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 .
Support for the amendments is within the instant application specification.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/14/2024 has been entered.
Applicant’s amendment to the claims filed on 2/10/2026 in response to the Final Rejection mailed on 11/19/2025 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 7-12, 15 are pending.
Claims 1-6, 13-14, 16 are canceled.
Applicant’s remarks filed on 2/10/2026 in response to the Final Rejection mailed on 11/19/2025 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Withdrawn Rejections
The rejection of claim 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements is withdraw in view of Applicant’s cancellation of the claim.
The rejection of claims 7-12, 14-15 under 35 U.S.C. 103 as being unpatentable over unpatentable over Kamdem et al (2016, Water Biomass Valor, cited on PTO-892 dated 11/16/2025) {herein Kamdem ‘16} as evidenced by Kamdem et al (2013, World J Microbiol Biotechnol, cited on PTO-892 filed 8/23/2024) {herein Kamdem ‘13} and Khan et al (2010, Journal of Pure and Applied Microbiology, cited on PTO-892 dated 7/29/2025) {herein Khan} is withdrawn in view of Applicant’s cancellation of claims to recite ‘‘to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest.’ a method of producing a molecule of interest, comprising: continuously steam-cracking a lignocellulosic biomass having a humidity level of between 5% and 27% without using any chemical auxiliary while applying severity factor of between 3 and 5 to the lignocellulosic biomass, to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest.’ And cancellation of claim 14.
Maintained Claim Rejections - 35 USC § 112(b)
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.
The rejection of claims 7-12, 15 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. The rejection has been modified in view of Applicant’s amendment of claims to recite ‘stable over time.’
Regarding claims 7-9 (claims 10-11, 15 dependent thereof), 12, the recitation of the phrase ‘stable over time’ is indefinite because it is unclear what the scope of the phrase is intended to encompass structurally. It is unclear what the phrase ‘stable over time’ is intended to encompass. It is unclear whether ‘stable over time’ refers to its physical or chemical properties and what exactly Applicant means by the recitation ‘stable.’ Additionally, it is unclear from the claims and specification what the ‘stable over time’ is referring to structurally and functionally. Accordingly, the metes and bounds upon which patent protection is sought cannot be ascertained from this phrase.
Regarding claim 7 (claims 8-11 dependent thereof), the recitation of the phrase ‘molecule of interest’ is indefinite because it is unclear what the scope of the phrase is intended to encompass structurally. It is unclear what the phrase ‘molecule of interest’ is intended to encompass. It is unclear whether ‘molecule of interest’ refers to its physical or chemical properties and what exactly Applicant means by the recitation ‘molecule of interest.’ Applicant recites ‘activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest’ within the instant application claim 1. However, the recitation of ‘a chemical or biochemical reaction’ and ‘one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae’ are very broad as Applicant has not clearly defined the limitations of said conditions within the instant application claims. Additionally, it is unclear from the claims and specification what the ‘molecule of interest’ is referring to structurally and functionally. Accordingly, the metes and bounds upon which patent protection is sought cannot be ascertained from this phrase.
RESPONSE TO REMARKS: Applicants remarks filed on 2/10/2026 have been fully considered; however, they are rendered moot in view of the rejection set forth above, which is necessitated by Applicants’ amendment to the claims. Examiner contends that the phrases ‘stable over time’ and ‘molecule of interest’ are indefinite because it is unclear what the scope of the phrases are intended to encompass structurally. It is unclear the limitations of the phrases ‘stable over time’ and ‘molecule of interest.’
New Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7-11, 15 are newly rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for molecules of interest are: biofuel oils, biogas, etc., such as bioethanol, biomethanol, biomethane, etc.) or bioplastics (biomaterials, biocomposites) or bioproducts (proteins, solvents, any other chemical molecule, etc.) (instant application specification para 0051) it does not reasonably provide enablement for all molecules of interest derived from activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. The new rejection is necessitates by Applicant’s recitation of ‘molecules of interest’ in claim 7.
The test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue.” In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). Factors to be considered in determining whether undue experimentation is required are summarized in In re Wands (858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)) as follows: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP § 2164.01(a). The Factors considered to be most relevant to the instant rejection are addressed in detail below.
(A)The breadth of the claims:
Claims 7-11, 15 are drawn to a method of producing a molecule of interest, comprising: continuously steam-cracking a lignocellulosic biomass having a humidity level of between 5% and 27% without using any chemical auxiliary while applying severity factor of between 3 and 5 to the lignocellulosic biomass, to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest. The structure and function of molecules of interest are a large number of molecules.
B) The nature of the invention; C)The state of the prior art; (D) The level of one of ordinary skill; and (E) The level of predictability in the art: As noted above, the scope of the claimed molecules of interest are a large number of molecules. The structure of the claimed molecules of interest to be used in the field of bioenergies or bioplastics or bioproducts is a large number of molecules.
In this regard, it is noted that the reference of Rupakheti et al (2015, ACS Publications, Examiner cited) discloses the small molecule universe of organic molecules with molecular weight < ∼500 Da is estimated to contain ∼10^60 stable compounds. (page 529, column 1, para 1). Synthetic chemistry over the last century has produced ∼60 million compounds (page 529, column 1, para 1).
(F) The amount of direction provided by the inventor and (G) The existence of working examples: The specification discloses the following working examples molecules of interest (i.e. biofuel oils, biogas, etc., such as bioethanol, biomethanol, biomethane, etc.) or bioplastics (biomaterials, biocomposites) or bioproducts (proteins, solvents, any other chemical molecule, etc). Other than the above disclosed species, there is no prior-art or disclosed teaching as to the large number of molecules used in the field of bioenergies or bioplastics or bioproducts. Other than these working examples, the specification fails to disclose any other working examples of molecules of interest used in the field of bioenergies or bioplastics or bioproducts.
In view of the overly broad scope of the claims, the lack of guidance and working examples provided in the specification, the high level of unpredictability, and the state of the prior art, undue experimentation would be necessary for a skilled artisan to make and use the entire scope of the claimed invention. Applicants have not provided sufficient guidance to enable one of ordinary skill in the art to make and use the claimed invention in a manner reasonably correlated with the scope of the claims. The scope of the claims must bear a reasonable correlation with the scope of enablement (In re Fisher, 166 USPQ 19 24 (CCPA 1970)). Without sufficient guidance, determination of having the desired biological characteristics is unpredictable and the experimentation left to those skilled in the art is unnecessarily, and improperly, extensive and undue. See In re Wands 858 F.2d 731, 8 USPQ2nd 1400 (Fed. Cir, 1988).
New Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 7-12, 15 are newly rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamdem et al (2016, Water Biomass Valor, cited on PTO-892 dated 7/29/2025) {herein Kamdem ‘16} as evidenced by Kamdem et al (2013, World J Microbiol Biotechnol, cited on PTO-892 filed 8/23/2024) {herein Kamdem ‘13} and Khan et al (2010, Journal of Pure and Applied Microbiology, cited on PTO-892 dated 7/29/2025) {herein Khan}. The new rejection is necessitated by Applicant’s amendment of claims to recite ‘to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest.’ a method of producing a molecule of interest, comprising: continuously steam-cracking a lignocellulosic biomass having a humidity level of between 5% and 27% without using any chemical auxiliary while applying severity factor of between 3 and 5 to the lignocellulosic biomass, to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest.’
Claims 7-11, 15 are drawn to a method of producing a molecule of interest, comprising: continuously steam-cracking a lignocellulosic biomass having a humidity level of between 5% and 27% without using any chemical auxiliary while applying severity factor of between 3 and 5 to the lignocellulosic biomass, to form a dry pulverulent carbon powder: forming a ready-to-use dry solid composition comprising the dry pulverulent carbon powder and one or more of a microorganism, an enzyme, a microbial biomass, or a micro- algae, wherein the ready-to-use dry solid composition is stable over time: and activating a chemical or biochemical reaction between the dry pulverulent carbon powder and the one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae in the ready-to-use dry solid composition to produce the molecule of interest.
Claim 12 is drawn to a method of producing a ready-to-use dry solid composition, comprising: continuously steam-cracking a lignocellulosic biomass having a humidity level of between 5% and 27% without any chemical auxiliary while applying a severity factor of between 3and 5 to the lignocellulosic biomass, to form a dry pulverulent carbon powder and combining the dry pulverulent carbon powder with one or more of a microorganism, an enzyme, a microbial biomass, or a micro-algae to form the ready-to-use dry solid composition, wherein the ready-to-use dry solid composition is stable over time.
With respect to claims 7-12, 15, Kamdem ‘16 teaches a method wherein biogas (bioethanol) is produced from the steam-cracking banana lignocellulosic biomass (BLB) comprised of bulbs, leaf, sheaths, petioles-midribs, leaf blades, rachis stems and floral stocks (abstract, page 177, column 2, para 1; page 180, column 1, para 1). Kamdem ‘16 teaches said BLB is prepared according to the method of Kamdem ’13 (page 177, column 2, para 1). Evidentiary reference of Kamdem ’13 is cited to demonstrate that the 6 morphological parts of the banana biomass were sun and air-dried for 30 days then ground in a laboratory blender to produce particles (page 2261, column 1, para 1). Evidentiary reference of Khan is cited to demonstrate that dried banana stems and peels lose 84-90% of their moisture content, after drying (table 1). As such, Examiner is interpreting the moisture content of the dried banana parts taught by Kamdem ’16 to be ~9% which is a 90% reduction in moisture. Examiner is interpreting the humidity level recited in claims 7, 9, 12 to be the same as moisture level. As such, Examiner is interpreting ~9% moisture of BLB, taught by Kamdem ’16 to meet the claimed range of between 5% to 27% humidity. Especially since the instant application specification recites ‘biomass having a humidity level that is preferably between 5% and 27% (directly, or optionally after drying) (Instant Application Specification: para 0032). Steam-cracking was carried out at severity factors of 3.16 and 4.29 (page 177, column 2, para 3). Kamdem ’16 further teaches these treatments use water as the sole input reactant (page 176, column 2, para 2). As such, absent evidence otherwise, it is the Examiner’s position that Kamdem ‘16 does not teach the utilization of any chemical auxiliary while applying the severity factor to the dried BLB. Kamdem ‘16 further teaches, after steam-cracking, ash and solid fractions containing sugars were formed (page 177, column 2, para 2 and table 2). Absent evidence otherwise, it is the Examiner’s position that the ash taught by Kamdem ’16 is the same as ‘dry pulverulent carbon powder’ as it known by those of ordinary skill in the art to be a powdery, grayish-white to black residue composed of noncombustible minerals. In addition, Kamden ’16 teaches anaerobic microorganisms are mixed with the ash and solid fractions to produce biogases comprised of H2 and O2 (page 177, column 1, para 1). Absent evidence otherwise, it is the Examiner’s position that the ash and solid fractions produced from the steam-cracking of the BLB to be pulverulent carbon that is ready-to-use as it is comprised of carbon (waste product of banana) and subsequently utilized in conjunction with anaerobic microorganisms, without any additional manipulations, during fermentation for the production of biogas. Since the art teaches the structure of a method of producing a molecule of interest (Examiner interpreted biogas) via steam-cracking lignocellulosic matter, it is the Examiners position that the ‘ready-to-use’ dry solid composition would necessarily be stable over time especially since the utilization of the dry solid composition (pulverulent carbon) results in the production of a biogas (page 180, column 1, para 1). Furthermore, it is the Examiner’s position that the interaction between the pulverulent carbon and anaerobic microorganism necessarily activates a chemical or biochemical reaction as said reaction results in the production of biogas. Kamden ’16 further teaches water is mixed with the lignocellulosic biomass to produce biogas (bioethanol) (page 176, column 2, para 1). Absent evidence otherwise, it is the Examiner’s position that the production of bioethanol as a result of fermentation is in the field of bioenergies since it is known by those of ordinary skill in the art that bioethanol is a biofuel, which is considered bioenergy as it is utilized as an energy source. Kamdem ’16 further teaches that steam cracking increases the accessibility of lignocellulosic biomass derived fermentable substrate to enzymes, leading to a hydrolytic yield of about 95% (page 176, column 2, para 1).
For the reasons stated herein, the teachings of Kamdem ’16 anticipate claims 7-12, 15.
RESPONSE TO REMARKS: Beginning on p. 6 of Applicant’s remarks, in summary, Applicant contends that Kamdem'16 does not teach or suggest anything about forming the ready-to-use dry solid composition that is stable over time by combining the dry pulverulent carbon powder obtained from the thermal treatments of banana plants with a microorganism, an enzyme, a microbial biomass, and/or a micro-algae.
This argument is found to be not persuasive. Examiner contends that the recitation ‘ready-to-use’ is a subjective term that does not limit the scope of the claim as one of ordinary skill in the art would reasonably take the position that the ash and solid fractions produced from the steam-cracking of the BLB to be pulverulent carbon are ready-to-use as they do not necessitate any additional manipulation before subsequently being utilized in conjunction with anaerobic microorganism during fermentation for the production of biogas.
Applicant contends that Kamdem'16 does not teach or suggest that such stable ready-to-use dry solid composition may be activated when desired so that the chemical or biochemical reaction of the dry pulverulent carbon powder in the ready-to-use dry solid composition may take place and the molecule of interest is produced.
This argument is found to be not persuasive. Examiner contends that since the method of Kamdem ‘16 teaches the same steps of what is being claimed within the instant application, then the resultant product “ash-pulverulent carbon powder” would also inherently have the same properties that are being claimed within the instant application such as “stability” and “ready-to-use” properties. Since the Office does not have the facilities for examining and comparing Applicants’ methods with the methods of the prior art, the burden is on the Applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the composition of the prior art does not possess the same material structural and functional characteristics of the claimed composition). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594. ‘; Furthermore, Examiner contends that since the art teaches the structure of a method of producing a molecule of interest (Examiner interpreted biogas) via steam-cracking lignocellulosic matter, it is the Examiners position that the ‘ready-to-use’ dry solid composition would necessarily be stable over time. Examiner contends that one of ordinary skill in the art would reasonably interpret ‘stability’ as a measure of the production of biogas from the dry steam-cracked BLB since Applicant did not limit the scope of the term ‘stability’ within the instant application claims. It is noted that it is well-known in the art that when microorganisms are in low-water environments, they enter a dormancy stage which ensure long-term stability and shelf-life. As such, adding water to a composition comprised of said microorganism and dry pulverulent carbon powder (ash) would necessarily result in the restoration of the metabolic activities of the ‘dried’ microorganism, thereby activating the ‘ready-to-use’ composition.
Applicant contends that Kamden' 13 does not teach or suggest anything about forming the ready-to-use dry solid composition that is stable over time by combining the dry pulverulent carbon powder obtained from the thermal treatments of banana plants with a microorganism, an enzyme, a microbial biomass, and/or a micro-algae, and activating the chemical or biochemical reaction of the dry pulverulent carbon powder in such stable ready-to-use dry solid composition when desired to produce the molecule of interest.
This argument is found to be not persuasive. Examiner contends that Kamden’13 was not utilized as a reference to teach the instant application claims. Examiner contends that Kamdem ’13 was utilized as an evidentiary reference to further elucidate the methods taught by Kamdem ’16.
Applicant contends that Khan teaches the transformation of agricultural wastes such as hardwood sawdust, softwood sawdust, banana stems, banana peels, into sugar by Trichoderma viride.
This argument is found to be not persuasive. Examiner contends that Kahn was utilized as an evidentiary reference to demonstrate that the lignocellulosic biomass has a humidity level of between 5% and 27%. As such, the transformation of agricultural wastes such as hardwood sawdust, softwood sawdust, banana stems, banana peels, into sugar by Trichoderma viride taught by Kahn is not relevant to the instant application.
Conclusion
Status of Claims
Claims 7-12, 15 are pending.
Claims 1-6, 13-14, 16 are canceled.
Claims 7-12, 15 are rejected.
No claims are in condition for allowance.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656