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 .
Claim Status
The claim listing filed is pending January 3, 2022. Claims 1-14 are pending and under examination.
Priority
The present application was filed January 3, 2022 and claims priority to Chilean Patent CL20193094-2019 filed on October 28, 2019. The instant application has not perfected the right of priority to the previous application because a translation of the priority application was not provided with the instant application.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 22, 2023 and comply with the provision of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Notice
It is noted that the application as filed contains numerous grammatical errors and untranslated phrases, as well as phrases that appear to be literal translations with no clear English meaning (e.g., “cemeteries of vehicles” on page 1). While the examiner has attempted to identify these errors, it is suggested that Applicant review the specification, including the claims, for any additional issues consistent with those set forth below.
Specification
The specification is objected to because of the following informalities:
The title, figure 6, and the specification are objected to for “biodesintegrating” as a misspelling of “biodisintegrating”
Page 9, line 5, Figure 5, A confocal electron microscope (STEM) was used”; however, STEM is not an acronym for confocal electron microscope and so should not be included in parentheticals
Page 12, line 15, Table 1, includes three rows with corresponding bacterial species, italicized. Row 4 includes, “Género Sulfolobus” which refers to a genus, and is not italicized. “Género” is not English (37 CFR 1.52(b)(1)(ii) requires the application to be in the English language
Page 25, “Etapa 3: estacionaria del crecimiento bacteriano” should be translated into English. (37 CFR 1.52(b)(1)(ii) requires the application to be in the English language.
Page 30, Table 6: Column 1, row 1, “Matraz” should be translated. “Matraz” is not English. (37 CFR 1.52(b)(1)(ii) requires the application to be in the English language.
Objection for the use of “http” (Page 25) in table 3: The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. 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.
Appropriate correction is required.
Drawings
The disclosure is objected to because of the following informalities:
Page 3, Figure 6 and Figure 7: The greyscale drawings make lines difficult to distinguish from one another.
Page 3, Figure 6: The y-axis is not labeled in the drawing.
Appropriate correction is required.
Claim Objections
Claims 1-5, 7-10, 12, and 13 are objected to because of the following informalities:
Claim 1, line 2, “allowigng” should be “allowing”
Claim 1, line 2, “biodesintegration” should be “biodisintegration” or “bio-disintegration”
Claim 1, lines 5-6, “number Access of the Microbial Genetic Recourses Bank” Should be “Access number of the Microbial Genetic Recources Bank”.
Claim 2, line 8, the phrase “wherein said industrial metal scrap is previously” is grammatically incorrect because it uses the present tense form of “to be” (is), instead of the past tense “was”.
Claim 2, line 9, “necessary, introduced into a swimming pool” lacks a proper conjunction between “necessary” and “introduced”.
Claim 3, lines 11-12, “with aeration, heat or temperature and agitation” Please add punctuation to make the claim clear. It is unclear if the claim is intended to be, “with aeration, heat or temperature, and agitation” or “with aeration, heat, or temperature, and agitation”.
Claim 3, line 11, “allowing” should be “allows”
Claim 4, line 6, “1008 cells/mL” should be “108 cells/mL”.
Claim 4, line 14, the semicolon after “formulated by” is not grammatically appropriate.
Claim 5, line 20, the claimed bacterial species should be italicized.
Claim 5, line 20, “Leptoosprillum sp” and “Leptoosprillum ferriphilum” are misspelled, and lack italicization. They should be changed to, “Leptospirillum sp” and “Leptospirillum ferriphilum”.
Claim 7, line 2, “Leptoosprillum sp” and “Leptoosprillum ferriphilum” are misspelled, and lack italicization. They should be changed to, “Leptospirillum sp and Leptospirillum ferriphilum”.
Claim 7, line 24, “comprising” should be “comprises”
Claim 8, line 27, “1008 cells/mL”. cells/mL” should be “108 cells/mL” to remain consistent with the specification.
Claim 8, line 26, “said solution a bacterial consortium” is grammatically incorrect, please change to “The use of claim 6 wherein said solution comprising”
Claim 10, “to eliminate surface corrosion in a surface” should be changed to “to eliminate surface corrosion on a surface”
Claim 10, line 2, “o” should be removed, or changed.
Claim 12, line 9, “comprising” should be “comprises”
Claim 13, line 11, “comprising” should be “comprises”
Claim 13, line 13, “sulphure” should be “sulfur”
Claim 13, lines 13-14, The claims lacks proper use of commas, articles, and conjunctions.
Appropriate correction is required.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter (process, machine, manufacture, or composition of matter) because although they appear to be directed to processes, the claims contain improper process definitions that fail to meet the requirements of 35 U.S.C 101.
The USPTO Patent Subject Matter Eligibility Guidance provides a means of determining whether a particular claim is patent eligible under 35 U.S.C. 101. The Guidance requires an analysis of multiple steps, Steps 1, 2A, and 2B:
Step 1 - Following a determination of the broadest reasonable interpretation of a claim, is the claim drawn to a process, machine, manufacture, or composition of matter? If the answer to this inquiry is “Yes,” the analysis moves on to step 2A.
Claims 1-5 are rejected under 35 U.S.C 101 because independent claim 1 is directed to ineligible subject matter. Independent claim 1 recites, a “Method allowigng the biodesintegration of industrial metal scrap using a group of extremophilic microorganisms wherein said extremophilic microorganisms are selected from a consortium of bacteria…”. Although the claim uses the term “Method” the claim lacks a series of steps or actions that would result in the outcome of “allowing the biodesintegration of industrial scrap metal”. Therefore, the claim refers to an improper definition of a process, and the answer to Step 1 of the subject matter eligibility analysis is, “No”.
Dependent claims 2-5 fail the subject matter eligibility test for the same reasons as independent claim 1, as they do not introduce any steps or actions that would modify the improper process of claim 1 into eligible subject matter. See MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter, which states that, “A process defines "actions", i.e., an invention that is claimed as an act or step, or a series of acts or steps. As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.". It is recommended that the applicant amend claims 1-5 to include a series of steps and/or actions that would produce the desired result of the claims, in order to satisfy the subject matter eligibility requirements under 35 U.S.C 101.
Claims 6-10 are rejected under 35 U.S.C 101 because independent claim 6 is directed to ineligible subject matter. Claim 6 includes the phrase, “Use of a solution”, without disclosing any specific steps or actions. These claims are all examples of “Use” claims that do not purport to claim a process, machine, manufacture or composition of matter. The MPEP § 2173.05(q) “Use” Claims, first paragraph, states that “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefinites under 35 U.S.C. 112(b). Furthermore, please see section MPEP § 2173.05(q) Section I. A “Use” Claim May Be Rejected Under 35 U.S.C. 101 And/Or 112, which states that “It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections.”.Therefore, the claim refers to an improper definition of a process, and the answer to Step 1 of the subject matter eligibility analysis is, “No”.
Dependent claims 7-10 fail the subject matter eligibility test for the same reasons as independent claim 6, as do not introduce any steps or actions that would modify the improper process of claim 6 into eligible subject matter See MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter, which states that, “A process defines "actions", i.e., an invention that is claimed as an act or step, or a series of acts or steps. As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”. It is recommended that the applicant amend claims 6-10 to include a series of steps and/or actions that would produce the desired result of the claims, in order to satisfy the subject matter eligibility requirements under 35 U.S.C 101.
Additionally, although the specification makes it clear that claims 6-9 have a specific, substantial, and credible utility, the claims as stated refer to an improper process that is not directed to a result. It is recommended that the applicant amend claims 6-10 to include a series of steps and/or actions that would produce a result, in order to satisfy the subject matter eligibility requirements under 35 U.S.C. 101.
Claim 12 includes the use of the biolixiviant solution comprising the bacterial consortium “as colorant”. The specification provides no detail regarding the use of the solution as colorant. Using a specific consortium of bacteria as a “colorant” fails the substantial utility requirement of 35 U.S.C. 101, which excludes “throw-away,” “insubstantial,” or “nonspecific” utilities, such as the use of a complex invention as landfill, as a way of satisfying the utility requirement utilities like using a complex invention as landfill (As stated in MPEP 2017 Guideline for Examination of Applications for Compliance with the Utility Requirement, II. Examination Guidelines for the Utility Requirement (B)(i)). Furthermore MPEP 2107.01 General Principles Governing Utility Rejections, B. Substantial Utility, states that, “An application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public.". Due to the lack of guidance regarding use of the solution “as colorant” in the specification, it is unclear how the claim element benefits the public in any significant manner. Regarding claims 11-14, the claims are rejected under 35 U.S.C. 101 because independent claim 11 is directed to ineligible subject matter. Independent claim 11 recites, “Use of a biolixiviant solution comprising a bacterial consortium…in the treatment of metallurgic effluents, as colorant, coagulant to industrial residues, water treatment and metal bioleaching including copper.”. Although the claim uses the term “Use of” the claim lacks a series of steps or actions that would produce the result of “treatment of metallurgic effluents, as colorant, coagulant to industrial residues, water treatment and metal bioleaching including copper”. Therefore, the claim refers to an improper definition of a process, and the answer to Step 1 of the subject matter eligibility analysis is, “No”.
Dependent claims 12-14 fail the subject matter eligibility test for the same reasons as independent claim 11, as they fail to introduce any steps or actions that would modify the improper process of claim 11 into eligible subject matter. See MPEP § 2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter, which states that, “A process defines "actions", i.e., an invention that is claimed as an act or step, or a series of acts or steps. As explained by the Supreme Court, a "process" is "a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.". It is recommended that the applicant amend claims 11-14 to include a series of steps and/or actions that would produce the desired result of the claims, in order to satisfy the subject matter eligibility requirements under 35 U.S.C. 101.
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 1-14 are rejected under 35 U.S.C. 112(b) 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. Claims 1-14 are directed to either a “method” (claims 1-5) or a “use of” a solution (claims 6-14). However, the claims all contain incorrect process definitions that render the claims ineligible under 35 U.S.C. 101, as the claims are not directed to one of the four statutory categories of invention. Please refer to the 35 U.S.C. 101 rejections of the same claims above. The MPEP § 2173.05(q) “Use” Claims, first paragraph, states that “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefinites under 35 U.S.C. 112(b). Furthermore, please see section MPEP § 2173.05(q) Section I. A “Use” Claim May Be Rejected Under 35 U.S.C. 101 And/Or 112, which states that “It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections.”.
Claims 1-5 are rejected under 35 U.S.C. 112(b) as indefinite because independent claim 1 merely recites the term “method” without any active, positive steps describing how the “method” is actually practiced. Independent claim 1 recites, a “Method allowigng the biodesintegration of industrial metal scrap using a group of extremophilic microorganisms wherein said extremophilic microorganisms are selected from a consortium of bacteria…”. Dependent claims 2-5 are rejected as indefinite for the same reason as independent claim 1. Because claims 1-5 are directed to indefinite processes, a person with ordinary skill in the art at the time of filing would be unable to determine the metes and bounds of claims 1-5. See MPEP § 2173.02 Determining Whether Claim Language is Definite, III. Resolving Indefinite Claim Language (B.), which states that, “To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained.”.
Claims 6-10 are rejected under 35 U.S.C. 112(b) as indefinite because independent claim 6 merely recites the “use of a solution” without any active, positive steps describing how the “use of a solution” is actually practiced. Dependent claims 7-10 are rejected as indefinite for the same reason as independent claim 6. Because claims 6-10 are directed to indefinite processes, a person with ordinary skill in the art at the time of filing would be unable to determine the metes and bounds of claims 6-10. See MPEP § 2173.02 Determining Whether Claim Language is Definite, III. Resolving Indefinite Claim Language (B.), which states that, “To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained.”.
Claims 11-14 are rejected under 35 U.S.C. 112(b) as indefinite because independent claim 11 merely recites the “use of a biolixiviant solution” without any active, positive steps describing how the “use of a biolixiviant solution” is actually practiced. Dependent claims 12-14 are rejected as indefinite for the same reason as independent claim 11. Because claims 11-14 are directed to indefinite processes, a person with ordinary skill in the art at the time of filing would be unable to determine the metes and bounds of claims 11-14. See MPEP § 2173.02 Determining Whether Claim Language is Definite, III. Resolving Indefinite Claim Language (B.), which states that, “To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained.”.
Claim 1 is directed at the bio-disintegration of “Industrial metal scrap” which is not explicitly defined in the specification. The specification states that, “Among industrial waste, is metal scrap, generated by the cemeteries of vehicles, the mining industry, industrial machinery, construction structures, ships, containers and the railway industry and others” (Page 1, Field of the Invention, Section). It is not clear whether “Industrial metal scrap” is intended to be limited to “metal scrap, generated by the cemeteries of vehicles, the mining industry, industrial machinery, construction structures, ships, containers and the railway industry and others” . Furthermore, it is not clear what the phrase “and others” includes, and whether the claim seeks to encompass additional types of industrial metal scrap. Regarding the microbial consortium of claim 1, is the phrase “are selected from a consortium” meant to indicate a Markush group with only one item (the consortium) or would a single bacterium within that consortium meets the limitations? The specification refers to “the consortium” as if it is a Markush group with only one item. Please see the following examples of the singular use of “the consortium" from the “Brief Description of the Invention” section:
“The microbial consortium was isolated … The adaptation of the microbial consortium… Two experimental tests were carried out to determine the degree of biodisintegration of the metal scrap in the presence of the adapted bacterial consortium…The consortium was able to biodisintegrate the metal scrap…Thus, the present invention refers to a method to Biodisintegrate metal scrap in a 9K culture medium enriched with ferrous sulfate (FeSO4) and using a consortium of bacteria” (Specification, Pages 7-8).
A person with ordinary skill in the art at the time of filing would be unable to determine the metes and bounds of the term “industrial metal scrap”. See MPEP § 2173.02 Determining Whether Claim Language is Definite, III. Resolving Indefinite Claim Language (B.), which states that, “To comply with 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, applicants are required to make the terms that are used to define the invention clear and precise, so that the metes and bounds of the subject matter that will be protected by the patent grant can be ascertained
Claim 2 contains the clause, “wherein said industrial metal scrap is previously subjected to a cutting procedure if necessary, introduced into a swimming pool or pond for the biodisintegration process”. The phrase, “if necessary” in the clause is indefinite because the application does not provide any means to determine how to evaluate whether it was necessary that the industrial metal scrap was previously subjected to a cutting procedure. Therefore, a person with ordinary skill in the art at the time of filing would be unable to determine the metes and bounds of the claimed subject matter.
Furthermore, “if necessary” is an example of exemplary claim language, which should be stated in the specification, not the claims. See MPEP § 2173.05(d) Exemplary Claim Language, first paragraph, which states that “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”.
The lack of comma or any form of transition between “necessary” and “introduced” makes it unclear if this is still a previous process or if this is an active step of the bio-disintegration process.
Claim 3 recites the limitation “ said pool or pond “ in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 includes the phrase, “allowing bio-disintegration with aeration, heat or temperature and agitation”. The phrasing, and lack of punctuation, leads to multiple interpretations of the claim. It is unclear if the claim is intended to be, “with aeration, heat or temperature, and agitation” or “with aeration, heat, or temperature, and agitation”. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 4 refers to “variation” in pH (line 16), “variable” shaking (line 17), and “variable” temperature (line 17). It is unclear what “variation” and “variable” mean in this context. Are the pH, shaking, and temperature adjusted to a single value within the ranges specified in claim 4? Or are the pH, shaking, and temperature values required to vary over some indeterminate amount of time?
The term “higher” in claim 4 is a relative term which renders the claim indefinite. The term “higher” 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. The term "cell growth" is rendered indefinite because of the relative term.
Claim 4, line 16, “gpl” is undefined in the application, and it’s meaning is not clear. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 4 includes the phrase “increasing concentrations of Ferrous Sulfate (FeSO4), exceeding 180 gpl”. It is unclear if all concentrations need to exceed 180 gpl, or if they can start below that value so long as they ultimately exceed that value?
Claim 5 includes the clause, “wherein said bacterial consortium comprises species of the genus Leptoospirillum sp and Leptoospirillum ferriphilum.”. The phrase, “species of the genus Leptoospirillum sp and Leptoospirillum ferriphilum.” is indefinite because it is not clear what “Leptoospirillum sp” means, and Leptospirillum ferriphilum is a species, not a genus. Therefore, it is unclear what the term “genus” is referring to, and is therefore indefinite. Thus, one of ordinary skill in the art at the time of filing would not be reasonably apprised of the metes and bounds of claim 5 and the scope of the invention is indefinite. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 7 includes the clause, “wherein said bacterial consortium comprising species of Leptoospirillum sp and Leptoospirillum ferriphilum genus.” It is not clear what “Leptoospirillum sp” means, and Leptospirillum ferriphilum is a species, not a genus. Therefore, it is unclear what the term “genus” is referring to, and is therefore indefinite. Thus, one of ordinary skill in the art at the time of filing would not be reasonably apprised of the metes and bounds of claim 7 and the scope of the invention is indefinite. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 9 refers to “variable” stirring (line 30-31), and “variable” temperature (line 31). It is unclear what “variable” means in this context. Are the stirring and temperature adjusted to a single value within the ranges specified in claim 9? Or are the values required to vary over some indeterminate amount of time? It is further unclear whether the items in parenthesis after 9K (line 29) defining 9K, or serving as an example of what 9K may include. It is therefore unclear if the 9K culture media is limited to the items in the parenthesis, and further by the stirring and temperature values. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 11, “including” is an example of exemplary claim language, which should be stated in the specification, not the claims. See MPEP § 2173.05(d) Exemplary Claim Language, first paragraph, which states that “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”. Claim 12 includes the clause, “wherein such bacterial consortium comprising species of Leptoospirillum sp and Leptoospirillum ferriphilum genus.” It is not clear what “Leptoospirillum sp” means, and Leptospirillum ferriphilum is a species, not a genus. Therefore, it is unclear what the term “genus” is referring to, and is therefore indefinite. Further, it is unclear what “such” means in reference to the bacterial consortium. Is “such” being used in the same way as “said”, or is there a different meaning? Thus, one of ordinary skill in the art at the time of filing would not be reasonably apprised of the metes and bounds of claim 12 and the scope of the invention is indefinite (See MPEP § 2173 Determining Whether Claim Language is Definite II. Threshold Requirement of Clarity and Precision).
Claim 13, “including” is an example of exemplary claim language, which should be stated in the specification, not the claims. See MPEP § 2173.05(d) Exemplary Claim Language, first paragraph, which states that “Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.”.
It is not clear what “or both” refers to. Primary and mixed sulphur? Secondary and primary sulphur? Wouldn’t “mixed” already be “both”. Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
Claim 14 includes the indefinite phrase “wherein it can be used” (line 13). The phrase is indefinite because it is not clear what “it” refers to. Is “it” supposed to mean “the use”, “the solution”, “the bacterial consortium”? Please refer to MPEP 2173.05(a) New Terminology, I. The Meaning of Every Term Should Be Apparent, which states that, “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.".
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 1-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The factors to be considered in determining whether a disclosure would require undue experimentation include:
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.
In re Wands, 8 USPQ2d, 1400 (CAFC 1988) and MPEP § 2164.01.
With respect to claim breadth, the standard under 35 U.S.C. §112, first paragraph, entails the determination of what the claims recite and what the claims mean as a whole. In addition, when analyzing the scope of enablement, the claims are analyzed with respect to the teachings of the specification and are to be “given their broadest reasonable interpretation consistent with the specification.” See MPEP § 2111 [R-5]; Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005); and In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550- 51 (CCPA 1969).
As such, the broadest reasonable interpretation of independent claim 1 is directed to the, “Method allowigng the biodesintegration of industrial metal scrap using a group of extremophilic microorganisms wherein said extremophilic microorganisms are selected from a consortium of bacteria adapted to high concentrations of ferrous sulfate (FeSO4) and ferric sulfate Fe2(SO4)3, number Access of the Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources”.
Claims 1-14 recite a bacterial consortium from the Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources. The specification fails to disclose the genetic sequence, genera/species of the constituents, or any other objective distinguishing feature of the consortium RG 2972 being claimed. Elements required for practicing a claimed invention must be known and readily available to the public or obtainable by a repeatable method set forth in the specification. When biological material is required to practice an invention, and if it is not so obtainable or available, the enablement requirements of 335 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph may be satisfied by a deposit of the material. See 37 CFR § 1.802.
The specification includes a “Detailed Description of the Invention” section (Page 10-32) which includes details regarding acquiring the bacterial consortium, analysis of the bacterial consortium, and adaptation of the consortium to ferrous sulfate and ferric sulfate. Despite this, the specification does not provide enabling details of the supposed methods of claims 1-14. The only relevant details that the specification provides is that the consortium includes, “species of the genus Leotospirillum”. Leotosprillum is not a recognized genus. The specification is probably referring to “leptospirillum”. It is not clear what species of the genus, if any, are present in the consortium. Regarding collection of the consortium the specification states, “The samples were collected from different points of the El Tatio Geothermal Field… In order to obtain the greatest amount of microorganisms grouped in one sample, all the samples obtained from the El Tatio Geothermal Field were mixed to generate a single sample… From the samples from the Tatio geothermal field, it was possible to obtain a consortium of iron oxidizing microorganisms” (Page 15-16, Detailed Description of the Invention, Section). Therefore, it is highly likely that the claimed bacterial consortium contains other species of microorganisms. Claims 5, 7 and 12 state that the bacterial consortium “comprises” species of Leptoospirillum sp and Leptoosprillum ferriphilum, indicating that other species are present in the consortium. The application does not provide sufficient enabling details describing what the bacterial consortium contains.
The specification lacks sufficient deposit information for the claimed bacterial consortium from the Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources and one would be unable to practice the method or even conclude that a given bacteria is a member of the claimed a bacterial consortium from the Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources without access to the specific biological material claimed. Because the public availability of these deposits are unknown and cannot be reproducibly isolated from nature without undue experimentation, a suitable deposit for patent purposes is required.
If a deposit is made under the terms of the Budapest Treaty, then an affidavit or declaration by applicants or someone associated with the patent owner who is in a position to make such assurances, or a statement by an attorney of record over his or her signature, stating that the deposit has been made under the terms of the Budapest Treaty and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of a patent, would satisfy the deposit requirements. See 37 CFR § 1.808.If a deposit is not made under the terms of the Budapest Treaty, then an affidavit or Declaration by Applicants or someone associated with the patent owner who is in a position to make such assurances, or a statement by an attorney of record over his or her signature, stating that the deposit has been made at an acceptable depository and that the following criteria have been met:
(a) during the pendency of the application, access to the deposit will be afforded to one determined by the Commissioner to be entitled thereto;
(b) all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of a patent;
(c) the deposit will be maintained for a term of at least thirty (30) years and at least five (5) years after the most recent request for the furnishing of a sample of the deposited material;
(d) a viability statement in accordance with the provisions of 37 CFR 1.807; and
(e) the deposit will be replaced should it become necessary due to inviability, contamination or loss of capability to function in the manner described in the specification.
In addition, the identifying information set forth in 37 § CFR 1.809(d) should be added to the specification. See 37 CFR § 1.803-1.809 for additional explanation of these requirements. In addition the identifying information set forth in 37 CFR 1.809(d) should be added to the specification. See 37 CFR 1.803-1.809 for additional explanation of these requirements.
The standard of an enabling disclosure is not the ability to make and test if the invention works but one of the ability to make and use with a reasonable expectation of success. A patent is granted for a completed invention, not the general suggestion of an idea and how that idea might be developed into the claimed invention. In the decision of Genentech, Inc, v. Novo Nordisk, 42 USPQ 2d 1001, (CAFC 1997), the court held that:
"[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable" and that "[t]ossing out the mere germ of an idea does not constitute enabling disclosure". The court further stated that "when there is no disclosure of any specific starting material or of any of the conditions under which a process is to be carried out, undue experimentation is required; there is a failure to meet the enablement requirements that cannot be rectified by asserting that all the disclosure related to the process is within the skill of the art", "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement".
Further, as mentioned above, based on the specification the consortium contains more than just the Leptoospirillum bacteria. However, not all extremophilic bacteria present near bioleaching bacteria will disintegrate metal as claimed. For example, Johnson discloses, “The most familiar and well-studied microorganisms indigenous to acidic mineral leaching environments are autotrophic sulfur- and iron-oxidizing bacteria such as Thiobacillus ferrooxidans, Thiobacillus thiooxidans and Leptospirillum ferrooxidans. Some photoautotrophs, such as the thermophilic rhodophyte Cyanidium caldarium, may also be present in extremely acidic environments that receive light. Other microorganisms which require pre-fixed (organic) carbon have been isolated from mineral leach dumps and acid mine drainage (AMD) waters. These heterotrophic microorganisms include eukaryotes, such as some fungi and yeasts and protozoa, as well as prokaryotic bacteria and archaea.” (Dr. Barrie Johnson (1997)“ Heterotrophic Acidophiles and Their Roles in the Bioleaching of Sulfide Minerals”, Biomining: Theory, Microbes and Industrial Processes, Page 259, Abstract Section). In contrast to the autotrophic bioleaching minerals, heterotrophs cannot directly leach metal.
Because the consortium RG 2972 of claim 1 would be reasonably expected to include non-metal leaching microorganisms, and the application lacks the required deposit information, it would require undue experimentation for others to determine which of the unnamed and undiscovered bacteria in the consortium have the required property. Due to the lack of disclosure, it is unclear whether the subset of bacteria that contribute to the scrap metal recycling, differ from the subset of bacteria that contribute to the elimination of surface corrosion, and to the treatment of metallurgic effluents, as colorant, coagulant to industrial residues, water treatment and metal bioleaching of independent claims 6, and 11. It would be impossible for a person with ordinary skill in the art to accurately predict the bacterial subsets that contribute to each claimed method, without knowing the specific bacteria present in the consortium. Furthermore, the specification does not provide sufficient guidance to enable others to enact the claimed methods. As mentioned in the 35 U.S.C 112(b) rejections above, a person with ordinary skill in the art would have to come up with a series of defined steps or actions that would constitute a method to practice the claims with a reasonable degree of success. Therefore, claims 1-14 are rejected under 35 U.S.C. 112, first paragraph, for failing to meet the enablement requirement.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 3, 5, 7, 12, and 14 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claim 1 is not further limited by dependent claim 2. Claim 2 includes the wherein clause, “wherein said industrial metal scrap is previously subjected to a cutting procedure if necessary, introduced into a swimming pool or pond for the bio- disintegration process.”. Because claim 2 uses the conditional phrase, “if necessary”, it is not a requirement of claim 2 that the industrial metal scrap was subjected to a cutting procedure. As the claim is worded, it is not clear whether, “introduced into a swimming pool or pond for the bio- disintegration process” occurs in the event that the industrial scrap metal was not subjected to a cutting procedure. Therefore, the broadest reasonable interpretation of claim 2 is that the industrial scrap metal was not subjected to a cutting procedure, and is not introduced into a swimming pool or pond for the bio-disintegration process. Therefore claim 2 does not further limit independent claim 1.
Independent claim 1 is not further limited by dependent claim 3. Claim 3 includes the wherein clause, “wherein said pool or pond allowing bio-disintegration with aeration, heat or temperature and agitation”. As mentioned in the 112(b) rejection of claim 3, the claim elements of a pool or a pond are not present in claim 1, and therefore the wherein phrase of claim 3 is indefinite. Claim 3 does not add anything else besides the wherein clause. Therefore claim 3 does not further limit claim 1.
Independent claim 1 is not further limited by dependent claim 5. Claim 1 recites a method wherein microorganisms are selected from the following consortium of bacteria - Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources. The wherein clause of claim 5 states, “wherein said bacterial consortium comprises species of the genus Leptoosprillum sp and Leptoosprillum ferriphilum”. The consortium of bacteria referenced in claim 1 either already contains the bacteria claimed in claim 5, or it doesn’t. If the consortium already contains the bacterial species claimed in claim 5, then claim 5 does not further limit claim 1. If the consortium does not contain the bacterial species claimed in claim 5, then simply stating “wherein such bacterial consortium comprises” in claim 5 doesn’t change the fact that the consortium doesn’t include those species. The specification states, “The results indicated that the bacterial consortium is made up of phylotype related to species of the genus leotospirillum” (Page 7, line 18). Therefore claim 5 does not further limit claim 1.
Independent claim 6 is not further limited by dependent claim 7. Claim 6 recites a use of a solution comprising the bacterial consortium - Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources. The wherein clause of claim 7 states, “wherein said bacterial consortium comprises species of the genus Leptoosprillum sp and Leptoosprillum ferriphilum”. The consortium of bacteria referenced in claim 6 either already contains the bacteria claimed in claim 7, or it doesn’t. If the consortium already contains the bacterial species claimed in claim 7, then claim 7 does not further limit claim 6. If the consortium does not contain the bacterial species claimed in claim 6, then simply stating “wherein such bacterial consortium comprises” in claim 7 doesn’t change the fact that the consortium doesn’t include those species. Therefore claim 7 does not further limit claim 1.
Independent claim 11 is not further limited by dependent claim 12. Claim 11 recites a use of a solution comprising a consortium of bacteria - Microbial Genetic Resources Bank, Chile, RGM 2972 of October 16, 2019 of the Chilean Collection of Genetic and Microbial Resources. The wherein clause of claim 12 states, “wherein such bacterial consortium comprising species of Leptoospirillum sp and Leptoospirillum ferriphilum genus”. The consortium of bacteria referenced in claim 11 either already contains the bacteria claimed in claim 12, or it doesn’t. If the consortium already contains the bacterial species claimed in claim 11, then claim 12 does not further limit claim 11. If the consortium does not contain the bacterial species claimed in claim 11, then simply stating “wherein such bacterial consortium comprises” in claim 12 doesn’t change the fact that the consortium doesn’t include those species. Therefore claim 12 does not further limit claim 11.
Independent claim 11 is not further limited by dependent claim 14. Independent claim 14 includes the phrase, “the use of claim 11 wherein it can be used…”. The terminology “can be” used for is not a requirement that it is used for the following purposes. The solution of claim 11 could already be used for those tasks, so claim 14 doesn’t offer an additional limitation.
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.
Claim 1 is rejected under 35 U.S.C 103 as being unpatentable over Ballor (Ballor, N. R. et al. “Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering” 93(6), pgs. 1089-1094, 2006) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Desphande (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery.” Global Journal of Environmental Science and Management, 4(3), pgs. 373-386, 2018.) and Debaraj (Debaraj Mishra, “Current Research Trends of Microbiological Leaching for Metal Recovery from Industrial Wastes” Current Research, Technology and Education Topics in Applied Microbiology Biotechnology, pgs. 1289-1296, 2010).
Regarding claim 1, Ballor discloses a method of scrap metal recycling using biogenerated ferric iron as an oxidant alongside the extremophilic organism Acidithiobacillus ferrooxidans (Page 1089, Abstract). Acidithiobacillus ferrooxidans was adapted to growth in a ferrous sulfate basal salt medium prior to bacterial growth in a bioreactor containing the scrap iron and lixiviant (Page 1091, Results, Establishment of Bioreactor Growth). Although Ballor does not specifically call the process “bio-disintegration”, the instant specification does not define the term. Breakdown of metals by bacterial induced oxidation is within a reasonable interpretation of the term , and is the same use of the scrap metal recycling disclosed by Ballor. Ballor further discloses that, “A. ferrooxidans derives its energy for growth from the oxidation of ferrous iron to ferric iron…By optimizing the growth conditions for the organism and establishing the parameters for its automated growth.” (Page 1089, Introduction).
The Ballor prior art is an application of the technology of SAAB-FIG (stand alone automated bioreactor for ferric iron generation) based on Lueking’s previous patent, which discloses that, “it should be noted that bacteria that are acidophilic, chemoautotrophic and utilize ferrous iron as an oxidizable energy source can be utilized with this invention. Examples of other organisms, which are not intended to be limiting, that meet the above criteria include Leptosprillum ferrooxidans, organisms of the genus Sulfolobus such as Sulfolobus acidocaldarius, and Sulfobacillus thermsulfidooxidans.” These organisms are all examples of species of the claimed genus “extremophilic organisms” (Column 4, paragraph 2). Regarding the claim element directed to “industrial” scrap metal recycling, Lueking states, “Through the use of chemoautotrophic bacteria that can be continuously maintained in a bioreactor to produce ferric ions, the cost of production of the ferric ions makes its use in commercial industrial application feasible.” (Column 2, paragraph 5). Therefore, the prior art is intended to be used for the claim limitation of “industrial metal scrap”.
However, Ballor and Lueking do not disclose that the organisms were selected from a consortium of bacteria (RGM 2972) adapted to high concentrations of ferrous sulfate and ferric sulfate.
Although Ballor doesn’t explicitly state that the bacteria were adapted to high concentrations of ferrous sulfate and ferric sulfate, Ballor mentions that the Acidithiobacillus ferrooxidans were adapted to growth in a ferrous sulfate basal salt. (Page 1090, Organism, Medium, and Growth Conditions Section). Lueking states that, “It is another object of the present invention to provide a process to gradually introduce a recycled ferrous solution to bacteria to acclimate the bacteria to higher levels of chemicals known to be toxic to the bacteria” (Column 3, paragraph 3). Adapting Acidithiobacillus ferrooxidans or other suitable chemotrophic biomining bacterial species to a recycled ferrous sulfate containing solution would also adapt the bacterial consortium to ferric sulfate. This is because these bacteria oxidize ferrous sulfate into ferric sulfate as part of their metabolism, which is a critical step of the scrap metal recycling method disclosed. Therefore, as the bacteria are being acclimated to ferrous solution, they would also be acclimated to the resulting ferric sulfate. A person with ordinary skill in the art, through routine optimization, would be able to adapt the bacterial consortium to ferrous sulfate, and therefore ferric sulfate, in a high enough concentration to optimize the recycling method. See MPEP § 2144.05(II) which discusses routine optimization within prior art conditions and through routine experimentation.
The Desphande prior art discloses that all primary biomining microbes are chemolithotrophs that can use reduced inorganic sulfur or ferrous as donors of electrons. Important bacteria involved in mineral bio-oxidation at mineral mines include Acidithiobacillus thiooxidans, Acidithiobacillus caldus, Leptospirillum ferrooxidans, Leptospirillum ferriphilum and Acidiphilium (Desphande, Page 376, Overview of chemolithotrophs found in mineral mines Section). Furthermore, Desphande discloses a table of different metals and minerals found in nature, and the associated bioleaching microbes that are associated with them (Page 377, Table 1).
The Debaraj prior art discloses that, “most of the abandoned mine sites are recognized by the presence of acidophilic inhabitant which can be isolated and screened in bioleaching of waste materials…These cells can be considered as suitable catalyst for industrial application of bioleaching.” (Page 1294, 7. Conclusions Section, First paragraph).
A person with ordinary skill in the art at the time of filing would have found it obvious to include a consortium of biomining microbes into the method of scrap metal recycling taught by Ballor, based on the SAAB-FIG technology taught by Lueking, in further view of the disclosures of Desphande and Debaraj. This is because a person with ordinary skill in the art would find it obvious to expand the bacterial species used in Ballor’s method to include similar extremophilic bacteria present at biomining sites. It would have been obvious to include these bacteria in a consortium containing different species of suitable bacteria because the teachings above suggest multiple species are suitable for this task. It is noted that the prior art does not disclose the particular claimed consortium (RGM 2972). However, the instant specification only discloses “The results indicated that the bacterial consortium is made up of phyllotype related to species of the genus Leotospirillum” (Specification, page 7). These bacteria are also disclosed in the prior art as useful for the same reasons and have similar properties. Where the prior art discloses a product appearing to be substantially identical to the claimed product, burden shifts to Applicant to show a nonobvious difference. Currently, there is no such nonobvious difference of record as these appear to be the same bacterium isolated. While they were potentially isolated from a different place, they are otherwise substantially identical to the other members of their species.
Claims 2 and 3 are rejected under 35 U.S.C 103 as being unpatentable over Ballor (Ballor, N. R. et al. “Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering” 93(6), pgs. 1089-1094, 2006) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Desphande (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery.” Global Journal of Environmental Science and Management, 4(3), pgs. 373-386, 2018.), and Debaraj (Debaraj Mishra, “Current Research Trends of Microbiological Leaching for Metal Recovery from Industrial Wastes” Current Research, Technology and Education Topics in Applied Microbiology Biotechnology, pgs. 1289-1296, 2010) as applied to claim 1 above and in further view of Johnson (Dr. Barrie Johnson (2014) “Biomining - biotechnologies for extracting and recovering metals from ores and waste materials”, Current Opinion in Biotechnology, 30, pgs. 24-31)..
Regarding claim 2, Johnson teaches a biomining heap for leaching of copper ore, which includes a recirculating liquor which, “may be combined with water from an inoculating pond in which mineral-degrading acidophiles have been grown to 109 cells/ml” (Page 26, Figure 1, legend). Since Johnson discloses the use of an inoculating pond to grow acidophiles for use in bioleaching, it would be obvious to introduce the bacterial consortium into a pond for the same purpose to grow the microorganisms. “Inoculation pond” as it appears is an example of a species of the claimed genus “pond”. Therefore, the reference species “inoculation pond” anticipates the claimed genus, “pond”. See MPEP § 2131.02 Genus-Species Situations I. A Species Will Anticipate A Claim to a Genus, which states that "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus.”. This is because the prior art teaches the use of ponds for microbiological waste water management, and a person with ordinary skill in the art would find it obvious to use a pond as a bioreactor if the industrial scrap metal was too large to fit in a standard bioreactor tank or vessel. Regarding the clause, “wherein said industrial metal scrap is previously subjected to a cutting procedure if necessary” the broadest reasonable interpretation of the claim is that it is not always necessary to cut the industrial scrap metal. Furthermore, as mentioned in the 35 U.S.C. 112(b) rejection, the application provides no guidance on how to determine whether cutting is necessary. Therefore, the claim is obvious for the same reasons as claim 1, in further view of Johnson.
Regarding claim 3, as noted in the 35 U.S.C 112(b) rejection above, claim 3 is indefinite for incorrectly referring to the pool or pond of the method of claim 1. Claim 1 does not include the claim elements of a pool or pond. For the purposes of the analysis, claim 3 will be interpreted as referring to the method of claim 2. Ballor discloses the method of scrap recycling where cells are grown at a specific temperature with heat and aeration meeting all of the instant claim limitations of claim 3 (Page 1090, Bioreactor Growth).
Claims 4-5 are rejected under 35 U.S.C 103 as being unpatentable over Ballor (Ballor, N. R. et al. Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering. 2006; 93(6): 1089-1094.) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Desphande (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery.” Global Journal of Environmental Science and Management 4(3), pgs. 373-386, 2018.) and Debaraj (Debaraj Mishra, “Current Research Trends of Microbiological Leaching for Metal Recovery from Industrial Wastes” Current Research, Technology and Education Topics in Applied Microbiology Biotechnology, pgs. 1289-1296, 2010) as applied to claim 1 above. Regarding claim 4, As mentioned previously, the claim includes the following objection: It is unclear what “reaching a higher cell growth” means. For the purposes of the 35 U.S.C. 103 rejection, the phrase is being interpreted as, “reaching a higher cell number than”. Ballor teaches that the ferrous sulfate growth medium is pH 1.9, and contains: (g/L): 0.058 g KH2PO4, 0.058 g MgSO4 _ 7H2O, 3.5 g (NH4)2SO4, and 59.7 g FeSO4. Cells were grown at 35 0 C with agitation at 300RPM. These components are typical of a 9K culture medium. Regarding cell density Lueking teaches, “Cell density is a parameter that can be monitored and controlled to optimize the production of ferric ions. Preferably, cell density is maintained in the range of approximately 5×108 cells/ml (OD500 =0.100) to 1×109 cells/ml (OD500 =0.200).” (Column 6, paragraph 4). The prior art range of cell density meets the claim limitation of, “reaching a higher cell number than 10^08 cells/mL.
Although the referenced ranges for constituents of the 9K medium differs, preparation of a culture media compatible with the claimed bacteria is routine and standard procedure, and a person skilled in the art would find it obvious to optimize the culture medium to increase the efficiency of the recycling method. See MPEP § 2144.05 II Routine Optimization, Optimization Within Prior Art Conditions or Through Routine Experiments- which states that, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”. Therefore claim 4 is obvious for the same reasons as claim 1. Further, the phrase “were grown” clearly establishes that the remaining limitations of the claim are not active steps of the method, but rather product-by-process limitations. As such, even if there were differences in the culture parameters, the end product of the consortium would be substantially the same as they are the same bacteria with similar properties.
Regarding claim 5, as mentioned in the 35 U.S.C. 112(a) and 112(b) rejections, claim 5 is an indefinite claim which refers to a bacterial consortium that would already include the claimed species (or it would not). For the purposes of compact prosecution, claim 5 is being interpreted as, “the method of claim 1 wherein the microorganisms are selected from the bacterial consortium RGM 2972, and the genus Leptopspirillum. As stated in the discussion of claim 1, Lueking discloses that the application can be used with Leptospirillum ferrooxidans. “Leptospirillum ferrooxidans” is a species of the claimed genus “Leptospirillum”, and therefore the species anticipates the genus Leptospirillum. See MPEP § 2131.02 Genus-Species Situations I. A Species Will Anticipate A Claim to a Genus, which states that "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus.”. Therefore claim 5 is obvious for the same reasons as claim 1.
Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ballor (Ballor, N. R. et al. “Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering” 93(6), pgs. 1089-1094, 2006) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Deshpande, (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery. Global Journal of Environmental Science and Management” 4(3), pgs. 373-386, 2018.), and Debaraj (Debaraj Mishra, “Current Research Trends of Microbiological Leaching for Metal Recovery from Industrial Wastes” Current Research, Technology and Education Topics in Applied Microbiology Biotechnology, pgs. 1289-1296, 2010) for the same reasons discussed for claims 1 above, and in further view of Kino et. al (Kino et al. “Biochemical Rust Removal by Thiobacillus ferrooxidans” European Journal of Applied Microbiology and Biotechnology, 13:128-132, 1981).
Regarding claim 6, Kino discloses the removal of rust from iron surfaces by growing Thiobacillus ferrooxidans in 9K culture medium supplemented with ferrous sulfate followed by immersion of an iron plate into the culture medium. (Page 129, Figure 3). “Rust” as it appears is an example of a species of the claimed genus “corrosion”. Therefore, the reference species “rust” anticipates the claimed genus, “corrosion”. See MPEP § 2131.02 Genus-Species Situations I. A Species Will Anticipate A Claim to a Genus, which states that "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus.”. A person with ordinary skill in the art at the time of filing would have found it obvious to adapt the method of scrap metal recycling taught by Baylor and Lueking, in further view of Desphande and Debaraj, discussed in the 35 U.S.C 103 rejection of claims 1, to include use of the method for eliminating surface corrosion of a metal. This is because Kino teaches the use of a similar method, using the same iron oxidizing bacteria, Thiobacillus ferrooxidans (Acidothiobacillus ferrooxidans), involving immersing an iron plate in the bacterial culture media in the presence of ferrous sulfate. All of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. (As described in MPEP § 2143, Section A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results). Therefore claim 6 is obvious for the same reasons as claims 1 above, in further view of Kino.
Regarding claim 7, as mentioned in the 35 U.S.C. 112(a) and 112(b) rejections, claim 7 is an indefinite claim which refers to a bacterial consortium that would already include the claimed species (or it would not). For the purposes of compact prosecution, claim 7 is being interpreted as, “the method of claim 6 wherein the microorganisms are selected from the bacterial consortium RGM 2972, and the genus Leptopspirillum. As stated in the discussion of claim 1, Lueking discloses that the invention can be used with Leptospirillum ferrooxidans. “Leptospirillum ferrooxidans” is a species of the claimed genus “Leptospirillum”, and therefore the species anticipates the genus Leptospirillum. See MPEP § 2131.02 Genus-Species Situations I. A Species Will Anticipate A Claim to a Genus, which states that "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus.”. Therefore claim 7 is obvious for the same reasons as claim 6.
Regarding claim 8, as mentioned in the claim objections above claim 8 contains the phrase, “said solution a bacterial consortium” which is unclear. For the purposes of compact prosecution, claim 8 is being interpreted as, “the method of claim 6 wherein the microorganisms are selected from the bacterial consortium RGM 2972, at a concentration of 10^08 cells/mL”. As previously noted in the discussion of claim 4, regarding cell density Lueking teaches, “Cell density is a parameter that can be monitored and controlled to optimize the production of ferric ions. Preferably, cell density is maintained in the range of approximately 5×108 cells/ml (OD500 =0.100) to 1×109 cells/ml.” (Column 6, paragraph 4). Through routine optimization a person with ordinary skill in the art would be able to use the reference cell density, taught by Ballor and Lueking, to arrive at the instantly claimed 108 cells/ml to optimize the method of eliminating surface corrosion. See MPEP § 2144.05 II Routine Optimization, Optimization Within Prior Art Conditions or Through Routine Experiments- which states that, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
Regarding claim 9, the claim is obvious for the same reasons that claim 4 is obvious in view of Kino.
Regarding claim 10, as mentioned in the claim objections, claim 10 states, “…said solution is applied as an aerosol solution on a metal surface o said metal device/apparatus is treated with a solution by bath or immersion or initial irrigation.”. The “o” makes the claim unclear. For the purposes of the 35 U.S.C. 103 rejection, the “o” is being interpreted as “or”. As discussed in the rejection of claim 6, A person with ordinary skill in the art at the time of filing would have found it obvious to adapt the method of scrap metal recycling taught by Baylor and Lueking, in further view of Desphande and Debaraj, discussed in the 35 U.S.C 103 rejection of claim 6, to include use of the method for eliminating surface corrosion of a metal.
However, the prior art does not explicitly state, “domestic metal device/apparatus”. Industrial metal scrap taught by the prior art would include “domestic metal device/apparatus”. Therefore, a person with ordinary skill in the art at the time of filing would find it prima facie obvious to use the prior art method on “domestic metal device/apparatus” as these would make up a portion of industrial scrap metal in need of recycling. Together with the teaching of Kino disclosed in claim 6, which discloses the method involving immersing an iron plate in the bacterial culture media in the presence of ferrous sulfate, the instant claim limitation of “said metal device is treated with a solution by immersion” is made obvious in view of the prior art. Therefore, the prior art makes the following embodiment of the claim obvious, “The use of claim 6 to eliminate surface corrosion in a domestic metal device/apparatus and said metal device/apparatus is treated with a solution by immersion.”.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ballor (Ballor, N. R. et al. “Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering” 93(6), pgs. 1089-1094, 2006) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Deshpande, (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery. Global Journal of Environmental Science and Management”, 4(3), pgs. 373-386, 2018.), and Debaraj (US Application No. 2016-0138128A1), and in further view of Yang (Yang et al. “Bioleaching of heavy metals from wastewater sludge with the aim of land application”, Chemosphere (249) pgs. 1-7, 2020).
Regarding claim 11, Yang teaches that the “Presence of heavy metals in the wastewater sludge has greatly hindered sludge land application. Bioleaching has been developed for heavy metal removal from sludge. The pH of the sludge is declined by microorganisms with S or FeS as energy source” (Page 1, Abstract). “Bioleaching employs Acidithiobacillus ferrooxidans or iron oxidizing bacteria acclimatized from sludge to reduce solution pH for metal releasing” (Page 1-2, Introduction, paragraph 3). “It can be seen that the most abundant metals in the sludge are copper, zinc, and lead. Heavy metals in the sewage are mainly from the discharge of industrial wastewater to the sewage.” (Page 2, 2.2 Heavy Metals Characteristics, paragraph 3). Treating industrial waste water sewage, containing heavy metals, meets the instant claim limitations of “treatment of metallurgic effluents”, and “water treatment”. Heavy metals that can be treated by bioleaching include zinc, nickel, copper, lead, and chromium. This meets the instant claim limitation of “bioleaching including copper”. The 9K culture medium containing ferrous sulfate and the biomining bacteria make up a solution (referenced throughout the patent of Lueking) that serves as a lixiviant – in the case of the prior art and the instant application, a solution containing chemicals and bacteria that are used to oxidize metals or minerals.
However, Yang does not teach the use of the biolixiviant solution comprising a bacterial consortium as a colorant or a coagulant to industrial residues.
Regarding the use of the solution as colorant, the bacterial consortium in any context is a “colorant” since the bacteria have whatever color they have and impart that to any composition they are part of.
Regarding the use of the solution for a coagulant to industrial residues, a person with ordinary skill in the art at the time of filing would know that ferric sulfate, produced by the reduction of ferrous sulfate, is a well-known coagulant in the water treatment field. See Aguilar et al. (M.I. Aguilar, (2003) “Microscopic observation of particle reduction in slaughterhouse wastewater by coagulation–flocculation using ferric sulphate as coagulant and different coagulant aids”, Water Research, 37(9), pgs. 2233-2241), which states that, “Ferric sulphate was chosen as the coagulant, mainly because the presence of SO42− anions favours coagulation process by broadening the range of optimum pH for floc formation” (Page 2234, paragraph 1). Thus, it would be obvious to use the biolixiviant solution taught by the prior art as a coagulant for industrial residues to assist in the oxidation and treatment of the industrial residues. Regarding using the biolixiviant solution for metal bioleaching, including copper, Lueking discloses that, “It is another object of the present invention to provide a process for leaching of metal…using ferric ions.” and further “Oxidation of primary metal from an ore or scrap. The ferric ion solution produced by the bioreactor… is of a sufficient strength to directly leach the metallic, sulfidic and oxidic forms of copper, zinc, lead, iron, mercury, nickel, arsenic, cadmium, cobalt, antimony, bismuth, silver, tin, etc. from metal scrap or naturally occurring minerals” (Column 9, paragraph 3). Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. (As described in MPEP § 2143, Section A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results).
Regarding claim 12, as mentioned in the 35 U.S.C. 112(a) and 112(b) rejections, claim 12 is an indefinite claim which refers to a bacterial consortium that would already include the claimed species (or it would not). For the purposes of compact prosecution, claim 12 is being interpreted as, “the method of claim 11 wherein the microorganisms are selected from the bacterial consortium RGM 2972, and the genus Leptopspirillum. As stated in the discussion of claim 1, Lueking discloses that the application can be used with Leptospirillum ferrooxidans. “Leptospirillum ferrooxidans” is a species of the claimed genus “Leptospirillum”, and therefore the species anticipates the genus Leptospirillum. See MPEP § 2131.02 Genus-Species Situations I. A Species Will Anticipate A Claim to a Genus, which states that "A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus." The species in that case will anticipate the genus.”. Therefore claim 12 is obvious for the same reasons as claim 11.
Regarding claim 13, Lueking discloses that, “It is another object of the present invention to provide a process for leaching of metal or sulfur bearing materials using ferric ions.” (Column 3, paragraph 3) and further “Oxidation of primary metal from an ore or scrap. The ferric ion solution produced by the bioreactor… is of a sufficient strength to directly leach the metallic, sulfidic and oxidic forms of copper, zinc, lead, iron, mercury, nickel, arsenic, cadmium, cobalt, antimony, bismuth, silver, tin, etc. from metal scrap or naturally occurring minerals” (Column 9, paragraph 3). This meets the instant claim limitation of “bioleaching of oxidized minerals, sulfurates including secondary sulphure, primary sulphure and mixed sulphures or both.”. Although the primary art doesn’t specifically state “primary sulfur” or “secondary sulfur” a person with ordinary skill in the art would know that organisms taught by the prior art such as acidithiobacillus and leptospirillum are well known for their use in the oxidation and bioleaching of sulfur and sulfur containing compounds, such as sulfidic forms of the metal and minerals mentioned above. Therefore, the claim is obvious for the same reasons as the previous claims 11 and 12.
Claim 14 is rejected under 35 U.S.C 103 as being unpatentable over Ballor (Ballor, N. R. et al. “Recovery of scrap iron metal value using biogenerated ferric iron. Biotechnology and Bioengineering” 93(6), pgs. 1089-1094, 2006) and Lueking (US Patent No. 5,827, 701A October 27, 1998) in further view of Deshpande, (Desphande, A.S. et al. “A delve into the exploration of potential bacterial extremophiles used for metal recovery. Global Journal of Environmental Science and Management” 4(3), pgs. 373-386, 2018.), Debaraj (US Application No. 2016-0138128 A1), and Yang, as applied to claims 11-13, and in further view of Hurtado (US Application No. 2016-0201161A1).
Regarding claim 14, Hurtado teaches a support material used to agglomerate mineral concentrates to promote their recovery by leaching (Page 1, Paragraph 0002). A person with ordinary skill in the art would find it obvious to include the support material disclosed by Hurtado with the prior art method, for the same purpose to agglomerate mineral concentrates to increase their recovery. As discussed above for claim 1, Ballor teaches the method using a bioreactor, meeting the instant claim element of “reactors”. Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. (As described in MPEP § 2143, Section A. Combining Prior Art Elements According to Known Methods To Yield Predictable Results).
Conclusion
No claim is allowed.
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KYLE RYAN SMITHExaminer
Art Unit 1651
/Adam Weidner/SPE, Art Unit 1651
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