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 .
Response to Amendment
In applicant’s reply on 09/19/2025, the claims were amended. Based on these amendments, the rejection under 35 U.S.C. 112 has been withdrawn and new rejections under 35 U.S.C. 112 can be found below. The rejections under 35 U.S.C. 103 and Double Patenting have been revised below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4 and 6-20 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As amended, the last limitation of Claim 1 reads “determining, based on the identifying, an amount of the sustainable carbon product to be incorporated per day into an animal feed of the animal subject”. This is not supported by the disclosure as originally filed. The specification discloses the use of 3 kg of sustainable carbon product per ton of feed (Par. 0032), 0.3% sustainable carbon product (Par. 0048, 0051), but there is no mention that these amounts were chosen based on an identification of a specific microbe in the animals.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-4, 7, 10, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cagigas (US 20200346929 A1) in view of Naik (US 2017/0251674 A1).
Regarding Claim 1, Cagigas teaches a method of preventing or treating microbial infection in an animal by incorporating sustainable carbon product into an animal feed (biochar added to feed to increase immunity in animals from disease Par. 0040),
the method comprising obtaining the sustainable carbon product from a process comprising obtaining a biomass feedstock (performing a pyrolysis on biomass to produce biochar Par. 0020)
feeding the biomass feedstock to a gasification or pyrolysis system (performing a pyrolysis on biomass Par. 0020)
gasifying or pyrolyzing the biomass feedstock in the gasification or pyrolysis system to produce a gas and the sustainable carbon product (performing a pyrolysis on biomass to produce biochar Par. 0020, combustion Par. 0022, processing may produce exhausts Par. 0025),
incorporating the sustainable carbon product into an animal feed of an animal subject in need thereof (biochar added to feed Par. 0040)
administering the animal feed incorporating the sustainable carbon product to the animal subject (ingested by animals Par. 0040).
Cagigas does not teach identifying an animal subject with a microbe forming the microbial infection, wherein the microbe comprises E. coil, Salmonella, or Campylobacter; determining, based on the identifying, an amount of the sustainable carbon product to be incorporated per day into an animal feed of the animal subject, or observing, as a result of the administration, at least a 90% reduction in microbe forming the microbial infection in the animal subject.
Naik, in the same field of endeavor, teaches identifying an animal subject with a microbe forming the microbial infection, wherein the microbe comprises E. coil, Salmonella, or Campylobacter (modulating the flora of bacteria in an environment wherein the environment is in or on an animal such as poultry, pigs, cattle sheep, etc Par. 0043; identifying the bacteria for which the quorum sensing is to be inhibited, for example E. coli or salmonella Par. 0042)
determining, based on the identifying, an amount of a carbon product to be incorporated per day into an animal feed of the animal subject (administering an effective amount of a quorum sensing control composition Par. 0042; effective amount is the amount of quorum sensing control agent which disrupts quorum sensing ability of the bacteria in question Par. 0119; organic compounds can act as adsorbent/catalytic inhibitors, including synthetic materials isolated from biomass such as activated carbon Par. 0074) .
It would have been obvious to one having ordinary skill in the art, at the time of filing, to modify the invention of Cagigas with the method of Naik. Though Naik teaches activated carbon rather than the sustainable carbon product of the invention, it is nonlimiting (Non-limiting examples of sorptive organic compounds or sorptive organic materials include synthetic materials isolated from biomass, such as activated carbon Par. 0074), and as Cagigas teaches the use of biochar to treat infection, it would have been obvious to one having ordinary skill in the art to try applying the method of Naik to Cagigas to use the sustainable carbon product of Cagigas to treat E. coli or Salmonella without harming “good” bacteria (Naik Par. 0031-0032).
Naik does not teach observing, as a result of the administration, at least a 90% reduction in microbe forming the microbial infection in the animal subject.
Regarding at least a 90% reduction in microbe forming the microbial infection, this limitation is not given patentable weight as it is directed towards an intended result. A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP 2111.04.
Regarding claim 3, Cagigas and Naik do not teach incorporating the predetermined amount of the sustainable carbon product per day per animal into the animal feed results in at least a 99% reduction in microbe forming the microbial infection.
Regarding at least a 99% reduction in microbe, this limitation is not given patentable weight as it is directed towards an intended result. A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP 2111.04.
Regarding claim 4, Cagigas and Naik do not teach wherein the incorporating the predetermined amount of the sustainable carbon product per day per animal into the animal feed results in at least a 99.9% reduction in microbe forming the microbial infection.
Regarding at least a 99.9% reduction in microbe, this limitation is not given patentable weight as it is directed towards an intended result. A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP 2111.04.
Regarding Claim 7, Cagigas further teaches the biomass comprises agriculture crop residues, forest residues, special crops grown specifically for energy use, organic municipal solid waste, or animal waste (manure, byproducts of wood Par. 0021, biosolids Table 2).
Regarding Claim 10, Cagigas further teaches the sustainable carbon product comprises hydrogen, nitrogen, sulfur, or oxygen (Nitrogen, Sulfur Par. 0032 Table 2).
Regarding Claim 13, Cagigas further teaches the sustainable carbon product comprises substantially no heavy metals or pesticides (heavy metals all below 1 ppm Par. 0030).
Regarding Claim 20, Cagigas further teaches the sustainable carbon product binds with at least one of ammonia or hydrogen gas. (sequester ammonia Par. 0044). Though it does not specify that this occurs in an intestinal tract of the animal, one of ordinary skill would expect that if the sustainable carbon product has an affinity to sequester ammonia, this would be true, or in other words would not be different, within an intestinal tract as well.
Claims 6, 8, 11, 12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik, further in view of Belcher et al. (US 20170196812 A1).
Regarding Claim 6, Cagigas and Naik teach claim 1 as seen above, but do not teach the sustainable carbon product comprises particles having a size range of less than 325 mesh.
Belcher teaches the sustainable carbon product comprises particles having a size range of less than 325 mesh (3 mesh, Par. 0097, 0098, Table 1). It would have been obvious to modify the method of modified Cagigas with the mesh size of Belcher. One of ordinary skill in the art would have been motivated to make this modification to select the proper mesh size for application (Belcher Par. 0098).
Regarding Claim 8, Cagigas and Naik teach claim 1 as seen above, but do not teach the biomass comprises at least one of pine wood, almond shells and hulls, pistachio shells, and walnut shells.
Belcher teaches the biomass comprises at least one of pine wood, almond shells and hulls, pistachio shells, and walnut shells. (Pistachio shells Par. 0158 Fig. 11) It would have been obvious to modify the method of modified Cagigas with the biomass material of Belcher. One of ordinary skill in the art would have been motivated to make this modification to produce a raw biochar which can be further treated to properties to be safe for consumption (Belcher Par. 0082, 0084).
Regarding Claim 11, Cagigas and Naik teach claim 1 as seen above, but do not teach the sustainable carbon product comprises less than 10% ash.
Belcher teaches the sustainable carbon product comprises less than 10% ash (Table 6 Pg. 21). It would have been obvious to modify the method of modified Cagigas with the ash levels of Belcher. One of ordinary skill in the art would have been motivated to make this modification to have levels not harmful to the animals (Belcher 0085).
Regarding Claim 12, Cagigas and Naik teach claim 1 as seen above, but do not teach the sustainable carbon product comprises less than 10% water.
Belcher teaches the sustainable carbon product comprises less than 10% water (less than 1% Par. 128) It would have been obvious to modify the method of modified Cagigas with the moisture levels of Belcher. One of ordinary skill in the art would have been motivated to make this modification to reduce fungal and bacterial amounts within the sustainable carbon product (Belcher 0261).
Regarding Claim 14, Cagigas and Naik teach claim 1 as seen above, but do not teach the moisture content of the sustainable carbon product is less than 5%.
Belcher teaches the moisture content of the sustainable carbon product is less than 5% (less than 1% Par. 128) It would have been obvious to modify the method of modified Cagigas with the moisture levels of Belcher. One of ordinary skill in the art would have been motivated to make this modification to reduce fungal and bacterial amounts within the sustainable carbon product (Belcher 0261).
Regarding Claim 16, Cagigas and Naik teach claim 1 as seen above, but do not teach the sustainable carbon product has a pH ranging from 6 to 10.
Belcher teaches the sustainable carbon product has a pH ranging from 6 to 10 (pH of 6.5 to 6.8 Par. 0162). It would have been obvious to modify the method of modified Cagigas with the pH levels of Belcher. One of ordinary skill in the art would have been motivated to make this modification to adjust pH to a level not harmful to animals (Belcher Par. 0425).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik as evidenced by Parchem (2009).
Regarding Claim 17, Cagigas and Naik teach claim 1 as seen above.
Though Cagigas doesn’t explicitly teach the sustainable carbon product has a melting point of about 3500° C, it is known in the art that activated carbon/charcoal has a melting point of 3550 ° C (Parchem Section 9). As the sustainable carbon product of Cagigas, biochar, is similar to charcoal, one of ordinary skill in the art would expect that they would have similar physical properties, including melting point.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik, further in view of Santos et al. (2019).
Regarding Claim 9, Cagigas and Naik teach the method of claim 1, but do not teach the sustainable carbon product comprises at least 85% carbon.
Santos, in the same field of endeavor, teaches the sustainable carbon product comprises at least 85% carbon (60-90% carbon Section 1.3.5). It would have been obvious to modify the method of modified Cagigas with the carbon content of Santos. One of ordinary skill in the art would have been motivated to make this modification to sink atmospheric CO2 (Santos Section 1.3.5).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik, further in view of Brewer et al. (2015).
Regarding Claim 15, Cagigas and Naik teach the method of claim 1 above, but do not teach the sustainable carbon product has a bulk density of about 0.42 g/cm3 uncompacted.
Brewer, in the same field of endeavor, teaches the sustainable carbon product has a bulk density of about 0.42 g/cm3 uncompacted (Par. 4 Table 1). It would have been obvious to apply the density of Brewer to the method of modified Cagigas. One of ordinary skill in the art would have been motivated to make this modification to increase pore volume and allow for higher impregnation capacity (Belcher Par. 0142).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik, further in view of Cheiky et al. (US 8317891 B1).
Regarding Claim 18, Cagigas and Naik teach the method of claim 1 seen above. Though Cagigas undergoes an pyrolysis of plant matter, it does not explicitly teach that the process comprises a chemical reaction comprising C6H12O6 + 02 + H2O -----+ CO + CO2 + H2 + sustainable carbon product.
Naik does not teach the process comprises a chemical reaction comprising C6H12O6 + 02 + H2O -----+ CO + CO2 + H2 + sustainable carbon product.
Cheiky, referenced in Belcher above, and in the same field of endeavor teaches the process comprises a chemical reaction comprising C6H12O6 + 02 + H2O -----+ CO + CO2 + H2 + sustainable carbon product (biomass used to produce char Abstract; biomass includes any material from plant source Col. 5 lines 26-42; CO H2 as products Table 2; wood releases CO2 Col. 9 lines 42-57). Though Cheiky does not explicitly list the components of the biomass plant material, one of ordinary skill in the art would recognize that glucose, oxygen, and water are all components of plant matter. It would have been obvious to apply the chemical reaction equation of Cheiky to modified Cagigas. One of ordinary skill in the art would have been motivated to make this modification to produce a sustainable carbon product from biomass (Cheiky Abstract) in a way that avoids undesirable products (Table 2, Fig. 4).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Cagigas in view of Naik, further in view of Hao et al. (2019).
Regarding Claim 19, Cagigas and Naik teach the method of claim 1 above, but do not teach incorporating a predetermined amount of montmorillonite clay or neomycin per day per animal into the animal feed.
Hao, in the same field of endeavor, teaches incorporating a predetermined amount of montmorillonite clay or neomycin per day per animal into the animal feed (10% montmorillonite Abstract). It would have been obvious to apply the combination of the sustainable carbon product and montmorillonite clay of Hao to the method of modified Cagigas. One of ordinary skill in the art would have been motivated to make this modification to reduce bioavailability of heavy metals (Hao Abstract).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-4, and 6-20 (in particular Claim 1) are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-8, 10-14, 20-22 (in particular Claim 1) of copending Application No. 17/153693 in view of Naik.
The copending application teaches a method of preventing or treating microbial infection in an animal by incorporating sustainable carbon product into an animal feed, the method comprising: obtaining the sustainable carbon product from a process comprising:
obtaining a biomass feedstock; feeding the biomass feedstock to a gasification or pyrolysis system; gasifying or pyrolyzing the biomass feedstock in the gasification or pyrolysis system to produce a gas and the sustainable carbon product;
identifying an animal subject with a microbe forming the microbial infection,
determining an amount of the sustainable carbon product to be incorporated per day into an animal feed of the animal subject;
incorporating the determined amount of the sustainable carbon product per day per animal into the animal feed of the animal subject in need thereof;
administering the animal feed incorporating the determined amount of sustainable carbon product to the animals
It does not teach wherein the microbe comprises E. coil, Salmonella, or Campylobacter; the amount of sustainable carbon product is based on the identifying; or observing, as a result of the administration, at least a 90% reduction in the microbe forming the microbial infection in the animal subject.
Regarding observing, as a result of the administration, at least a 90% reduction in the microbe forming the microbial infection in the animal subject, this limitation is not given patentable weight as it is directed towards an intended result. A whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP 2111.04.
Naik teaches wherein the microbe comprises E. coil, Salmonella, or Campylobacter (identifying the bacteria for which the quorum sensing is to be inhibited, for example E. coli or salmonella Par. 0042)
determining, based on the identifying, an amount of a carbon product to be incorporated per day into an animal feed of the animal subject (administering an effective amount of a quorum sensing control composition Par. 0042; effective amount is the amount of quorum sensing control agent which disrupts quorum sensing ability of the bacteria in question Par. 0119; organic compounds can act as adsorbent/catalytic inhibitors, including synthetic materials isolated from biomass such as activated carbon Par. 0074) .
It would have been obvious to one having ordinary skill in the art, at the time of filing, to modify the copending application with the method of Naik. Though Naik teaches activated carbon rather than the sustainable carbon product of the copending invention, it is nonlimiting (Non-limiting examples of sorptive organic compounds or sorptive organic materials include synthetic materials isolated from biomass, such as activated carbon Par. 0074), and as the copending application teaches the use of a sustainable carbon product to treat infection, it would have been obvious to one having ordinary skill in the art to try applying the method of Naik to use the sustainable carbon product of the copending application to treat E. coli or Salmonella without harming “good” bacteria (Naik Par. 0031-0032).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 06/28/2025 and 09/19/2025 have been fully considered but they are not persuasive. All arguments filed 06/28/2025 appear to have been included in arguments filed 09/19/2025 and will be addressed together below.
Applicant argues the cited references do not teach identifying animal subjects with microbes that form microbial infections. As seen in the revised rejection above, Naik is being applied to address the newly amended aspects of claim 1.
Applicant argues the cited references do not teach incorporating the sustainable carbon product into the animal feed to reduce microbes comprising E. coli, salmonella, or campylobacter. As seen in the revised rejection above, Naik is being applied to address the newly amended aspects of claim 1.
Applicant argues the reduction in microbe aspect is more than an intended use, not inherent, and there is no reasonable expectation of success in achieving the claimed result. For a whereby clause to limit a process claim it must give “meaning and purpose to the manipulative steps” by changing the substance of the invention. As amended, it is not clear how “observing, as a result of the administration, at least a 90% reduction in the microbe forming the microbial infection in the animal subject” has an impact on the substance of the method steps themselves. It appears to simply be a recitation of the intended outcome as a result of performing the steps, which would be considered a whereby clause which merely recites the intended use. However, in the case that the reduction in microbes is not considered intended use, the combined art in light of newly added Naik teaches the method as claimed, and therefore one would expect for the invention of the combined references to perform in the same manner as the claimed method.
Applicant argues incorporating a predetermined amount of the carbon product would not have been obvious to one skilled in the art. As seen in the revised rejection above, Naik is being applied to address the newly amended aspects of claim 1.
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 ARIEL M RODGERS whose telephone number is (571)272-7857. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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/A.M.R./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792