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 .
Detailed Action
This Office Action is in response to the Applicant’s reply received 11/14/25. Claims 1-4, 6-7, 11, 18, 22-23, 28, and 80-87 are pending. Claims 18, 22-23, and 28 are withdrawn. Claims 1-4, 6-7, 11, and 80-87 are considered on the merits.
Claim Interpretation
Claim 1 has several intended results of culturing the cells into a biomass. These include:
“a carbon source…for growth and/or biosynthesis”,
converting the carbon source into organic molecule products comprising amino acids, proteins, and or vitamins by a carbon fixing reaction or anabolic biosynthetic pathway, and
the a carbon fixing reaction or anabolic biosynthetic pathway is driving by chemical and/or electrochemical energy.
These are inherent results of the biochemistry of the cell. In the instant case culturing a cells listed in claims 2 or 11 with the gaseous substrate of claims 4, 6, or 7 will read on these intended results since the cell will perform these while culturing.
Claim 87 limits the composition stimulates N2-fixing, P-solubilizing, and
indoleacetic acid-producing bacteria in soil to which it is applied. However this is an intended results of the active steps in the method. MPEP 2111.04 I state "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’". Therefore art reading on the active steps of the method will also read on these intended results.
Response to Applicant’s Arguments and Amendments
In the response submitted by the Applicant the following 35 U.S.C § 102 rejections are withdrawn:
Claim(s) 1-4, 6-7, 11, 14, 80-82 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reed et al. (US 2013/0149755, in IDS 5/7/24)
The Applicant’s amendments that apply the composition to the liquid medium or soil where the plants, fungi, mushrooms, algae are grown necessitated the above withdrawals. All arguments drawn to these rejections are now considered moot.
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.
Claim(s) 1-4, 6, 7, 11, 80-82, 86 and 87 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US 2013/0149755, in IDS 5/7/24) in view of TNAU (Methods of Fertilizer Application, 2014).
Reed et al. teach culturing Cupriavidus necator under anaerobic conditions in liquid medium (Example 1). This bacteria is cultured chemoautrophically with a oxyhydrogen gas feed of 80% H2, 10% CO2, and 10% O2 (0139). This gas qualifies as a Knallgas by the Applicant’s Specification since it is a “mixture of molecular hydrogen and oxygen gas” (Specification, [182]). These cells form a biomass with a cell density of 4.7 x 108 cells/ml. Reed et al. teach that this biomass can be used to produce amino acids and vitamins and processed into fertilizers, soil additives, and soil stabilizers (0119).
Reed et al. does not teach their fertilizer is applied to the soil where plants are grown. This would be obvious in view of TNAU who teach fertilizers are applied to the soil (TNAU, page 1, middle.) or on the plants themselves (TNAU, page 2, bottom). It would be obvious to apply the fertilizer of Reed et al. on the soil or plants themselves since TNAU teach these are common application methods for fertilizers. One of ordinary skill would recognize this as applying a fertilizer with known techniques (MPEP 2141 III (D)) that will allow the plant to access the nutrients in the fertilizer.
While Reed et al. and TNAU do not expressly teach the plants are grown in soil and indoors or in a green house, this would be obvious since the nutritional needs of a plant remain whether grown outside or inside. Therefore it would be obvious to apply the fertilizer to soil or plants that are grown indoors or in a greenhouse.
Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Claim(s) 1-4, 6-7, 11, and 80-87 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US 2013/0149755, in IDS 5/7/24) in view of Jenkins et al. (WO 2010/110677).
Reed et al. teach culturing Cupriavidus necator under anaerobic conditions in liquid medium (Example 1). This bacteria is cultured chemoautrophically with a oxyhydrogen gas feed of 80% H2, 10% CO2, and 10% O2 (0139). This gas qualifies as a Knallgas by the Applicant’s Specification since it is a “mixture of molecular hydrogen and oxygen gas” (Specification, [182]). These cells form a biomass with a cell density of 4.7 x 108 cells/ml. Reed et al. teach that this biomass can be used to produce amino acids and vitamins and processed into fertilizers, soil additives, and soil stabilizers (0119).
Reed et al. does not teach the cells of their fertilizer are hydrolyzed and applied to the soil or plant. However this would be obvious in view of Jenkins et al. who also teach a microbial fertilizer comprising bacteria that are lysed (Jenkins, pg. 4, lines 15-25). The cells are either lysed mechanically, chemically, and enzymatically to produce a hydrolysate (Jenkins, pg. 5, lines 18-32). This hydrolysate composition can be applied as a liquid to the plants or soil or dried into granules for dry application (Jenkins, pg. 5 line 35 to pg. 6, line 5).
It would be obvious to lyse the Cupriavidus necator into a hydrolysate for fertilizer since Jenkins et al. teach that this is a suitable step to produce a bacterial fertilizer for application. One of ordinary skill would recognize this as modifying the bacteria in a fertilizer with known techniques (MPEP 2141 III (D)) that will allow the plant to access the nutrients in the fertilizer.
While Reed et al. and Jenkins et al. do not expressly teach the plants are grown in soil and indoors or in a green house, this would be obvious since the nutritional needs of a plant remain whether grown outside or inside. Therefore it would be obvious to apply the fertilizer to soil or plants that are grown indoors or in a greenhouse.
Therefore the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
Response To Applicant’s Arguments
The Applicant has requested that these rejections be held in abeyance until allowable subject matter is indicated. However MPEP 804 I 1 states:
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.
While the Applicant did respond to these double patenting rejections by amending the claims, they remain rejected as detailed in the above modified rejections.
Claims 1-4, 6-7, 11, and 80-87 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 41-60 of copending Application No. 18/892006.
Both sets of claims are drawn to making a biomass for a fertilizer with the following overlapping steps: Culturing Hydrogenobacter with a gas to form a biomass that is processed into a fertilizer. The gas comprises: i) a carbon source of carbon dioxide or CO, ii) H2 as an electron donor, and iii) O2 as an electron acceptor.
This is a provisional nonstatutory double patenting rejection.
Claims 1-4, 6-7, 11, and 80-87 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12234497. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to making a biomass for a fertilizer with the following overlapping steps: Culturing Xanthobacter with a gas to form a biomass that is processed into a fertilizer. The gas comprises: i) a carbon source of carbon dioxide, ii) H2 as an electron donor, and iii) O2 as an electron acceptor.
Claims 1-4, 6-7, 11, and 80-87 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of U.S. Patent No. 11274321. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to making a biomass for a fertilizer with the following overlapping steps: Culturing Cupriavidus necator with a gas to form a biomass that is processed into a fertilizer. The gas comprises: i) carbon dioxide or CO, ii) H2 and iii) O2.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699