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 .
Claim Status
The Amendment filed on 08 July 2025 has been entered; claims 1-25 remain pending.
Response to Arguments
Applicant's arguments, see Pages 6-7 of the Remarks, filed 08 July 2025, with respect to the rejection of claims 2 and 14-25 under 35 UC 101 have been fully considered but they are not persuasive. Applicant argues that claims 2 and 14 now recite a specific novel formula determined through extensive experimentation in order to determine the amount of biomass added to the sample. In response, the Examiner submits that the mathematical relationships now recited in claims 2 and 14 involve variables which are necessarily considered and conventionally determined in the art of biosorption. Additionally, the Examiner notes that neither the micropollutant nor the biomaterial is specified in the claims; therefore, the limitations are generally stated, and amount to obtaining a dosage of biomaterial to solution for treatment, which is well within the skill of the ordinary artisan. Since this is a conventional application and no other steps aside from adding the biomaterial are recited , it does not satisfy the “significantly more” criteria. For at least the foregoing reasons, the rejection of claims 2 and 14-25 under 35 USC 101 is maintained.
Applicant’s arguments, see Pages 7-8 of the Remarks, filed 08 July 2025, with respect to the rejection of claims 1-13 under 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 1-13 under 35 USC 112(b) have been withdrawn in light of Applicant’s amendments to the claims.
Applicant's arguments, see Pages 7-9 of the Remarks, with respect to the rejection of claims 14-25 under 35 USC 112(b) and 35 USC 112(d) have been fully considered but they are not persuasive. Applicant argues that claim 14 has been reworded to physical limitations of the biomaterial; however, almost every limitation recited is directed to an intended use of the recited biomaterial, which are not assigned patentable weight. Applicant continues to define the biomaterial by functional limitations which relate to a method of use. The only limitations which limit the biomaterial in claim 14 are “a biomass of at least one biological organism”, which is extraordinarily vague and broad, and could encompass any organism from a single-celled cyanobacteria to a human being. The limitations recited in claims 15, 16, 24, and 25 also further limit the biomaterial; all other dependent claims refer to intended use limitations which are not assigned patentable weight. For these reasons, the rejection is maintained.
Applicant’s arguments, see Pages 9-11 of the Remarks, filed 08 July 2025, with respect to the rejection(s) of claims 1, 3-6, 9-11, and 13 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Ozer in view of Volesky, as discussed in the rejections of these claims under 35 USC 103 below.
Applicant's arguments, see Pages 9-11 of the Remarks, regarding the rejection of claims 14-25 under 35 USC 102(a)(1) have been fully considered but they are not persuasive, as the biomaterial disclosed by Ozer and Ikegamai teach a biomass comprising at least one biological organism embodied as active or inactive Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”), meeting the limitations claims 15, 16, 24, and 25 and therefore is necessarily capable of all functional limitations recited in claims 14 and 17-23.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2 and 14-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea in the form of a mathematical equation/relationship without significantly more.
Claims 2 and 14 recite “the specific amount of biomass added to the solution is calculated according to the amount of solution, the concentration of the micropollutant in the solution, and the total amount of the micropollutant that can be adsorbed by a particular quantity of the biomaterial, according to the formula
q
t
=
C
0
-
C
t
m
*
V
“ with variables as defined in claims is are stated with a high degree of generality, as neither the micropollutant(s) nor the biomaterial are defined. One of skill in the art, when carrying out a biosorption method, would consider the adsorption capacity (qt), initial and residual micropollutant concentrations (C0 and Ct), amount of biomass (m), and volume of solution to be treated (V) to be conventional variables that are necessarily determined. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the calculations are merely conducted to determine a dosage of biomaterial/biological organism within the solution comprising micropollutants, which is conventional in the art (see Han: Section 2.3.2 on Page 1570), and would not meet the “significantly more” criterion. The claims are not patent eligible.
Regarding claims 15-25, they are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 14-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With respect to claim 14, the limitations pertaining to biomaterial comprising a biomass of at least one biological organism, followed by functional characteristics pertaining to a particular method of use (claim 1) do not adequately define the metes and bounds of biological organisms that would meet the limitations of the claims.
Regarding claims 15-25 they are rejected for being dependent on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-25 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With respect to claim 14, the preamble limitations “for use in the method of removing a micropollutant from an aqueous solution of claim 1” and the limitations “wherein the specific amount of the biomass in the biomaterial is controlled by the amount of the solution, the concentration of the micropollutant in the solution, and the total amount of the micropollutant that can be adsorbed by a particular quantity of the biological organism at a prespecified pH, temperature, agitation, and contact time, according to the formula…and V is volume of the aqueous solution” all refer to intended uses, particular applications, and/or method steps associated with preparing or using the biomaterial comprising the biomass, and therefore fail to further limit the biomaterial comprising the biomass.
Claims 15-16 are rejected for being dependent on claim 14.
Regarding claims 17-25, the functional limitations recited therein refer to a method step of selecting the biological organism for adsorption abilities within a pH range or certain micropollutant, and therefore fail to further limit the biomaterial recited in claim 14. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 14-23 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ozer et al. (Journal of Hazardous Materials, 2003, B100, 219-229), hereinafter “Ozer”.
With respect to claims 14-19, 21-23, and 25, Ozer teaches a biomaterial comprising inactive Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”), onto which lead, nickel, and chromium ions (“inorganic”; “at least one heavy metal”) are biosorbed from aqueous solution at pH values including pH 3, 4, 5, and 6 (see Fig. 1) and temperatures of 15, 20, 25, 30, 35, 40, and 50°C (see Fig. 2) under conditions of constant agitation for prescribed contact times (Sections 2.3-3.2), as discussed above in detail.
Regarding the limitations pertaining to adsorption affinity, controlling the biomass amount according to volume of solution, concentrations of micropollutants before and after biosorption, pH, temperature, agitation, and contact time, these limitations are merely an intended use of the recited biomaterial. The Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) of Ozer is capable of biosorbing micropollutant amounts of heavy metals.
Regarding claim 20, the biomass comprising inactive Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) meets the limitations of claims 14-19, including the limitations pertaining to pH, temperature, agitation and contact time being pre-selected to allow for biosorption contaminants; therefore, it is submitted that Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) is capable of biosorbing micropollutant amounts of organic contaminants.
Claims 14-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ikegamai et al. (Biotechnology Letters, 2000, 22, 1661-1665), hereinafter “Ikegamai”.
With respect to claims 14-16 and 24, Ikegamai teaches active Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”). Regarding claims 17-23 and 25, it is submitted that active Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) as taught by Ikegamai is capable of removing a micropollutant from an aqueous solution. The limitations within lines 5-18 of claim 14 are not assigned patentable weight as they refer to an intended use, particular application, and/or method step of using or preparing the biological organism within the biomass of the biomaterial. Since Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) satisfies dependent claim 16, it is submitted that the functional limitations within claim 14 are met.
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:
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, 3-7, 9-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ozer et al. (Journal of Hazardous Materials, 2003, B100, 219-229) in view of Volesky et al. (Appl. Microbiol. Biotechnol., 1995, 42, 797-806), hereinafter “Ozer” and “Volesky”.
With respect to claims 1, 3-6, 9-11, and 13, Ozer teaches a method for removing lead, nickel, and chromium ions (“inorganic”; “at least one heavy metal”) from aqueous solution, comprising adding a biomass of biomaterial comprising inactive Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”), controlling pH and temperature of the aqueous solution to a range of pH values including pH 3, 4, 5, and 6 (see Section 3.1 and Fig. 1), at temperatures of 15, 20, 25, 30, 35, 40, and 50°C (see Section 3.2 and Fig. 2), allowing for biosorption of lead, nickel, and chromium ions (“inorganic”; “at least one heavy metal”) from aqueous solution by the biomaterial comprising Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”); and maintaining agitation via shaking and contact between the biomass comprising Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) and the solution for a period of contact time suitable for biosorption of lead, nickel, and chromium ions (“inorganic”; “at least one heavy metal”) from aqueous solution by the biomass comprising Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) (see details of pH, temperature, and contact times within Sections 2.3-3.2 within Pages 223-225 of Ozer).
Ozer does not specifically teach that the heavy metal pollutants are “at least one micropollutant that is present in the solution in a concentration level in the range of 20 partis-per-billion to less than 1000 parts-per-billion”.
Volesky teaches biosorption of uranium present in aqueous solution at concentrations as low as 0.05 mM U, or 50 parts per billion (see Page 800, right column, first full paragraph).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to apply the Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) of Ozer to solutions comprising metals in the ppb range as taught by Volesky because both references are directed to heavy metal adsorption via Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”). Since the same biomass is used, the ordinary artisan would have an expectation that solutions comprising ppb-level metals could be successfully sorbed in view of Volesky.
With respect to claim 7, Ozer conducts heavy metal biosorption batch experiments at a range of initial pH (see Fig. 1; 3.1), but does not specifically teach adjusting the pH after addition of biomass as claimed. The Examiner submits that there does not appear to be any evidence in Ozer that the pH changes after addition of the biomass, and even if the pH changed, there does not appear to be any evidence in the Specification that supports the criticality of adjusting the pH as claimed, nor is a specific pH even recited in claims 1 or 7. There is no evidence indicating such a pH adjustment is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ozer et al. (Journal of Hazardous Materials, 2003, B100, 219-229) in view of in view of Volesky et al. (Appl. Microbiol. Biotechnol., 1995, 42, 797-806) as applied to claim 1, and further in view of Han et al. (Journal of Hazardous Materials, 2006, B137, 1569-1576), hereinafter “Ozer”, “Volesky”, and “Han”.
With respect to claim 2, Ozer employs one concentration for the Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) (Section 2.1, 2.3), and therefore does not specifically teach calculating the amount of yeast based on the amount of solution, the concentration of micropollutant in the solution, and how much the Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) the heavy metal ions can be adsorbed thereon.
Han teaches varying yeast concentration from 3-15 g/L yeast in solutions containing Cu(II) and (Pb(II) ions having an initial concentration (an inherent amount of solution) at pH 5.0 and a contact time of 60 min (Section 2.3.2), and determining how much of the heavy metals are adsorbed (see Fig. 3; Section 3.2).
It would have been obvious to determine an appropriate amount of the Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) added in the method of Ozer for biosorption of heavy metals as is done by Han, as Han also teaches the same yeast and biosorption of heavy metals. The ordinary artisan would have found it obvious to optimize dosage of the same biological organisms used for the same purpose as disclosed in Ozer, in order to efficiently use the same Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”). Optimization of dosage necessarily involves consideration of volume of water treated, adsorption capacity, and initial and residual metal concentrations.
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ozer et al. (Journal of Hazardous Materials, 2003, B100, 219-229) in view of in view of Volesky et al. (Appl. Microbiol. Biotechnol., 1995, 42, 797-806) as applied to claim 1, and further in view of Aksu et al. (Process Biochemistry, 2003, 38, 1438-1444), hereinafter “Ozer”, “Volesky”, and “Aksu”.
With respect to claims 8 and 12, Ozer teaches biosorption of heavy metals on inactive Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”), and therefore does not teach organic micropollutants biosorbed on active Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”).
Aksu teaches bioaccumulation of organic dyes on growing (“active”) Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to employ the same yeast as Ozer in an active form for removal of organic dyes as taught by Aksu because the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). The ordinary artisan would have found it obvious to consult the art of biosorption via Saccharomyces cerevisiae (“at least one biological organism”; “at least one yeast”) (Abstract) to determine if additional pollutants could be removed from aqueous solution using the same yeast as disclosed by Ozer.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 07 October 2025