by obtaining an estimated spatial distribution of carbon content in the unit of land by via [sic] correlating information associated with the unit of land with soil carbon distribution, and inputting the correlated information into a carbon content prediction model to predict the estimated spatial distribution of carbon content.” Id. The Appellant’s arguments again do not identify reversible error in the Examiner’s rejection. Gibbs discloses obtaining an initial estimate of how forest carbon stocks vary across a country (a unit of land) based on “[i]nformation on soil types, drainage class, elevation, topography and land-use history,” and using the estimated carbon stocks to define sampling strata. Gibbs pp. 5-7. Gibbs discloses that this approach “greatly increases survey efficiency by reducing unnecessary sampling and ensuring that major variation has been captured.” Ans. 8-11; Gibbs pp. 6-7. As the Examiner explains in the Answer, “although Gibbs is mainly focused on estimating the aboveground forest biomass carbon, the reference is relevant art since it discusses in detail the estimation of forest carbon stocks in a unit of land, and in so doing it provides teachings that are relevant more generally to the methods of estimating other kinds of carbon Appeal 2021-003610 Application 13/701,786 8 stocks, including soil carbon estimation as disclosed by Miklos,” which is a parallel and analogous field of endeavor. Ans. 8-9, 13-14. The Examiner determines that, therefore, one of ordinary skill in the art would find it reasonable to consider this analogous teaching of Gibbs when performing the method of Miklos. Ans. 13-14. The Examiner concludes that “Miklos’ method would be improved by using Gibbs’ suggestion of basing the stratification on an initial estimate of the spatial distribution of soil carbon content, so that one of ordinary skill in the art would have found it obvious to modify the method of Miklos in light of Gibb’s suggestion, and would thus carry out the recited steps of claim 39.” Ans. 13. The Appellant argues in the Reply Brief that the Examiner’s “reasoning incorrectly minimizes that Gibbs expressly does not discuss soil carbon stock estimation.” Reply Br. 3. The Appellant argues that “only by improperly overgeneralizing all forms of carbon stock estimation as being interchangeable does the Office even attempt to rely on the disclosure of Gibbs which pertains to aboveground forest carbon stock assessment to modify the disclosure of Miklos which pertains to soil carbon stock assessment.” Id. The Appellant, however, either misapprehends or mischaracterizes the Examiner’s position, which is not based on a determination that all forms of carbon stock estimation are “interchangeable.” Rather, as discussed above, the Examiner finds that estimating aboveground forest biomass carbon as disclosed in Gibbs is a parallel field of endeavor, and thus analogous to, estimating soil carbon as disclosed in Miklos, and, therefore, one of ordinary skill in the art would have considered Gibbs’ teachings to be relevant to Miklos’ method. Ans. 13-14. Appeal 2021-003610 Application 13/701,786 9 The Appellant further argues in the Reply Brief that “while Gibbs includes using broad forest types and forest conditions to determine a number of plots needed for a stratified sampling scheme, neither the Office’s cited portions of Gibbs (nor any other portion of Gibbs) teach[es] or suggest[s] using any obtained estimated spatial distribution of soil carbon content to determine a plurality of strata which the unit of land is stratified into.” Reply Br. 5-6. The Appellant’s arguments, however, are improperly based on Gibbs alone, and do not take into consideration what a combination of the relied- upon disclosures of Miklos and Gibbs reasonably would have suggested to one of ordinary skill in the art at the time of filing. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references”); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness “is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). One of ordinary skill in the art reasonably would have recognized that Miklos’ method would be improved by incorporating Gibbs’ suggestion of defining sampling strata based on an initial estimate of carbon stock variation across a unit of land. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ([A]n obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for [an examiner] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”); see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art Appeal 2021-003610 Application 13/701,786 10 would reasonably be expected to draw therefrom.”). The Appellant’s arguments, therefore, do not identify reversible error in the Examiner’s rejection. We, accordingly, sustain the Examiner’s rejection of claims 39, 40, 42, 48-50, 52, and 56-61 under 35 U.S.C. § 103. Rejections II-IV We turn now to the Examiner’s rejection of claims 43-47 and 53 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, and Simbahan (Rejection II), rejection of claims 51 and 55 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, and Peltoniemi (Rejection III), and rejection of claim 54 under 35 U.S.C. § 103 as unpatentable over Miklos in view of Gibbs, Graham, Simbahan, and Pelton (Rejection IV). To address these rejections, the Appellant relies on the arguments the Appellant presents for claim 39 (discussed above), and argues that the additional prior art references applied in these rejections do not cure the deficiencies of Miklos, Gibbs, and Graham. Appeal Br. 25-31. Because the Appellant’s arguments do not identify reversible error in the Examiner’s rejection of claim 39 for the reasons discussed above, the Appellant’s arguments also do not identify reversible error in the Examiner’s rejections of claims 43-47, 51, and 53-55 under 35 U.S.C. § 103, which we accordingly sustain. Appeal 2021-003610 Application 13/701,786 11 DECISION SUMMARY Claims 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 39, 40, 42, 48-50, 52, 56-61 103 Miklos, Gibbs, Graham 39, 40, 42, 48-50, 52, 56-61 43-47, 53 103 Miklos, Gibbs, Graham, Simbahan 43-47, 53 51, 55 103 Miklos, Gibbs, Graham, Peltoniemi 51, 55 54 103 Miklos, Gibbs, Graham, Simbahan, Peltoniemi 54 Overall Outcome 39-40, 42- 61 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). AFFIRMED