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 . If status of the application as subject to 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 a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/10/2026 has been entered.
Status of Claims
Claims 1-5, 9-29, and 31-34 are pending in the application. Claims 31-34 are withdrawn. Claims 1-5 and 9-29 were rejected in the office action mailed 10/10/2025. Claims 1-5 and 9-29 are presently examined.
Response to Amendment / Arguments
The amendment filed 2/10/2026, in response to the 10/10/2025 office action, has been entered. Applicant’s claim amendments overcame the 35 U.S.C. 102 rejections.
Applicant's arguments and claim amendment, regarding the 35 U.S.C. 103 rejections, have been fully considered but they are not persuasive. Claims 1-9, 11-15, and 17-29 were rejected under 35 U.S.C. 103 as being unpatentable over US20140373920A1 (Stein) in view of US3228799A (Rohrback). Applicant's arguments are focused on whether Stein and Rohrback would have been combined by one of ordinary skill in the art for “a biofilm on or within an agar-containing substrate”.
Rohrback describes biological processes for current generation by chemical reactions (column 1, lines 8-15). Rohrback teaches producing a bacteria-coated cathode by dipping a steel strip into an agar solution of the bacteria (column 6, lines 14-16).
Applicant argues:
“However, this system does not involve a biofilm on an agar-containing substrate. In fact, nothing suggests that a biofilm is even inherently on or within an agar-containing substrate. It is even unclear whether Rohrback discloses or suggests an agar-containing substrate.”
As discussed in the 35 U.S.C. 112 section below, the meaning of “agar-containing substrate” is unclear, and the specification provides no guidance to its meaning. Such guidance, or further claim limitation regarding the substrate and the meaning of “containing”, might narrow the claim. Without such added guidance, “agar-containing substrate” is interpreted broadly.
Rohrback’s steel strip is a substrate. After dipping the steel strip into an agar solution, the agar must remain, because thereafter the fed bacteria produce electric current (column 6, lines 14-33). The meaning of “containing” is not narrowed by the claim or the specification, so the agar on the steel strip is interpreted to mean an agar-containing substrate.
Rohrback doesn’t mention a “biofilm”, but this is taught by Stein.
Furthermore, the question of obviousness is not the exact meaning of the words, but rather whether the claimed invention would have been obvious to one skilled in the art based on the prior art. Rohrback’s teaching of agar on a steel strip for feeding bacteria and Stein’s teaching of a biofilm would have led one skilled in the art to make “a biofilm on or within an agar-containing substrate”.
Applicant also stated, without support reasoning, that “There is also no reasonable expectation of success for combining Rohrback with Stein.” Stein teaches a biofilm (paragraphs 9 & 177). Rohrback’s teaches agar on a steel strip for feeding bacteria in order to produce electric current (column 6, lines 14-33). Examiner can’t imagine any reason to doubt that Rohrback’s teaching of agar for feeding electric-current-producing bacteria would be unsuccessful when combined with Stein’s biofilm.
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.
Claims 1-5 and 9-29 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 1 states “an agar-containing substrate”, 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(s), at the time the application was filed, had possession of the claimed invention.
Claims 2-5 and 9-29 are rejected due to their dependence on claim 1.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The claims are in bold font, the prior art is in parentheses.
Claims 1-5, 9-15, and 17-29 are rejected under 35 U.S.C. 103 as being unpatentable over US20140373920A1 (Stein) in view of US3228799A (Rohrback), together “modified Stein”.
Stein teaches the following claim 1 limitations:
A voltaic cell (paragraph 9) comprising:
(a) an anode (paragraph 9) for receiving electrons and providing electrons to an external circuit or load;
(b) a cathode (paragraph 9) for donating electrons to an electrochemical reaction;
(c) a biofilm… comprising a microbe, the biofilm in electrical contact with the anode or cathode (paragraphs 9 & 177: microbes donate electrons to, or accept electrons from, an electrode; microbes form biofilm);
(d) a buffer comprising an ionically conductive medium in contact with the anode and cathode (paragraph 9); and
(e) a vessel at least partially containing the biofilm and the buffer (paragraph 9)
Claim 1 also states that the biofilm is “on or within an agar-containing substrate”.
Stein fails to teach agar. Rohrback describes biological processes for current generation by chemical reactions (column 1, lines 8-15). Rohrback teaches producing a bacteria coated cathode by dipping a steel strip into a standard agar solution of the bacteria (column 6, lines 14-16). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Stein’s biofilm to be formed on agar, as taught by Rohrback, as part of a biological process for current generation by chemical reactions.
With regard to claim 2, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 2 limitation:
an ion permeable and electron donor impermeable barrier separating the buffer into an anode compartment and a cathode compartment, thereby preventing an electron donor population from contacting the cathode (paragraph 10),
wherein the ionically conductive medium comprises the electron donor population (paragraph 9: ionically conductive medium with an electron donor population provided therein)
With regard to claims 3-4, modified Stein teaches the limitations of claims 1-2 as noted above. Stein also teaches the following limitations of claims 3-4 (paragraph 80: “the microbes are directly attached to the anode as a film”; paragraph 177: microbes form biofilm):
Claim 3
the biofilm is in contact with at least one of the anode and the cathode
Claim 4
the biofilm is in contact with at least one of the anode, the cathode, and the ion permeable and electron donor impermeable barrier
With regard to claim 5, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 5 limitation:
the biofilm comprises two or more microbes (paragraphs 148 & 177)
With regard to claim 9, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 9 limitation:
the biofilm comprises positively charged moieties (paragraph 65: “microbes… donate… positively charged species to cathode”)
Furthermore, positively charged moieties are inherent in a voltaic cell during operation.
With regard to claim 10, modified Stein teaches the limitations of claim 1 as noted above. Claim 10 recites:
the biofilm comprises negatively charged moieties
Stein fails to explicitly mention negatively charged moieties; however, negatively charged moieties are inherent in a voltaic cell during operation.
With regard to claim 11, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 11 limitation:
the biofilm comprises synthetic moieties (paragraph 158)
With regard to claim 12, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 12 limitation:
the biofilm comprises non-synthetic moieties (paragraphs 13 & 20: “naturally occurring microbial species”)
With regard to claim 13, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 13 limitation:
the biofilm comprises one or more filamentous appendages (paragraphs 12, 20, & 142)
With regard to claim 14, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 14 limitation:
the biofilm comprises one or more microbe classes selected from the group consisting of anaerobic, aerobic, and facultatively anaerobic microbes (paragraph 173)
With regard to claim 15, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 15 limitation:
the biofilm comprises a sulfur oxidizing microbe and a sulfur reducing microbe (paragraphs 13, 112, & 177)
With regard to claim 17, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 17 limitation:
the biofilm comprises a matrix comprising a natural polymer, a synthetic polymer, a hydrate of DNA, a hydrate of a protein, or a hydrate of a carbohydrate (Paragraph 76: microbes produce electron siphons. Paragraphs 231-233: “A matrix may contain an array of electron siphon subunits arranged into a network or polymer.” The polymer must be either natural or synthetic.)
With regard to claim 18, modified Stein teaches the limitations of claims 1-2 as noted above. Stein also teaches the following claim 18 limitation:
the ion permeable and electron donor impermeable barrier is electronically conductive (paragraph 10)
With regard to claim 19, modified Stein teaches the limitations of claims 1-2 as noted above. Stein also teaches the following claim 19 limitation:
the ion permeable and electron donor impermeable barrier contacts the anode (paragraph 10)
With regard to claim 20, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 20 limitation:
a current collector in electrical communication with the anode (paragraph 24)
With regard to claim 21, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 21 limitation:
the ionically conductive medium comprises a first species of microbe and a second species of microbe, and the first species of microbe and/or the second species of microbe comprises light harvesting antennae (paragraphs 9, 11, & 17)
With regard to claim 22, modified Stein teaches the limitations of claims 1 & 21 as noted above. Stein also teaches the following claim 22 limitation:
the first species of microbe is excited by electromagnetic radiation in a first band, and wherein at least one other species of microbe in the buffer is excited by electromagnetic radiation in a second band, wherein the first band and the second band do not substantially overlap (paragraph 17)
With regard to claims 23-24, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following limitations of claim 23-24:
Claim 23
the ionically conductive medium comprises a first species of microbe and a second species of microbe (paragraph 9), and
the first species of microbe comprises a phototrophic or chemo-trophic microbe (paragraph 12)
Claim 24
the ionically conductive medium comprises a first species of microbe and a second species of microbe (paragraph 9), and
the first species of microbe is a chemotroph and the second species of microbe is a phototroph (paragraph 12)
With regard to claim 25, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 25 limitation:
the ionically conductive medium comprises a first species of microbe having a first primary metabolic pathway and a second species of microbe having a second primary metabolic pathway (paragraph 9), and
the first primary metabolic pathway oxidizes a compound containing carbon, nitrogen, phosphorous, or sulfur forming an oxidized compound (paragraph 13), and
the second primary metabolic pathway reduces the oxidized compound produced by the first primary metabolic pathway (paragraph 13)
With regard to claim 26, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 26 limitation:
the ionically conductive medium comprises a first species of microbe (paragraph 9) and
the first species of microbe has pili, fibrils, flagella, and/or a filamentous shape (paragraphs 12 & 20)
With regard to claim 27, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 27 limitation:
the ionically conductive medium comprises a first species of microbe (paragraph 9) and
the first species of microbe has a plurality of metabolic pathways (paragraph 19)
With regard to claim 28, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 28 limitation:
the ionically conductive medium comprises a first species of microbe (paragraph 9) and
the first species of microbe is a naturally occurring microbial species (paragraphs 88, 158, & 160)
With regard to claim 29, modified Stein teaches the limitations of claim 1 as noted above. Stein also teaches the following claim 29 limitation:
the ionically conductive medium comprises a first species of microbe having a first primary metabolic pathway and a second species of microbe having a second primary metabolic pathway (paragraph 9) and
the first primary metabolic pathway and the second primary metabolic pathway each participate in cellular respiration (paragraphs 13 & 19)
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Stein and US3228799A (Rohrback), with regard to claim 1, and further in view of JP2014064566A (Futamata).
Stein fails to teach the following claim 16 limitation, which is taught by Futamata:
the biofilm comprises one or more microbes selected from the group consisting of… Desulfovibrio desulfuricans…
Futamata is directed to electrogenic microorganisms, such as Desulfovibrio desulfuricans (page 6, line 39 through page 7, line 13). It would have been obvious, to one of ordinary skill in the art, before the effective filing date of the invention, for Stein’s microbes to include Desulfovibrio desulfuricans, as taught by Futamata, because it is an electrogenic microorganism.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT WEST whose telephone number is 703-756-1363 and email address is Robert.West@uspto.gov. The examiner can normally be reached Monday-Friday 10 am - 7 pm ET.
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, Allison Bourke can be reached at 303-297-4684.
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.
/R.G.W./Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721