DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/30/2026 has been entered.
Status of Claims
Following the Reply filed 03/30/2026, claims 1, 4-5 and 15-31 are pending in the application. Claims 1, 4-5, 15, 17 and 19-27 have been amended. Claims 29-31 have been added without introducing new matter. Claims 1, 4-5 and 15-31 are presently considered.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 03/30/2026 has been considered by the examiner.
Withdrawn
The objections of claims 15, 24 and 27 are withdrawn in light of the amendments.
Claim Objections
Claim 1 is objected to because of the following informalities:
(1) In line 16, the claim refers to limitations (i)-(iii) as “steps (i), (ii) and (iii)”. However, these limitations are not method steps. Please amend the claim to remove the term “steps” in line 16.
(2) In lines 22-23, please amend the phrase “with altered redox balance” to recite “with the altered redox balance.
(3) In line 25, please amend the term “a media” to recite “a medium”.
Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Please amend the phrase “meshes, mats” in line 7 to recite “meshes, or mats”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: Please amend the phrase “meshes, mats” in line 9 to recite “meshes, or mats”. Appropriate correction is required.
Claim Interpretation
Amended claim 1 recites the limitation, “wherein in steps (i), (ii), and (iii) the plurality of methane-capturing bioagents comprise chemically altered halophilic methanotroph bacterial cells, wherein the chemical alteration in the halophilic methanotroph bacterial cells comprises an altered redox balance”. This limitation is interpreted to be a functional limitation that results from the product-by-process step of “culturing the halophilic methanotroph bacterial cells in a media comprising a rare earth element”. This product-by-process step does not change the structure of the halophilic methanotroph bacterial cells. The declaration filed by Applicant on 03/30/2026 discusses the “chemical alteration” as a “metabolic shift” that results from the process step of culturing, but fails to identify or provide evidence of any structural change in the bacterium. It is understood that the bacteria possess multiple metabolic pathways, regardless of which is being expressed at a given time. Therefore, the method step of culturing the bacteria with a rare earth element does not result in or imply a change in structure, only a change in function that is an inherent property of the bacterium. See Response to Declaration for further discussion.
Maintained rejections and new rejections necessitated by amendment
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.
Claims 1, 4-5, 15-28 and 30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “wherein the halophilic methanotroph bacterial cells… are prepared by a method comprising culturing the halophilic methanotroph bacterial cells… before being placed into or on the product of manufacture” in lines 22-26. This renders the claim indefinite, because limitation “(a)” of the claim requires that the bacterial cells are “contained in the product of manufacture” (see line 4 of the claim). Therefore, the final product must have the bacterial cells contained “in” the product of manufacture, while this product-by-process step implies they may alternatively be placed “on” the product of manufacture. On one hand, it could be argued that there may be an intermediate step of transferring the cells from the outside to the inside of the product, but it is unclear why the cells would need to be placed on the product before being transferred into the product. It may also be interpreted that either limitation results in substantially the same final structure, where the bacterial cells are still “contained in the product of manufacture” for the final product. But even if the cells being placed “into” or “on” the product were somehow interpreted to mean the same thing, or to somehow result in the same final structure, it is unclear what is intended by reciting both of these limitations in the alternative. Therefore, the limitation of “before being placed… on the product of manufacture” leads to different interpretations and appears to conflict with the other limitations of the claim.
Suggestion to obviate the rejection: Remove “or on” in line 26.
Claim 30(b) recites the limitation "the… cartridges" in lines 5-6. There is insufficient antecedent basis for this limitation in the claim. Note that while “cartridges” is recited in limitation “(a)”, limitations (a) – (c) are recited in the alternative. Therefore, there is no previous recitation of “a cartridge” when selecting limitation “(b)”.
Suggestion to obviate the rejection: Applicant may, for example, amend line 6 of the claim to recite: “…microribbons, microbeads, sheets, meshes, or mats
Claims 4-5 and 15-28 are rejected as depending from an indefinite claim and for failing to rectify the indefiniteness of the claim(s) from which they depend.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 15-17, 25-27 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lidstrom et al., US 20170081686 A1 (cited in the IDS filed 01/14/2022), hereafter, “Lidstrom”, as evidenced by Orata et al. (Phylogenomic Analysis of the Gammaproteobacterial Methanotrophs (Order Methylococcales) Calls for the Reclassification of Members at the Genus and Species Levels, Front. Microbiol. 9:3162, published 12/19/2018; cited on Form 892).
Regarding claim 1, Lidstrom teaches compositions comprising methanotrophic bacteria that function by removing gaseous methane (see Abstract; pg. 2, para. [0027]) from a gaseous substrate (see pg. 2, para. [0020]). Lidstrom teaches a methane fermentation bioreactor, comprising a plurality of solid supports comprising immobilized, viable methanotrophic bacteria (see claim 22) wherein the solid supports comprise polymers (see pg. 2, para. [0025]) which the bacteria are attached to (see pg. 12, para. [0132]). Lidstrom teaches the methanotrophs are halophilic (see pg. 7, para. [0091]). Hence, Lidstrom teaches a product of manufacture (methane fermentation bioreactor) for the removal of gaseous methane from a sample comprising gaseous methane (substrate), wherein the product of manufacture contains a plurality of methane-capturing bioagents (halophilic methanotrophic bacteria), which are immobilized in a polymer, as recited in part (iii) of the claim.
Regarding the limitation, “wherein in steps (i), (ii), and (iii) the plurality of methane-capturing bioagents comprise chemically altered halophilic methanotroph bacterial cells, wherein the chemical alteration in the halophilic methanotroph bacterial cells comprises an altered redox balance”, this limitation is interpreted to be a functional limitation that does not change the structure of the halophilic methanotroph bacterial cells. As discussed under Claim Interpretation, the ”chemical alteration” of “altered redox balance” is the functional result of a product-by-process step that does not result in any change in structure.
Regarding the limitation, “wherein the halophilic methanotroph bacterial cells with altered redox balance are prepared by a method comprising culturing the halophilic methanotroph bacterial cells in a media comprising a rare earth element before being placed into or on the product of manufacture,” this limitation is a product-by-process step which does not limit the structure of the claimed product. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See also MPEP 2113.
Regarding the limitation of part (b), Lidstrom teaches the bioreactor further comprises an inlet for supplying a mixture of methane and air (see pg. 2, para. [0028]) and an outlet designed and arranged in conjunction with the inlet to permit a flow of methane and air over or through the supports during methane fermentation (see pg. 2, para. [0029]). Hence, Lidstrom teaches the product of manufacture to comprise an input for injecting the sample and an output for removing the methane-depleted sample.
Regarding claim 15, Lidstrom teaches the methanotroph may include Methylomicrobium alcaliphilum 20Z (see pg. 3, para. [0057]). In view of Orata et al., Methylomicrobium alcaliphilum is the same species as Methylotuvimicrobium alcaliphilum (see Abstract).
Regarding claim 16, Lidstrom teaches the methanotroph may include Methylomicrobium buryatense 5G (see pg. 3, para. [0041]). In view of Orata et al., Methylomicrobium buryatense is the same species as Methylotuvimicrobium buryatense (see Abstract).
Regarding claim 17, Lidstrom teaches the bacteria to comprise halophilic methanotrophs, which include Methylomicrobium alcaliphilum 20Z (see pg. 8, para. [0092]). In view of Orata et al., Methylomicrobium alcaliphilum is the same species as Methylotuvimicrobium alcaliphilum (see Abstract).
Regarding claim 25, the further limitation of “wherein the media comprising a rare earth element comprises lanthanum” refers to a product-by-process step which does not limit the structure of the claimed product, as discussed regarding claim 1. Hence, the claim is anticipated by Lidstrom.
Regarding claim 26, the further limitation of “wherein the media further comprises calcium, copper or tungsten” refers to a product-by-process step which does not limit the structure of the claimed product, as discussed regarding claim 1. Hence, the claim is anticipated by Lidstrom.
Regarding claim 27, Lidstrom teaches the methanotroph may include Methylomicrobium alcaliphilum 20Z (see pg. 3, para. [0057]).
Regarding claim 29, Lidstrom teaches a product of manufacture (methane fermentation bioreactor) comprising (iii) a plurality of methane-capturing bioagents (halophilic methanotrophic bacteria) immobilized in a polymer, as discussed regarding claim 1.
Regarding the limitation, “wherein in steps (i), (ii), and (iii) the plurality of methane-capturing bioagents comprise chemically altered halophilic methanotroph bacterial cells, wherein the chemical alteration in the halophilic methanotroph bacterial cells comprises an altered redox balance”, this limitation is interpreted to be a functional limitation that does not change the structure of the halophilic methanotroph bacterial cells. As discussed under Claim Interpretation, the ”chemical alteration” of “altered redox balance” is result of a product-by-process step that results in a functional change in the metabolic activity of the bacterium without resulting in any change in structure.
Regarding the limitation, “wherein the halophilic methanotroph bacterial cells with altered redox balance are prepared by a method comprising culturing the halophilic methanotroph bacterial cells in a media comprising a rare earth element before being placed into or on the product of manufacture,” this limitation is a product-by-process step which does not limit the structure of the claimed product. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See also MPEP 2113.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4-5, 15-18 and 25-31 are rejected under 35 U.S.C. 103 as being unpatentable over Lidstrom, as evidenced by Orata et al., as applied to claims 1, 15-17, 25-27 and 29 above, and further in view of Liu et al. (previously cited), hereafter, “Liu”.
Regarding claim 1, Lidstrom teaches compositions comprising methanotrophic bacteria that ferment methane, wherein the viable methanotrophic bacteria are attached to and immobilized in a plurality of polymeric supports, as discussed above.
Lidstrom does not explicitly teach (i) the plurality of methane-capturing bioagents attached to or contained in a plurality of macroparticles, nanoparticles, arrays, sheets, microfibers, microtubes, microribbons or microbeads.
Liu teaches the use of triblock polymer fibers to encapsulate and immobilize microbes which remain viable and metabolically active for several months and can be used in various applications (see Abstract). Liu teaches that microorganisms most often exist in nature as biofilms which are formed by self-encapsulation in a self-developed extracellular polymeric matrix (see pg. 14201, col. 1, para. 1). Liu teaches that researchers are presently attempting to create synthetic biofilms and to exploit them for biotechnological applications in areas such as environmental remediation (see pg. 14201, col. 1, para. 1). Liu teaches that the formation of composite microbiological material containing entire microbial cells acting as catalytic centers has been pursued for several decades, and in almost all these studies, microorganisms were entrapped in polymeric materials (e.g., polyacrylamide or silica) or inorganic spheres that were orders of magnitude larger than thin films (see pg. 14201, col. 1, para. 2 to col. 2, para. 1). Liu teaches that the ability to make nanofibers and microfibers from water-soluble polymers by electrospinning offers a way to create hydrogels with nano- and microstructures (see pg. 14201, col. 2, para. 3). Liu teaches that a problem to be solved when encapsulating microbes in polymer fibers by co-electrospinning is that the porosity of the outer layers of the fiber must be increased to facilitate the transfer of material between the microbe and its environment (see pg. 14201, col. 2, para. 2). The fibers fabricated in Liu’s study formed a uniform, cross-linked scaffold with a 3D porous structure (see pg. 14202, col. 2, para. 3), and the mesh-like network of the polymer effectively immobilized the microbes while allowing the exchange of nutrients and metabolic products between the microorganism and the environment (see pg. 14205, col. 2, para. 1). Liu teaches that during electrospinning, the fibers overlap each other in a completely random manner, giving rise to the open pore structure ideal for use as membranes and in filtration (see pg. 14202, col. 1, para. 1).
It would have been obvious at the time of filing for a person of ordinary skill in the art to have arrived at the claimed invention by combining the teachings of Lidstrom and Liu, because Liu teaches bacteria can be contained and immobilized in the microfibers of a hydrogel to facilitate the transfer of material between the microbe and its environment. One would have been motivated to do so, because Liu’s system immobilizes the microbes while advantageously maintaining their metabolic activity and their exposure to the environment which can be useful for filtration and in bioremediation. One would have recognized that the polymeric hydrogel of Liu serves the same purpose as the solid supports of Lidstrom who teaches the supports may comprise a polymer. Hence, one would have recognized the results of using the hydrogel taught by Liu to immobilize the bacteria in the biofilter taught by Lidstrom would have been predictable. Hence, the combination would have been readily apparent and deemed to be a mere (A) combining of prior art elements according to known methods to yield predictable results (see MPEP 2143(I): Rationales to support rejections under 35 U.S.C. 103).
Regarding claim 4, Liu teaches the hydrogel to be an efficient support material (pg. 14201, col. 2, para. 3) containing cross-linked microfibers that form a mesh-like network (see pg. 14205, col. 1, para. 2), which meets the limitation of “wherein the plurality of…microfibers…are contained in or fabricated as…meshes”.
Regarding claim 5, Lidstrom teaches the methanotrophs of the disclosure are well suited for developing a modular system (see pg. 8, para. [0092]), and teaches that the filter units comprising the bacteria can be replaced once they are no longer functional (see pg. 12, para. [0133) and can be placed in a pipe or chamber through which methane is passed from the gaseous substrate (see pg. 12, para. [0132]). In view of the instant specification, the instantly claimed “modular units” are characterized in that they can be inserted into a superstructure or device (see pg. 3, para. 29-30) and can be easily replaced (see pg. 8, lines 17-18). Lidstrom also teaches the filter is a mesh that comprises a size that is large enough to permit passage of the gaseous substrate but not too large that the bacteria will pass through (see pg. 12, para. [0133]). Hence, the filter unit taught by Lidstrom meets the limitation of a “modular unit”, and it would have been obvious to have fabricated the “meshes” into a modular unit as described by Lidstrom.
Regarding claim 15, Lidstrom teaches the methanotroph may include Methylomicrobium alcaliphilum 20Z (see pg. 3, para. [0057]). In view of Orata et al., Methylomicrobium alcaliphilum is the same species as Methylotuvimicrobium alcaliphilum (see Abstract).
Regarding claim 16, Lidstrom teaches the methanotroph may include Methylomicrobium buryatense 5G (see pg. 3, para. [0041]). In view of Orata et al., Methylomicrobium buryatense is the same species as Methylotuvimicrobium buryatense (see Abstract).
Regarding claim 17, Lidstrom teaches the bacteria to comprise halophilic methanotrophs, which include Methylomicrobium alcaliphilum 20Z (see pg. 8, para. [0092]). In view of Orata et al., Methylomicrobium alcaliphilum is the same species as Methylotuvimicrobium alcaliphilum (see Abstract).
Regarding claim 18, Lidstrom teaches that human-related activities, such as fossil fuel production (e.g., oil and gas production), are major contributors to global CH4 emissions (see pg. 1, para. [0004]), and the CH4 for the invention can be obtained from natural gas or fracking facilities (see pg. 9, para. [0110]). Hence, it would have been obvious to have attached the product of manufacture to a natural gas processing plant or an oil well.
Regarding claim 25, the further limitation of “wherein the media comprising a rare earth element comprises lanthanum” refers to a product-by-process step which does not limit the structure of the claimed product, as discussed regarding claim 1. Hence, the claim is obvious for the same reasons as claim 1.
Regarding claim 26, the further limitation of “wherein the media further comprises calcium, copper or tungsten” refers to a product-by-process step which does not limit the structure of the claimed product, as discussed regarding claim 1. Hence, the claim is obvious for the same reasons as claim 1.
Regarding claim 27, Lidstrom teaches the methanotroph may include Methylomicrobium alcaliphilum 20Z (see pg. 3, para. [0057]).
Regarding claim 28, Lidstrom teaches that the source of gaseous methane fermented by the bacteria can be obtained from landfill emissions (see pg. 9, para. [0110]). Hence, it would have been obvious to have contained the product of manufacture in a landfill.
Regarding claim 29, the claim according to limitation “(i)” is obvious in view Lidstrom and Liu for the same reasons discussed regarding claim 1.
Regarding claim 30, Liu teaches the hydrogel to be an efficient support material (pg. 14201, col. 2, para. 3) containing cross-linked microfibers that form a mesh-like network (see pg. 14205, col. 1, para. 2), which meets the limitation of “wherein the plurality of…microfibers…are contained in or fabricated as…meshes”.
Regarding claim 31, Lidstrom teaches that human-related activities, such as fossil fuel production (e.g., oil and gas production), are major contributors to global CH4 emissions (see pg. 1, para. [0004]), and the CH4 for the invention can be obtained from natural gas or fracking facilities (see pg. 9, para. [0110]). Hence, it would have been obvious to have attached the product of manufacture to a natural gas processing plant or an oil well.
Claim(s) 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lidstrom and Liu as applied to claims 1, 4-5, 15-18, 25-28 above, and further in view of Thoniyot et al. (previously cited), hereafter, “Thoniyot”.
Regarding claim 19, Lidstrom teaches a methane fermentation bioreactor, comprising a plurality of polymers attached to immobilized, viable halophilic methanotrophic bacteria that function by removing gaseous methane from a gaseous substrate, as discussed above.
Liu teaches the immobilization of viable, metabolically active microbes acting as catalytic centers for environmental remediation using nanofibers and microfibers from polymers to create hydrogels with nano- and microstructures to facilitate the transfer of material between the microbe and its environment, as discussed above.
Thoniyot teaches that the structural combination of a polymer hydrogel network with a nanoparticle (metal or metal oxide) holds the promise of providing superior functionality to the composite material with applications in diverse fields, including catalysis and environmental remediation, and this mixing may result in synergistic property enhancement, such as increased mechanical strength and stimuli response (see Abstract; pg. 1, col. 2, para. 1). Thoniyot teaches that recently reported silica (silicon oxide) nanoparticles demonstrated remarkable improvements in mechanical stiffness and bioactivity compared to hydrogel without nanoparticles (see pg. 1, col. 2, para. 1). Thoniyot teaches that in one of the earliest investigations of such materials, gold nanoparticles were immobilized in polyacrylamide, resulting in uniform distribution of the gold nanoparticles in the gel matrix (see pg. 1, col. 2, para. 2). In another study, researchers prepared gold nanoparticle hydrogels by adding nanoshell gold nanoparticles into a solution of monomers (see pg. 2, col. 2, para. 2). Thoniyot teaches that hydrogels infused with noble metal nanoparticles (such as gold) showed excellent retention of catalytic activity because aggregation induced deactivation was prevented by the hydrogel network (see pg. 9, col. 1, para. 1). Thoniyot teaches that nanoparticle-hydrogel composites exhibit multi-functional and stimuli responsive properties, making them ideal for environmental remediation systems for catalytic oxidation of toxins and the removal of pollutants (see pg. 11, col. 2, para. 1).
It would have been obvious at the time of filing for a person of ordinary skill in the art to have arrived at the claimed invention by combining the teachings of Lidstrom, Liu and Thoniyot for at least the following reasons. First, one would have recognized the advantages of immobilizing the microbes taught by Lidstrom using a hydrogel taught by Liu, because Liu teaches that doing so maintains the bacteria’s metabolic activity and their exposure to the environment which can be useful for filtration and in bioremediation. Further, one would have recognized from Thoniyot that the use of metal oxide nanoshells or non-metal oxide (e.g., silica) nanoshells in hydrogels is known in the art, and Thoniyot teaches such hydrogels have increased mechanical strength, retain catalytic activity, and are ideal for the environmental removal of pollutants. One would have recognized from Lidstrom and Liu that this retention of catalytic activity by the bacteria is an important factor when immobilizing them in a polymeric material for the bioprocessing of a substrate (i.e., methane). Hence, one would have recognized there to be an advantage when using a plurality of metal oxide nanoshells in the hydrogel and there to be a reasonable expectation of success when applying the combination. Hence, the combination would have been readily apparent and deemed to be a mere (A) combining of prior art elements according to known methods to yield predictable results (see MPEP 2143(I): Rationales to support rejections under 35 U.S.C. 103).
Regarding claim 20, Thoniyot teaches metal nanoshells, as discussed above.
Regarding claim 21, Thoniyot teaches the metal nanoshells are gold nanoshells, as discussed above.
Regarding claim 22, Thoniyot also teaches nanoparticle-based hydrogels comprising cadmium selenide (CdSe) or cadmium telluride (CdTe) which were able to form stable gels even under irradiation by visible light (see pg. 5, col. 2, para. 2). Thoniyot teaches that polymeric nanoparticles composed of “core-shell” particles have been developed for a variety of applications, and the inclusion of these particles in a hydrogel results in enhanced biological stability and mechanical properties (see pg. 10, col. 2, para. 2). Thoniyot teaches hydrogels wherein core-shell particles comprising a CdSe core are coated in a CdS shell (CdSe/CdS core-shell nanoparticle) and incorporated into a hydrogel (see pg. 10, col. 1, para. 1). Hence, it would have been obvious for the plurality of nanoshells to comprise CdSe nanoparticles coated with CdS.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lidstrom, as applied to claims 1, 15-17, 25-27 and 29 above, and further in view of Nagpal et al., US 20220235384 A1 (effectively filed 05/14/2019; previously cited), hereafter, “Nagpal”, and McElroy et al. (previously cited), hereafter, “McElroy”.
Regarding claim 23, Lidstrom teaches a methane fermentation bioreactor, comprising a plurality of polymers attached to immobilized, viable halophilic methanotrophic bacteria that function by removing gaseous methane from a gaseous substrate. Lidstrom also teaches the gaseous substrate for fermentation by the methanotrophic bacteria may also include carbon dioxide (see pg. 3, para. [0056]). Lidstrom also discusses the production of useful products from the gaseous substrate (see, e.g., pg. 2, para. [0033]; pg. 3, para. [0054]; pg. 7, para. [0090]).
Lidstrom does not teach wherein the plurality of methane-capturing bioagents are (i) attached to or contained in a plurality of nanoparticles, wherein the plurality of nanoparticles comprise CdTe nanoparticles coated with CdSe.
Nagpal teaches nano-biohybrid organisms (e.g., bacteria) comprising different core-shell quantum dots (QDs) or gold nanoparticle clusters, which, when illuminated by light, drive the renewable production of biofuel molecules and chemicals using carbon-dioxide (CO2) as a substrate (see pg. 1, para. [0002]). Nagpal teaches that many naturally occurring and synthetic bacteria can accomplish industrially relevant reactions using chemical energy to generate electrons and reduce readily available chemical feedstocks and can be labeled as living factories. However, they derive the chemical energy needed sometimes from valuable food stocks, thereby reducing their attraction for energy conversion to useful solar or biofuels. Inorganic photocatalysts directly derive energy from sunlight to generate photoelectrons for reduction of inexpensive and abundant chemical feedstocks like, for example, air, water, and carbon-dioxide, but their lack of selectivity, low efficiency, and sometimes use of conditions such as high-temperature and pressure limit their widespread application. See pg. 36, para. [0388].
Nagpal teaches that combining these desired functionalities of direct stimuli-activations via light, voltage, or magnetic field, with the versatility of designing desired synthetic metabolic networks in living cells can provide an unprecedented platform for designing and creating multifunctional living nano-biohybrid organisms (or nanorg's), and for specific applications as living solar-powered factories for direct energy conversion to solar fuels. See pg. 37, para. [0389].
Nagpal teaches that living nano-biohybrid organisms or nanorgs combine the specificity and well-designed surface chemistry of an enzyme catalyst site, with the strong light absorption and efficient charge injection (for biocatalytic reaction) from inorganic materials, and metal nanoparticles and nanoclusters (NCs), such as gold (Au), offer strong light absorption properties and biocompatibility for potential application in living nanorgs (see pg. 38, para. [0396]). Nagpal teaches that biochemical conversion of inexpensive feedstocks like, such as air, water, and carbon dioxide, offers specificity and low cost (see pg. 38, para. [0397]). Nagpal teaches that living or whole-cell biohybrids offer additional advantage of self-replication or growth, avoiding enzyme deactivation, and enzyme generation and repair (see pg. 38, para. [0398]).
Nagpal teaches embodiments wherein the nano-biohybrid bacteria comprise a core-shell quantum dot, wherein said core is selected from CdS or CdSe, and coated with a ZnS shell (see pg. 1, para. [0009]; pg. 8, para. [0060]). As illustrated in FIG. 1A, the quantum dots absorb sunlight in non-photosynthetic bacteria for direct solar-to-chemical fuel production using air, water and CO2 as chemical feedstocks (see pg. 8, para. [0057]).
Nagpal does not teach the nanoshells comprising CdTe nanoparticles coated with CdSe.
McElroy teaches the synthesis and characterization of CdTe/CdSe core/shell colloidal quantum dots, having an absorption edge in the near-infrared, potentially enabling more efficient exploitation of the solar spectrum (see Abstract). McElroy teaches that there are a number of properties of the QDs that make them well-suited to the role of photo absorbers, as they are photo-stable and highly absorbing (see pg. 65, col. 1, para. 1). It was also apparent that the samples with CdTe-cores outperformed their CdSe analogues (see pg. 70, col. 1, para. 1).
It would have been obvious at the time of filing for a person of ordinary skill to have arrived at the claimed invention by combining the teachings of Lidstrom, Nagpal and McElroy, because both Lidstrom and Nagpal teach the use of bacteria as effective reducers of carbon emissions, such as gaseous methane and carbon dioxide, and Nagpal further teaches the use of bacteria as solar-powered fuel factories to produce useful products from carbon dioxide. As Nagpal and McElroy teach various core/shell nanoparticles (e.g., CdSe/CdTe, CdTe/CdSe, CdSe/CdTe/CdS, CdS/ZnS, CdSe/ZnS, etc.) sharing similar functional properties, one would have recognized each to be a potential alternative to using the core-shell quantum dots (nanoshells) taught by Nagpal. Furthermore, one would have been particularly motivated to have used the CdTe/CdSe nanoshells taught by McElroy to increase the light absorption of the system, which would have been expected to enhance carbon dioxide reduction and increase the production of useful products. Hence, the combination would have been readily apparent and deemed to be a mere (A) combining of prior art elements according to known methods to yield predictable results (see MPEP 2143(I): Rationales to support rejections under 35 U.S.C. 103).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lidstrom and Nagpal as applied to claim 23 above, and further in view of Rosenman et al. (US Patent No. 9,991,458 B2; previously cited), hereafter, “Rosenman”.
Regarding claim 24, Lidstrom teaches the fermentation of gaseous methane and carbon dioxide by immobilized methanotrophic bacteria and the production of useful products from the gaseous substrates, as discussed above. Nagpal teaches nano-biohybrid bacteria comprising a core-shell quantum dot, which absorbs sunlight for direct solar-to-chemical fuel production using air, water and CO2 as chemical feedstocks using non-photosynthetic bacteria, as discussed above. Nagpal also teaches that metal nanoparticles and nanoclusters (NCs), such as gold (Au), offer strong light absorption properties and biocompatibility for the microorganisms to function as living solar-powered factories for direct energy conversion to solar fuels, as discussed above.
Lidstrom and Nagpal do not teach wherein the plurality of gold nanoshells comprise a silica core coated by a gold metallic shell.
Rosenman’s disclosure relates to methods of fabricating a nanoshell (see col. 1, lines 57-59). Rosenman teaches these small particles enable construction of materials and structures of well-defined properties, enabling opportunities for technological and commercial development in applications such as biotechnology (see col. 1, lines 26-34). Rosenman teaches that metallic nanoshells effectively interact with light due to collective oscillations of the conduction electrons on the surface of the nanoshell, and the composition of the nanoshell can advantageously result in the higher absorption of light and spectral sensitivity (see col. 16, lines 47-58). Rosenman teaches this effect may be much stronger if the metal nanoparticles have a core-shell structure, for example, a metal coating on a spherical core, where gold shells are formed on silica particles (see col. 17, lines 46-55). Roseman teaches the “silica core-gold nanoshells” (see col. 17, lines 56-57), comprising a silica core, are coated with gold (Au) (see col. 13, lines 52-55).
It would have been obvious at the time of filing for a person of ordinary skill to have arrived at the claimed invention by combining the teachings of Lidstrom, Nagpal and Rosenman, because both Lidstrom and Nagpal teach the use of bacteria as effective reducers of carbon emissions, such as gaseous methane and carbon dioxide, and Nagpal further teaches the use of bacteria as solar-powered fuel factories to produce useful products from carbon dioxide. As Rosenman teaches metallic nanoshells, such as silica core-gold nanoshells, effectively increase light absorption and spectral sensitivity, one would have been motivated to have used the silica core-gold nanoshells taught by Rosenman to increase the light absorption of the system, which would have been expected to enhance carbon dioxide reduction and increase the production of useful products. Furthermore, there would have been a reasonable expectation of success, because Nagpal teaches that metal nanoparticles and nanoclusters (NCs), such as gold (Au), offer strong light absorption properties and are biocompatible with microorganisms. Hence, the combination would have been readily apparent and deemed to be a mere (A) combining of prior art elements according to known methods to yield predictable results (see MPEP 2143(I): Rationales to support rejections under 35 U.S.C. 103).
Response to Declaration
The declaration under 37 CFR 1.132 filed 03/30/2026 is insufficient to overcome the rejection of claims based upon 35 U.S.C. 103 as set forth in the last Office action because:
The facts presented are not germane to the rejection at issue, as they relate to a product-by-process limitation and fail to obviate the examiner’s interpretation of the claim.
The declaration recites the prior art of Akberdin 2018b, Akberdin 2018 and Collins (each cited in the IDS filed 03/30/2026) which collectively disclose that exposing a halophilic methanotroph bacterial cell to a rare earth element, such as lanthanum, triggers a shift in metabolism of the bacterial cell, shifting the bacterium between using two different types of methanol dehydrogenase enzymes. Based on these references, the declaration explains that this results in a change in redox balance and energy production, making this shift desirable for faster methane oxidation and growth. The declaration states that after reading the prior art of Liu, one of skill would not have been motivated to modify Lidstrom to use chemically altered halophilic methanotroph bacterial cells.
This declaration is insufficient because the prior art and opinions presented therein do not disclose the culturing step of the claims to result in a distinctive structural change in the bacterium. It is understood that the bacteria of the disclosure possess both metabolic pathways regardless of which one is being actively expressed, and they retain the ability to produce and use either enzyme when subjected to different culture conditions. Therefore, the method step of culturing the bacteria with a rare earth element does not result in or imply a change in structure, only a change in function that is an inherent property of the bacterium. As the claims are directed to a product, and the step of culturing the bacteria (before being placed into the final product) is a product-by-process limitation, determination of patentability is based on the product itself, not its method of production. Because the declaration does not identify any structural change in the product that may be implied by this product-by-process step, there is no structure implied by the process step for the examiner to consider. Therefore, the declaration does not provide any objective evidence which can be considered germane to the rejection at issue.
Response to Arguments
Regarding the rejections of the claims under 35 U.S.C. 102(a)(1) as being anticipated by Lidstrom, Applicant argues that claim 1 is amended to include the limitations of claims 22 and 23, which were not subject to this rejection. Therefore, Lidstrom does not teach each every limitation of the amended claims.
Applicant's arguments have been fully considered but they are not persuasive.
While the limitations of claims 22 and 23 have been incorporated into claim 1, these limitations refer to “the plurality of nanoshells” which are only recited in limitation “(ii)”. As limitations (i) – (iii) are recited in the alternative, and the rejection was based upon limitation “(iii)”, this amendment does not change the basis for the rejection. Therefore, the rejection is maintained.
Regarding the rejections of the claims under 35 U.S.C. 103, Applicant argues that claim 1, as amended, expressly clarifies that the structure of the halophilic methanotroph bacterial cells are altered after exposure to the rare earth elements. Applicant cites paragraph [0046] of the specification. Applicant makes this same argument for each of the rejections under 35 U.S.C. 103.
Applicant’s arguments have been fully considered but they are not persuasive.
The section of the specification that Applicant presents as evidence only discusses the structure of the culture medium (“e.g., copper, iron, calcium, tungsten and rare earth elements”) for “preparing methane-capturing agents for immobilization”. Therefore, the only structures that can be identified in Applicant’s argument are the materials used in the product-by-process step of culturing, which are not part of the final product.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
MPEP 2113(I) also states, “[t]he structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product.”
In the instant case, no distinctive structural characteristics of the recited bacteria resulting from the claimed product-by-process step have been disclosed on record, and the patentability of the product does not depend on its method of production.
Applicant further argues that based on the expert declaration of Dr. Kalyuzhnaya, one of skill in the art after reading the research published by Akberdin et al. (2018, Akberdin et al. (2018b) and Collins & Kalyuzhnaya (2018) would understand that products of manufacture of the instant invention are using chemically altered halophilic methanotroph bacterial cells having a significantly altered metabolism.
Applicant’s arguments have been fully considered but they are not persuasive for the same reasons discussed under Response to Declaration.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS ARMATO whose telephone number is (703)756-5348. The examiner can normally be reached Mon-Fri 11:00am-7:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at (571) 272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DENNIS IGNATIUS ARMATO JR/Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651