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 Amendments
Acknowledgment is made to Applicant’s claim amendments received 21 October 2025.
Claim Interpretation
It is important to note that the elected claims are apparatus claims, apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that the apparatus is capable of performing the function as claimed (MPEP 2114).
Claim Rejections - 35 USC § 102
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 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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104313063 A to Liu et al. (Liu).
As to claims 1 and 15, Lui teaches a microbial four chamber electrolysis cell comprising an anode chamber (2) comprising electroactive bacteria, a cathode chamber (8), an acidic chamber (4) and an alkalic chamber (6) (Paragraphs 0013 and 0014; Figure 1). The four chamber electrolysis cell of Lui are capable of being fed with any number of solutions and operating at any number of operating conditions, such as temperature and voltage and thus would be capable of performing the functional language of “useful for the treatment of black liquor and recovery of alkali”, “wherein the anode chamber degrades organic material and generates voltage”, “wherein the cathode chamber generates H2”, “wherein the acidic chamber precipitates lignin from the black liquid” and “wherein alkali is recovered from the alkalic chamber at a concentration of from 60nM to 83nM” (MPEP 2114).
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.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over the Non-Patent Literature “Microbial electrochemical treatment of biorefinery black liquor and resource recovery” to Chen et al. (Chen) in view of US 5,968,338 to Hulme et al. (Hulme).
As to claims 1, 2, 3, 4, 5 and 6, Chen teaches a microbial electrolysis cell comprising at least four chambers for the treatment of black liquor, the chambers comprising an anode chamber comprising an electroactive bacteria as an organic material that is degraded and generates current and a cathode chamber that generates hydrogen (Section 2.2 Reactor construction and operation; Figure 1A). Chen further teaches that a stacked membrane module is inserted between the anode chamber and the cathode chamber forming acidic and alkalic chambers (Section 2.2. Reactor construction and operation, second paragraph). However, Chen fails to specifically teach that the stacked membrane module (essentially an electrodialysis configuration) is formed with bipolar membranes, instead teaching an alternating anion and cation exchange membrane configuration.
However, Hulme also discusses the electrolytic recovery of compounds from electrodialysis style electrolytic cells with a series of membranes and chambers located between an anode chamber and a cathode chamber. Hulme teaches that in addition to an alternating anion and cation exchange membrane (Figure 2) other membrane and chamber configurations are equivalently effective including a four chamber configuration wherein the anode compartment (56) is separated from an adjacent chamber (57) by bipolar membrane (53) which is adjacent to another chamber (58) and separated therefrom by a cation exchange membrane (54) which is adjacent to the anode chamber (59) by a bipolar membrane (55) (Column 13, Line 51 to Column 14, Line 11; Figure 5). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the stacked membrane module of Chen with the known equivalent stacked membrane module comprising a bipolar membrane, adjacent a cation exchange membrane and adjacent a bipolar membrane, with the expectation of effectively providing for the stacked membrane module for material recovery (MPEP 2144.06 II). Thus forming a four chamber microbial cell with an anode chamber adjacent to an acidic chamber adjacent to an alkalic chamber adjacent to a cathode chamber, the anode chamber and acidic chamber separated by a bipolar membrane, the acidic chamber and the alkalic chamber separated by a cation exchange membrane, the alkalic chamber and the cathode chamber separated by a bipolar membrane and a cell specifically configured to perform the functional language of wherein the acidic chamber precipitates lignin from the black liquor and wherein alkali is recovered from the alkalic chamber, and capable of performing the functional language of “recovering this alkali at 60 nM to 83 nM” depending on the specifics of the composition of the feed and the operating conditions such as temperature, pressure, current, voltage and time.
As to claim 7, the combination of Chen and Hulme teaches the apparatus of claim 1. The cell of the combination is capable of receiving the black liquid from the deacetylation and mechanical refining of biomass (MPEP 2114).
As to claim 8, the combination of Chen and Hulme teaches the apparatus of claim 1. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein 52% of the organic weight of the black liquor is removed from the anode chamber” (MPEP 2114).
As to claim 9, the combination of Chen and Hulme teaches the apparatus of claim 1. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein the alkali is recovered from the alkalic chamber at a concentration of up to 83mM” (MPEP 2114).
As to claim 10, the combination of Chen and Hulme teaches the apparatus of claim 9. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein the alkali is NaOH” (a narrowing limitation of a functional limitation of claim 1) (MPEP 2114).
As to claim 11, the combination of Chen and Hulme teaches the apparatus of claim 9. The cell of the combination is capable of performing the functional language of “wherein a voltage of from 0.8V to ¼ V is applied to the cell” (MPEP 2114).
As to claim 12, the combination of Chen and Hulme teaches the apparatus of claim 1. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein the lignin precipitated in the acidic chamber is recovered at up to 14 grams per liter of black liquor” (MPEP 2114).
As to claim 13, the combination of Chen and Hulme teaches the apparatus of claim 1. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein the H2 generated in the cathode chamber is generated at a rate of up to 0.35 liters per liter of black liquor per day ” (MPEP 2114).
As to claim 14, the combination of Chen and Hulme teaches the apparatus of claim 13. The cell of the combination, depending on the feed and operating conditions, of performing the functional language of “wherein the H2 is generated at a faradaic efficiency of up to 93.5%” (MPEP 2114).
Response to Arguments
Applicant’s arguments filed 21 October 2025 with respect to Reiter have been found persuasive as Reiter fails to teach the newly incorporated limitation of electroactive bacteria.
Applicant's arguments filed 21 October 2025 with respect to Chen in view of Hulme have been fully considered but they are not persuasive.
Applicants argue that the new limitation of alkali being recovered at 60 to 83 nM from the alkalic compartment as a result of electrolysis with electroactive bacteria is not taught nor rendered obvious by the combination of Chen and Hulme. However, the Examiner disagrees. The Examiner maintains that this is a functional limitation. The Examiner isn’t merely alleging that this function is performed, but maintains that the cell of the combination meets the cell structure of the claims and disclosure and is capable of receiving fluid flow feeds with varying components and concentrations and is capable of operating at a variety of voltages/current, pressures, temperatures and lengths of times and thus is capable of performing the claimed function (MPEP 2114). Depending on a starting condition of alkali concentration and the chosen operating conditions the Examiner maintains that this functional language could be performed by the cell. Furthermore, it is important to note that the claim does not specifically tie this functional limitation of 60 to 83 nM recovering to any action of the electroactive bacteria, thus the functional language of “is recovered form the alkalic chamber at a concentration of from 60nM to 83nM” could actually merely be met by feeding a starting concentration of 60nM to 83nM to the compartment and conducting no reaction at all, the cell is clearly capable of receiving and recovering a solution.
It is important to note that Applicants have not provided arguments against Lui.
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794