6DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/27/2025 has been entered.
Status of claims
Claims 1, 8, 24, 25, 29 and 30 as amended on 5/27/2024 are pending and under examination.
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 1, 8, 24, 25, 29 and 30 as amended are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0156104 (Bottinelli), US 8,039,239 (Reeves), Daniell et al (IDS reference; “Commercial Biomass Syngas Fermentation, Energies, 2012, 5, 5372-5417) and Chen et al. (International Journal of Hydrogen Energy, 2011, 36, pages 117-11737).
The cited US 2010/0156104 (Bottinelli) discloses a method for utilizing a gas comprising H2, CO, and CO2 and converting the gas into electricity and into organic alcohol and organic acid including ethanol and acetate substances (see entire document including abstract and figure 5); wherein the method comprise steps:
A) providing a gas stream comprising H2, CO, and CO2 (see abstract, see par. 0007, par. 0050-0052; table 2; figure 5).
B) converting at least a part of the gas stream into electrical energy (par. 0057 and figure 5),
C) converting at least a part of the gas stream to the organic substances in a biotechnological fermentation process (see par. 0059-0060; see figure 5), wherein the organic substances are ethanol (product 262 at par. 0059 and on figure 5) and acetate (see product 260 at par. 0059 and on figure 5); and
D) optionally repeating method steps B) and C);
wherein in the cited method the method step B (converting at least a part of the gas stream into electrical energy (see figure 5, item 117) and the method step C (converting at least a part of the gas stream to the organic substances including ethanol (see product 262 on figure 5) and acetate (see product 260 on figure 5) are carried out in parallel and/or simultaneously in one intergraded process within the broadest reasonable meaning of the claims; and
wherein the fermentation process (see par. 0059) of the step C) is fermenting at least a part of gas stream (gas 44 on figure 5) with acetogenic bacteria including Clostridium (bacteria that produce acetic acid 260 on figure 5 from syngas 44); and
Although the cited US 2010/0156104 (Bottinelli) does not explicitly describe the use of a specific bacterial species Clostridium ljungdahlii or Clostridium autoethanogenum, it clearly teaches the use of bacteria belonging to the genus of Clostridium for fermenting gas comprising H2, CO, and CO2 to organic substances comprising ethanol and acetic acid (see par. 0059-0060 and fermentation reactions Rx3, Rx4, Rx5 and RX6 demonstrating conversion of gas comprising H2, CO, and CO2 into ethanol and acetic acid). In the cited method the acetogenic bacteria Clostridium is considered to be “capable to carry out Wood-Ljungdahl metabolic pathway” within the meaning the claims because the Wood-Ljungdahl metabolic pathway is a conversion of carbon dioxide to acetate by bacteria (in view of definition of specification, page 5) and because this microbial conversion is explicitly shown by the cited document as reaction 6 or as “Rx6” (see page 7, last line of par. 0059-0060) in the process of conversion syngas to organic acid via microbial fermentation by bacteria belonging to Clostridium (par. 0059-0060, figure 5).
Thus, the cited process comprise the same active steps as required by claimed method (claim 1).
Further, as applied to claims 1, 29 and 30: Although the cited US 2010/0156104 (Bottinelli) does not explicitly describe the use of specific bacterial species Clostridium ljungdahlii or Clostridium autoethanogenum, it clearly teaches to use bacteria belonging to the genus of Clostridium. It is well known in the art that Wood-Ljungdahl metabolic pathway or WL pathway is employed by anaerobic organisms, most of which are Clostridium including species of Clostridium ljungdahlii or Clostridium autoethanogenum which produce organic C2-C6 alcohols and acids. For example: see US 8,039,239 (Reeves) at col. 4, lines 34-37. The cited US 8,039,239 (Reeves) clearly teaches that genes coding for enzymes in the Wood-Ljungdahl pathway of include genes coding for ethanol and acetate production (see figures 1-2; see table 2; see paragraph bridging col. 7 and col. 8). Furthermore, the prior art recognizes that in the commercial industrial applications for syngas fermentations the Clostridium bacteria belonging to Clostridium ljungdahlii and Clostridium autoethanogenum are the primary Clostridium species for production of ethanol (see the cited reference by Daniell at page 5378, lines 11-12 and figure 1 on page 5384).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the claimed invention was filed to modify method of US 2010/0156104 (Bottinelli) by utilizing bacterial species of Clostridium ljungdahlii or Clostridium autoethanogenum as representatives of genus Clostridium used in the method of US 2010/0156104 (Bottinelli) with a reasonable expectation of success in converting gas comprising H2, CO, and CO2 and producing organic substances because the cited US 2010/0156104 (Bottinelli) clearly teaches to use bacteria belonging to the bacterial genus of Clostridium for converting of syngas into organic substances including alcohol and acetic acid and because bacteria of genus Clostridium including species of Clostridium ljungdahlii or Clostridium autoethanogenum, are well known and have been used for converting of syngas into organic substances including acetic acid via WL pathway as evidenced by the cited US 8,039,239 (Reeves). One of skilled in the art would clearly recognize that Clostridium ljungdahlii is a suitable bacteria in the process of US 2010/0156104 (Bottinelli) because Bottinelli explicitly teaches the use of bacteria from the genus Clostridium that are capable for converting of syngas into organic substances including acetic acid. Moreover, the prior art recognizes that in the commercial industrial applications for gas fermentations the Clostridium bacteria belonging to Clostridium ljungdahlii and Clostridium autoethanogenum are the primary Clostridium species for production of ethanol (Daniell).
Thus, the claimed invention as a whole was clearly prima facie obvious, especially in the absence of evidence to the contrary.
The claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Further, as applied to the claim 1 wherein clause A, drawn to the use of a gas stream comprising “a blast furnace gas from a blast furnace in steel making”, it is noted that the cited US 2010/0156104 (Bottinelli) clearly teaches the use of a gas stream comprising identical components comprising H2, CO, and CO2 (see table 2, for example) as required by the claimed method. The cited US 2010/0156104 (Bottinelli) does not explicitly recite a source of gas as being a blast furnace gas from steel making industry. But it is well known that a blast furnace gas composition from steel making industry includes identical components comprising H2, CO, and CO2 as the gas in the cited method of US 2010/0156104 (Bottinelli) and as required for the claimed method. (For composition of a blast furnace gas see table 5, page 11731 of the reference by Chen). Thus, the choice of a particular source of a gas stream substrate for a particular microbial fermentation is an obvious variation or substitution when this gas composition comprises identical components as required for this particular microbial fermentation, regardless specific source of a gas stream. Moreover, the cited primary US 2010/0156104 (Bottinelli) recognizes that the synthesis gas, which is used in the cited method for producing organic substances and electrical energy (as explained above), is also used in still making (par. 007, lines 6-10). The cited reference by Chen also recognizes that a gas stream comprising H2, CO, and CO2 is provided by “blast furnace” that is used by “steel” making corporation (see title and contents of table 5).
Thus, the claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
With respect to claim 8: in the cited process of US 2010/0156104 (Bottinelli) a generation of the electrical energy is performed by means of a gas turbine process and/or a steam turbine process (par. 0057, line 13) as encompassed by claim 8.
With respect to claims 24 and 25 it is noted that steps of providing a syngas stream and converting the syngas into electrical energy and organic substances in the cited method of US 2010/0156104 (Bottinelli) comprise same generic devices including a gas source, a power-generating device, a fermenter and means for feeding gas (see figure 5) within the broadcast meaning of these claims drawn to utilizing a gas stream for conversion into electrical energy and organic substances.
Thus, the claimed invention as a whole was clearly prima facie obvious, especially in the absence of evidence to the contrary.
The claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
Response to Arguments
Applicant's arguments filed on 11/26/2025 and on 5/27/2025, contents of Declaration by Simon Beck filed on 11/26/2025 have been fully considered and contents of Declaration by Thomas Haas filed on 1/19/2022 have been revisited but they are not found persuasive.
With regard to claim rejected under 35 U.S.C. 103 Applicant’s main arguments are that the cited US 2010/0156104 (Bottinelli) is not in the same field as the present application and/or claims because it does not mention anything about “blast furnace gas” as a source of gas stream comprising H2, CO, and CO2 and because it does not teach particular Clostridium ljungdahlii and/or Clostridium autoethanogenum species as representatives of Clostridium for gas fermentation or for the furnace gas fermentation.
The first argument is not found persuasive because in the claimed method “blast furnace gas“ is a source of gas comprising H2, CO, and CO2 and the gas used in the cited method of US 2010/0156104 (Bottinelli) comprises the same H2, CO, and CO2 (see abstract, see par. 0007, par. 0050-0052; table 2; figure 5). The cited prior art clearly demonstrates that blast furnace gas comprises H2, CO, and CO2 (see table 5 of Chen) that are required by the claims. Moreover, the instant application describes that a gas source can be selected from a variety of gases including both synthesis gas, blast furnace gas and gases released during gasification of organic matter (par. 0036 of published application) that are the same gases as disclosed by the cited US 2010/0156104 (Bottinelli).
In particular, Applicants also argue that blast furnace gas is provided/generated as an intermittent gas stream, and, thus, not all bacteria (but solely the claim-recited species) would survive and retain metabolic activity after a period of starvation.
This argument is not found persuasive for the very least reason that the claimed method does not mention anything about interruption in gas supply.
Moreover, specification example 3 discloses and states that bacteria Moorella thermoacetica (formerly known as Clostridium thermoacetica) survive and retain metabolic activity after a period of starvation (par. 0146 of published application) as the claimed bacteria Clostridium ljungdahlii survives (table at par. 0140) to more or less degree depending on variations of culture conditions. It is well knonw that all Clostridium can survive without an external organic carbon source by forming highly resilient spores. In their vegetative (growing) state, they require carbon sources, but under nutrient-deprived or otherwise unfavorable conditions, they enter a dormant, non-growth state as spores. Thus, the survival of Clostridium upon interruption of nutrient supply (or a substrate gas supply) is a well and reasonably expected feature.
With regard to the second argument that cited references do not teach or suggest Clostridium ljungdahlii and Clostridium autoethanogenum species as representatives of Clostridium for gas fermentation or for fermentation of gas comprising H2, CO, and CO2, it is noted that the prior art recognizes that in the commercial industrial applications for gas fermentations the Clostridium bacteria belonging to Clostridium ljungdahlii and Clostridium autoethanogenum are the primary Clostridium species for production of ethanol (see reference by Daniell).
Some experiments disclosed in the last Declaration (Declaration by Simon Beck filed on 11/26/2025) present data related to metabolic activity and production of ethanol and acetate by claim-recited Clostridium autoethanogenum and by the other representative of Clostridium such as Clostridium carboxidivorans on syngas in the presence of oxygen (sections III and IV). The results demonstrate that metabolic activities of both bacteria decrease in the presence of oxygen. The significance of this finding is unclear as related to the claimed method and to the cited prior art methods because syngas discussed in the cited prior art references and the claimed blast furnace gas both do not contain oxygen.
The cited US 2010/0156104 (Bottinelli) clearly teaches to use bacteria belonging to the bacterial genus of Clostridium for converting of syngas into organic substances including alcohol and acetic acid. The bacteria of genus Clostridium including species of Clostridium ljungdahlii and/or Clostridium autoethanogenum, are well known and have been used for converting of syngas into organic substances including ethanol and acetic acid via WL pathway as evidenced by the cited US 8,039,239 (Reeves). Thus, one of skilled in the art would clearly recognize that Clostridium ljungdahlii is a suitable bacteria in the process of US 2010/0156104 (Bottinelli) because Bottinelli explicitly teaches the use of bacteria from the genus Clostridium that are capable for converting of syngas into organic substances including acetic acid.
The claimed subject matter fails to patentably distinguish over the state art as represented be the cited references. Therefore, the claims are properly rejected under 35 USC § 103.
No claims are allowed.
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Vera Afremova
January 9, 2026
/VERA AFREMOVA/ Primary Examiner, Art Unit 1653