DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Response to Amendment
The amendment filed 9/26/25 has been entered and fully considered.
Claims 19-32 remain pending.
The previous objection to the specification and 35 USC 112 rejection of claim 20 have been withdrawn due to the amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/26/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 21 is objected to because of the following informalities: the amendment recites “wherein the Achaea” which appears to be a typographical error. Appropriate correction is required.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 19-32 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over CHENG (US 2009/0317882).
Regarding claims 19, 20, 23, 24, 30 and 32, Cheng teaches:
a method of producing methane in an electro methanogenic reactor (biological reactor) that includes an anode, a cathode, wherein the anode and cathode can be made of materials such as carbon paper, carbon cloth, carbon felt, carbon wool, carbon foam (a reticulated carbon foam; a porous cathode), graphite, porous graphite, graphite powder, graphite granules, graphite fiber, a conductive polymer, a conductive metal, and combinations of any of these (a porous electrically conductive cathode, where the cathode is impregnated with the microorganism; paragraph 49);
a power source is in electrical communication with the anode and cathode (supplying electricity)(paragraph 46), carbon dioxide is provided to (source of carbon dioxide) the plurality of methanogenic microorganisms where the carbon dioxide is used as a carbon source to produce methane gas (carbon dioxide is supplied to the culture in the first chamber; paragraph 34); the reactor contains a suitable medium or solvent compatible with metabolism of the contained microbes and that the medium is aqueous (water or PBS, a water containing buffer solution absent a carbon source)(paragraph 89);
the reaction chamber may have one or more compartments, such as an anode compartment (the second chamber) and a cathode compartment (the first chamber) separated by a separator or ion exchange membrane, such as a proton exchange membrane (i.e., a solid polymer electrolyte membrane PEM) (proton permeable, gas impermeable barrier (paragraph 45), a conductive conduit connecting the anode and the cathode, and a plurality of methanogenic microorganisms disposed on the cathode (paragraph 34); a channel is included in defining a passage from the exterior of the reaction chamber to the interior (paragraph 66), more than one channel may be included to allow and/or regulate flow of materials into and out of the reaction chamber (a channel may be included to allow for outflow of methane generated at the cathode (outlet) and a channel may be included to allow for inflow of carbon dioxide to the methanogens at the cathode; paragraph 66) (supplying carbon dioxide), one or more channels may be included in a reaction chamber for addition and removal of various substances (paragraph 45). In view of the teachings of the inflow of carbon dioxide, the carbon dioxide will be in the aqueous medium where it inherently will dissolve in the medium (electrolytic medium) and be circulated to the methanogens at the cathode (circulating aqueous medium comprising carbon dioxide);
the power source for enhancing the electrical potential between the anode and cathode and providing electrons to the microorganisms can be included, where use of a power source to add a voltage in an electro methanogenic reactor can increase the rate of desired reactions and increase production of methane (reactor is coupled to a source of electricity; paragraph 55). The power source can be any of various power sources, including, a battery or capacitor (current collector). Alternatively, Cheng teaches that an electrical connector, which is a conduit for electrons (item 17) (current collector), is shown along with a connected power source shown at item 18 (paragraph 48 and Fig. 1). As stated above, Cheng teaches that the passage is formed between the proton permeable barrier and the current collector (cathode) of the present invention.
reaction conditions can vary depending on the desired application and any temperature in the range of 0 to 100 °C when including microbes suitable for selected temperatures (methanogenic microorganism culture is maintained at a temperatures above 50 °C) (paragraph 88);
a methane collection unit may include one or more methane conduits for directing a flow of methane from the cathode to a storage container or directly to a point of use and may include a container for collection of methane from the cathode, a conduit for passage of methane, the conduit and/or container in gas flow communication with a channel provided for outflow of methane from the reactor chamber (methane is collected from the outlet of the first chamber; paragraph 65).
Cheng does not specifically include the above teachings into one embodiment (the methanogen, the temperature conditions, the type of anode and cathode and their respective current collectors, etc.), all the limitations above are suggested as suitable for inclusion into the Cheng method. Therefore, a person of ordinary skill would have been motivated to combine the recited components as described above with a reasonable expectation of success since Cheng teaches that these are desirable components for a method to produce methane via an electro methanogenic reactor.
Regarding claims 21, 25, 26, 28 and 29, Cheng teaches that microorganisms present on the cathode and/or in a cathode chamber (the culture resides in the circulating medium) include at least one or more species of methanogenic microbes (including Methanothermobacter thermautotrophicus) and combinations of any of the microbes indicated and/or other methanogens (paragraph 60). Cheng also indicates that methanogens and conditions for their growth and maintenance are known (paragraph 60). It would have been within the purview of one of ordinary skill in the art to have prepared and maintained the methanogenic culture (i.e., Methanothermobacter thermautotrophicus) that has an increased efficiency and exhibits nearly stationary growth conditions since Cheng teaches that methanogens and conditions for their growth and maintenance are known (paragraph 60), where maintenance is interpreted to include maintaining the culture during both the growth and stationary or near stationary phases.
Cheng further teaches that methanogens may be provided as a purified culture, enriched in methanogens, or even enriched in a specified species of microorganism (paragraph 61). With regard to claim 21 and the limitation “wherein the culture comprises Archaea having an increased efficiency and wherein the Achea (sic) exhibit,” the wherein statement are directed to intended results. It is noted that as indicated in MPEP § 2111.04, a wherein clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.
Regarding claim 22, Cheng teaches that the conductive conduit of the electro methanogenic reactor is in electrical communication with a power source (power source) and the power source is active to enhance a potential between the anode and the cathode (e.g., a wire is connected to the power source from the anode and from the cathode; paragraphs 8-10 and 46). Cheng also teaches that while not required for the process, use of a power source to add a voltage in an electro methanogenic reactor can increase the rate of desired reactions and increase production of methane (paragraph 55). Cheng also teaches that the methods include increasing methane gas production rate in a biological methanogenic reactor by adding an additional voltage to the cathode having methanogenic microorganisms disposed thereon (paragraph 12). In view of the above teachings, Cheng teaches methods for producing methane via application of electricity (to provide electrons) and carbon dioxide to methanogenic bacteria on the cathode of a bioreactor. As noted above, the addition of electricity to the cathode containing methanogenic bacteria increases methane production. In view of this, the absence electricity would not produce such an increase in methane production since electrons would not be transferred to the methanogenic bacteria (which utilize the electrons to reduce the carbon dioxide to methane). It would have been within the purview of one of ordinary skill in the art to apply a power source and turn on the power (or alternatively not turn on the power; i.e., turn off the power) for the electro methanogenic reactor since it is known that in view of the above, electrical equipment or a power source can be turned on (recoupled) or off (decoupled) and as a result of turning on the power, Cheng teaches that methane output is increased. As such, Cheng teaches a dormant state (i.e. power off, no methane production) and an operating state (methane generation when the power is on). How much the output is increased (difference in methane production from the “off” state and “on” state) is an intended result, which is not given significant weight when it simply expresses the intended result of a process step positively recited (MPEP § 2111.04).
With regard to claim 27 and the shape of the current collector as a layer, as noted above, the current collectors and the channels, the passage (channel) is broadly interpreted as when a chamber has a passage with a membrane in the chamber, there is going to be a chamber-membrane or collector-membrane opposing surfaces that will be inherent structures of the chamber (see the paragraphs concerning MPEP § 2112.01/(Il). Additionally, with regard to maintaining a sealed condition, the claims are interpreted that the passage maintains a sealed condition in view of the proton permeable barrier and an opposing surface of the chamber. In view of the above, Cheng teaches that the passage is formed between the opposing surfaces of a proton permeable barrier and the current collector (cathode) and a sealed condition is maintained. In view of the above, the claim interpretation and the teachings in Cheng, since Cheng teaches that the cathode-cathode current collector can be of a porous solid material (e.g., paragraph 49), the shape of the cathode-collector into a layer would be a matter of design choice where as noted in MPEP § 2144.07, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)). Further, as noted in MPEP § 2144.04(IV)(B) configuration of a claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.
Regarding claim 31, in view of the above teachings, it would have been obvious to one of ordinary skill in the art to configure the methanogenic reactor so that water is a primary net electron donor for the methanogenic microorganisms since Cheng teaches the reactor contains a medium that is aqueous (e.g., water or PBS, a water containing buffer solution; paragraph 89), the cathode can made of different materials (such as carbon paper, carbon cloth, carbon felt, carbon wool, carbon foam, graphite, etc.), and that different methanogenic microorganism can be used, which through routine experimentation, the reactor could be optimized so that primary net electrons from water are available to the methanogenic microorganisms for the production of methane in view of the application of electricity of the reactor where electrolysis would allow the availability of net electrons from water.
Response to Amendment
The declaration under 37 CFR 1.132 filed 9/26/25 is insufficient to overcome the rejection of claims 19-32 based upon 35 USC 103 (a) over CHENG as set forth in the last Office action because: it is unpersuasive in view of the rejection above since the results in the Declaration are not unexpected in view of the provided teachings of CHENG and the rationale for obviousness. As stated in the above rejection, CHENG discloses all of the positively claimed elements of the instant invention.
Furthermore, the Declaration argues that the present invention provides “dramatic and surprising results” part 6-7, however, these results are based off a comparison between Example 2 of the current application and Example 1 of CHENG. However, the Example 1 of CHENG is merely one narrow example of its teachings, whereas the entirety of the CHENG disclosure encompasses more than just that example, see the above rejection for details. As the limited teachings of Example 1 of CHENG disclose a different reactor than that claimed, it is expected these reactors would have different results. CHENG discloses the reactor is not limited to that of Example 1 and in fact can be a two compartment (second chamber) reactor separated by a proton exchange membrane (paragraph 45), with an anode, a cathode, a conductive conduit between these and a plurality of methanogenic microorganisms disposed on the cathode (paragraph 34). CHENG further discloses the microorganisms can be one or more species (paragraph 60) and they can be provided as a purified culture (paragraph 61). CHENG further discloses the reaction conditions can vary depending on the desired use and the reactor may be used at any temperature within the range of 0-100 degrees C by selecting the appropriate microbes (paragraph 88). Therefore, CHENG discloses embodiments that encompass the limitations of the claimed invention and the declaration’s narrow focus on Example 1 of CHENG does not compare the instant claims against the closest prior art disclosed in CHENG.
Additionally, the declaration states there is a 20,000 fold higher productivity in the claimed invention than in CHENG, but does not clearly describe where the numbers for the VVD calculation of Example 2 of the invention are found. The instant specification and figures do not provide a basis for these numbers. Therefore the Declaration does not provide a sufficient explanation of the 20,0000 fold higher productivity. Furthermore, these arguments do not appear to be commensurate in scope with the claims as all of the required conditions to produce these unexpected results of increased productivity are not in the present claims.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant's arguments filed 9/26/25 have been fully considered but they are not persuasive.
In response to applicant’s arguments that CHENG does not disclose the proton permeable barrier, does not disclose the culture is not a mixed culture and unexpected results of the invention, these arguments were addressed in the above response to the Declaration.
Additionally, applicant argues that CHENG teaches away from the claimed invention because of it results of Example 1 and Figure 6a. It is noted that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. M.P.E.P. 2123. See, also, M.P.E.P. 2131.05. As stated in the response to the Declaration, the disclosure of CHENG is broader than those highlighted by Example 1 and the tests performed in Figure 6a. Specifically, CHENG does disclose the elements of the claimed invention as stated in the above rejection.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, a person of ordinary skill would have been motivated to combine the recited components as described above with a reasonable expectation of success since Cheng teaches that these are desirable components for a method to produce methane via an electro methanogenic reactor (Obvious to try - see MPEP 2143).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE B HENKEL whose telephone number is (571)270-5505. The examiner can normally be reached M-Th 11-7 EST, Alt. Fridays.
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, Michael Marcheschi can be reached at 571-272-1374. 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.
/DANIELLE B HENKEL/Examiner, Art Unit 1799
/William H. Beisner/Primary Examiner, Art Unit 1799