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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/26/2025 has been entered.
Claim Objections
The previous claim objections are withdrawn in light of the amended claims.
Claims 3-4 and 17-19 are objected to because of the following informalities:
Regarding claims 3-4 and 17-19, in multiple lines, the word “methanise” and words related to it should be spelled “methanize” with a “z” instead of an “s”.
Regarding claim 3, in line 5, the claim recites the limitation “screening of green waste from the composting step”. The phrase “screening of green waste from the composting step” should be “screening of said green waste from the composting step”.
Regarding claim 3, in line 12, the claim recites the limitation “occupied by air”. The phrase should be “occupied by the air”.
Regarding claim 4, in line 1, the preamble of the claim does not exactly correspond to the other claims’ preambles. Instead of “The method for preparing according to” the preamble should read, “The method for preparing the methanization unit, for methanizing the liquid effluents, according to” in order to match parent claim 3.
Regarding claim 4, in line 1, the preamble of the claim lowercases the word “claim”. Applicant should either capitalize the word or lowercase the corresponding word in the remaining dependent claims.
Regarding claim 4, in line 4, the term “metre” should be “meter”.
Regarding claims 17-19, in lines 1-2, instead of “The method for preparing a methanisation unit for methanising liquid effluents according to” the preamble should read, “The method for preparing the methanization unit, for methanizing the liquid effluents, according to” in order to match parent claim 3.
Regarding claim 17, in lines 2-3, the term “said culture substrate” should be “said reusable culture substrate”.
Regarding claim 18, in line 5, the term “the culture substrate” should be “the reusable culture substrate”.
Regarding claim 19, in line 3, the term “is sent back” should be “are sent back”.
Regarding claim 19, in line 3, the term “as input” should be “as an input”.
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 18-19 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 18 recites the limitation “the output” in line 6. There is insufficient antecedent basis for this limitation in the claim. The phrase should be “an output”.
Regarding dependent claim 19, this claim is rejected for the same reason as the base claim upon which it depends.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3-4 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (“Light and Electron Microscopic Examinations of Methane-Producing Biofilms from Anaerobic Fixed-Bed Reactors”) (previously cited) in view of Medoff (US 20090286295) (previously cited), Chen (CN 101709004) (machine translation) (previously cited), and Matsumoto (JP 2002219442) (machine translation) (previously cited).
Regarding claim 3, Robinson discloses a method for preparing a methanisation unit (pg. 127 under “Digestors”, “experimental digestors”), for methanising liquid effluents (pg. 127, col. 2, under “Digestors”, “Each reactor had a liquid volume of 5 liters”), comprising in order the following steps:
collecting green waste (pg. 127 under “Digestors”, “blocks of pine”);
inserting said green waste into said methanisation unit so as to form a structured packing (pg. 127 under “Digestors”, “digestors were each packed with one of the following … blocks of pine”),
wherein the structured packing is a culture substrate consisting of elements, which elements are made up of more than 50% in number of wood elements (pg. 127 under “Digestors”, “blocks of pine”) of which at least one dimension is greater than 80 mm (pg. 127 under “Digestors”, “blocks of pine (84.9 by 2.6 by 2.6 cm)”).
Robinson does not disclose:
composting said green waste;
screening of [sic, “said”] green waste, the screening being carried out at a size between 30 mm and 80 mm; and
inserting said green waste resulting from the screening step into said methanisation unit
air; and, wherein a volume occupied by air in said culture substrate is greater than 50% relative to a total volume of said culture substrate
a reusable substrate
Regarding feature 1, Chen discloses comprising a composting step before a screening step (paragraphs [0033]-[0034]).
In the analogous art of composting solid waste, it would have been obvious to one skilled in the art before the effective filing date to modify modified Robinson with the composting step before the screening step of Chen in order to better package the end product for organic fertilizer (Chen, paragraphs [0008] and [0050]), as well as for composting materials for the purposes of producing biogas (Chen, paragraphs [0047]-[0048]).
Regarding feature 2, Matsumoto discloses a dimension comprised between 10 mm and 1000 mm (paragraph [0007]).
Regarding the phrase “the screening being done at a dimension comprised between 30 mm and 80 mm”, although modified Robinson teaches a screening step, it does not disclose between 30 mm and 80 mm; however, the branches of secondary reference Matsumoto are inherently being sorted by some method (see Matsumoto, paragraph [0007]). Additionally, Matsumoto’s range overlaps the claimed range. See MPEP § 2144.05(I) “Overlapping, Approaching, And Similar Ranges, Amounts, And Proportions”: specifically, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists” barring a “showing of criticality of the claimed range”.
In the analogous art of fermentation tanks, it would have been obvious to one skilled in the art before the effective filing date to modify the dimension of the branches or biomass of modified Robinson to be within the dimensions of 30 mm to 80 mm as in Matsumoto in order to avoid clogging of the biomass contact material in the methane fermenter (Matsumoto, paragraph [0007]).
Regarding features 2 and 3, Medoff discloses a screening step (paragraph [0043]) before the insertion step (paragraphs [0124] applies to feedstock preparation; paragraphs [0126]-[0128], both shearing and passing through a screen are pretreatment steps).
In the analogous art of fermenting biomass, it would have been obvious to one skilled in the art before the effective filing date to modify modified Robinson to include a screening step of Medoff in order to increase reaction rates of bacteria by increasing the effective surface area of the substrate for fermenting bacteria.
Regarding feature 4, Medoff discloses:
collecting green waste (biomass feedstock is collected in Fig. 1, element 110 “feed preparation”; paragraph [0122])
wherein a volume occupied by air in said culture substrate is greater than 50% relative to a total volume of said culture substrate (paragraph [0013]).
In the analogous art of fermenting biomass, it would have been obvious to one skilled in the art before the effective filing date to modify the porosity of the culture substrate to be by volume greater than 50% air relative to the total volume of the culture substrate, that is greater than 50% porosity, in order to increase reaction rates of bacteria by increasing the effective surface area of the substrate for fermenting bacteria.
Regarding feature 5, specifically a “reusable” culture substrate, the examiner deems that this term is inherent to the wooden substrate already provided in the combination of references, as the composition of the combination’s substrate already matches that of the Applicant’s invention.
Regarding claim 4, Robinson discloses the collecting step (pg. 127, under “Digestors”, obtaining “blocks of pine”), and, a majority of ground elements obtained from the grinding have a largest dimension that is less than a [“meter”] (pg. 127 under “Digestors”, “blocks of pine (84.9 by 2.6 by 2.6 cm)”).
Robinson does not disclose further comprising a grinding step after the collecting step and before the screening step; the grinding being a slow grinding, so as to obtain that a majority of ground elements obtained from the grinding have a largest dimension that is less than a [“meter”].
Medoff discloses further comprising a grinding step (paragraph [0014]) after the collecting step (biomass feedstock is collected in Fig. 1, element 110 “feed preparation”; paragraph [0122]) and before the screening step (paragraphs [0043] and [0127]-[0129]); so as to obtain that a majority of ground elements obtained from the grinding have a largest dimension that is less than a meter (paragraphs [0139]-[0144]).
In the analogous art of fermenting biomass, it would have been obvious to one skilled in the art before the effective filing date to modify modified Robinson to include a grinding step of Medoff in order to increase reaction rates of bacteria by increasing the effective surface area of the substrate for fermenting bacteria.
Regarding the phrase “the grinding being a slow grinding”, the grinding of modified Robinson would be capable of being slow, as it is conducted by a rotary knife cutter in Medoff (Medoff, paragraph [0025]). It would have been obvious to one skilled in the art before the effective filing date to modify the speed of the grinding to be slow in order to shear the biomass to an average length-to-diameter ratio of greater than 5/1 for increasing the effective surface area of the substrate for fermenting bacteria (Medoff, paragraph [0025]).
Regarding claim 17, Robinson discloses wherein said liquid effluents are sent to a culture substrate (pg. 127 under “Digestors”, “fresh swine waste diluted with water”).
Modified Robinson teaches said culture substrate (see rejection to claim 3).
Allowable Subject Matter
Claims 18-19 would be allowable if rewritten to overcome claim 18’s and 19’s rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 18, Robinson discloses inserting a culture substrate into a methanization tunnel (pg. 127 under “Digestors”, “poly-vinyl chloride pipe”);
sending the liquid effluents into the methanization tunnel (pg. 127 under “Digestors”, “fresh swine waste diluted with water”).
Modified Robinson teaches the reusable culture substrate (see claim 3).
Modified Robinson does not teach:
an upstream methanization tunnel;
inserting the culture substrate into a downstream methanization tunnel; and
the liquid effluents treated at the output of the upstream methanization tunnel are sent into the downstream methanization tunnel.
Regarding the untaught features, the prior art of record, alone or in combination, does not teach or fairly suggest the untaught feature within the claim environment.
Regarding claim 19, Robinson discloses liquid effluents (pg. 127 under “Digestors”, “fresh swine waste diluted with water”) and a methanization tunnel (pg. 127 under “Digestors”, “poly-vinyl chloride pipe”).
Robinson does not disclose wherein from 30% to 60% of the liquid effluents treated at the output of the downstream methanization tunnel [sic, “are”] sent back as [sic, “an”] input of the upstream methanization tunnel.
Regarding the undisclosed feature, the prior art of record, alone or in combination, does not teach or fairly suggest the undisclosed feature within the claim environment.
Additional Prior Art References
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Sánchez-Sánchez, et al. “Using low-cost porous materials to increase biogas production: A case study in Extremadura (Spain)” – This non-patent literature describes using porous agricultural and forestry wastes to increase biogas production during anaerobic digestion of sheep manure and cheese whey.
Response to Arguments
Applicant’s arguments filed 12/26/2025 have been fully considered but they are not persuasive.
Regarding Applicant arguments, pg. 5 of 14, the Examiner thanks the Applicant for the explanation of the percentages used in the claims.
Regarding Applicant arguments, pgs. 6 and 7 of 14, Applicant argues that Robinson in view of Medoff are not combinable. According to Medoff, the biomass can have a porosity greater than 50% (paragraph [0013]). Applicant argues the “biomass” differs from wooden elements. However, Medoff’s biomass can comprise wood (paragraph [0015]), and this biomass can be used for the production of a hydrocarbon, specifically, biogas (paragraph [0417]) that includes methane (paragraph [0039]).
Regarding Applicant arguments, pg. 7 of 14, Applicant argues that Chen and the other cited references do not disclose a composting step of the green waste. However, Chen discloses decomposing and fermenting compost materials (paragraph [0020]) as well as biogas generation (paragraph [0032]). This is the process that is cited in the limitations: “collecting green waste and composting green waste” (from independent claim 3), and in accordance with Applicant arguments about methanization to produce biogas, Chen discloses the generation of biogas as well (paragraph [0032]). In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Additionally, despite differences between the motivation to the instant invention (see paragraph [0015] of this application’s U.S. Publication) and the previous Office Action’s motivation statement (see Chen’s motivation statement to the rejection to claim 3), the Examiner is allowed to combine references for other reasons than those given in the application. See MPEP § 2144(IV) “Rationale Different From Applicant’s Is Permissible”. Nevertheless, the motivation statement has been changed to reflect the teachings of the generation of biogas from Chen’s invention.
Regarding Applicant arguments, pg. 8 of 14, the properties of lignin being in the composted material is inherent to the composted material of Medoff, as the material of the instant application and Medoff can be the same (see Medoff’s paragraphs [0015] or [0030], where “biomass” can constitute “wood” among other products). The combination of modified Robinson in view of Chen and Medoff thus inherently provides the properties described. See MPEP § 2112.02(I) “Process Claims — Prior Art Device Anticipates A Claimed Process If The Device Carries Out The Process During Normal Operation”. Evidence that wood contains lignin is also in previously cited Additional Prior Art Ghaffar (“Lignin in straw and its applications as an adhesive”) (see pg. 1, left column: “the word lignin was put forward in 1865 by Schulze to describe the dissolved part of wood when treated with nitric acid”).
Regarding Applicant arguments, pg. 8 of 14, Robinson does not disclose some limitations of independent claim 3; however, the combination of modified Robinson in view of the secondary references do, for the respective motivation statements given above. Arguing Robinson alone for the limitation of “composting” and the sequence of steps is not effective evidence for nonobviousness. In response to Applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding Applicant arguments, pg. 9 of 14, about Medoff, Medoff discloses wooden materials for biomass, among other possible materials so that the collected green waste with the appropriate percentage of air and substrate volumes can be used in bacterial fermentation. Because the porosity of Medoff’s biomass material is greater than 50%, no matter how much biomass material is added to a methanization unit for a structured packing, there will always be more air than biomass (“wherein a volume occupied by air … is greater than 50% relative to a total volume of said reusable culture substrate”) in the structured packing in this two-component system within a methanization unit. Additionally, because the structured packing can be entirely of these porous wooden materials, the independent claim 3 limitation “elements are made up of more than 50% in number of wood elements” is fulfilled as well. Medoff shows that bacterial fermentation processes aided by wooden materials is already known in the prior art (Medoff, paragraphs [0009] and [0015]).
Regarding Applicant arguments, pgs. 9 and 10 of 14, about a fixed bed reactor, the primary reference Robinson already cites a fixed bed reactor. The combination of Robinson in view of Medoff therefore rejects these limitations of independent claim 3. In terms of the sequence of features:
composting
screening, and
inserting
the green waste is fulfilled by the combination of Robinson with Chen (bulleted feature 1), Matsumoto (bulleted feature 2), and Medoff (bulleted features 2-3).
Regarding Applicant arguments, pgs. 10 and 11 of 14, in addition to the motivation statement previously given, Chen is used for composting materials for the purposes of producing biogas (Chen, paragraphs [0047]-[0048]).
Regarding Applicant arguments, pgs. 11 and 12 of 14, Matsumoto’s branch-based fixed bed, Matsumoto’s range overlaps the range in the claims: see the previous Office Action.
Regarding the phrase “the screening being done at a dimension comprised between 30 mm and 80 mm”, although modified Robinson teaches a screening step, it does not disclose between 30 mm and 80 mm; however, the branches of secondary reference Matsumoto are inherently being sorted by some method (see Matsumoto, paragraph [0007]). Additionally, Matsumoto’s range overlaps the claimed range. See MPEP § 2144.05(I): “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
-- rejection to previous claim 3, previous Office Action
The tree branches of Matsumoto constitute green waste as per the specification’s definition:
In the present invention, the term “green waste” designates all of the materials coming from ligno-cellulosic plants and coming from trimming, cutting or the maintenance of these plants, for example during the maintaining of gardens, green areas, forests, hedges, or trees. The green waste can also include the by-products coming from the transformation and the reclaiming of wood, a by-product being a substance or an object coming from a production process of which the first purpose is not the production of this substance or this object.
-- instant specification, pg. 9
Tree branches are used for a fixed-bed packing (Matsumoto, paragraph [0006]), and are particularly noted for not clogging (Matsumoto, paragraph [0007]).
Additionally, regarding a “reusable” and “stable” culture substrate, the examiner deems that these terms are inherent to the wooden substrate already provided in the combination of references, as the composition of the combination’s substrate already matches that of the Applicant’s invention.
Regarding the Applicant arguments on pgs. 12 and 13 of 14, arguments about the percentages of wood elements and culture substrate fraction have already been answered, see Medoff arguments above. Robinson need not disclose these limitations, as they are provided obviously via Medoff, and a motivation is given for this combination:
In the analogous art of fermenting biomass, it would have been obvious to one skilled in the art before the effective filing date to modify modified Robinson to include a screening step of Medoff in order to increase reaction rates of bacteria by increasing the effective surface area of the substrate for fermenting bacteria.
-- previous Office Action
In summary, the obvious combination of modified Robinson in view of Chen, Medoff, and Matsumoto rebuts the patentability of independent claim 3 under 35 U.S.C. § 103.
However, claims 18-19 would be allowable if rewritten to overcome claim 18’s and 19’s rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/N.G.E./Examiner, Art Unit 1799
/MICHAEL A MARCHESCHI/Supervisory Patent Examiner, Art Unit 1799