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 .
Formal Matters
Receipt of Applicant’s response dated 01/30/2026 is acknowledged.
Claims 1-10, 12, 14-18, 20-21, 24, and 68 are pending.
Claims 11, 13, 19, 22-23, and 25-67 are canceled.
Claims 1-2, 5-6, 14-15, 17-18, 20, and 68 are amended.
Claims 7-10, 12, 14-18, 20-21, and 24 remain withdrawn from consideration as being drawn to a nonelected invention.
Claim 68 remains withdrawn from consideration as being drawn to a nonelected species (i.e., the inactivating was elected as pasteurizing and not by competitive exclusion).
Claims 1-6 are under examination in the present Office action to the extent of the elected species, i.e., the inactivating is by pasteurizing the extract and the one or more soil-based microbes is Bacillaceae.
OBJECTIONS/REJECTIONS WITHDRAWN
Drawings
The objection regarding the label “345” missing from Figure 3 set forth in the Office action dated 10/01/2025 is hereby withdrawn in light of Applicant’s amendment to Par. [0152] of the specification and in favor of the new grounds of objection set forth below (See new grounds below).
The objections to Figure 5 and Figure 6 set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the drawings.
Specification
The objections to the specification set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the specification.
The objections to the abstract with the exception of the objection regarding the recitation of “there is provided” (See maintained grounds below) set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the abstract.
Claim Objections
The objections to claims 1-2 and 5-6 set forth in the Office action dated 10/01/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejection (a) set forth in the Office action dated 10/01/2025 is hereby withdrawn in light of Applicant’s amendments to claim 1.
The indefiniteness rejection (b) set forth in the Office action dated 10/01/2025 is hereby withdrawn in light of Applicant’s Remarks dated 01/30/2026.
OBJECTIONS/REJECTIONS MAINTAINED AND MADE AGAIN
Claim Objections
The abstract of the disclosure is objected to because “there is provided” (line 3) should be amended in order to improve readability, e.g., “there is provided” could be amended to “provided is”.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112(b)
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 3-4 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.
Each of claims 3 and 4 recite the limitation “the soil-based microbes” in the first line. There is insufficient antecedent basis for this limitation in each of the claims because claim 1 does not earlier recite “soil-based microbes” but instead recites “one or more soil-based microbes”, which encompasses multiple soil-based microbes. Thus, it is unclear whether the limitation “the soil-based microbes” in each of claims 3 and 4 refers to just one, more than one, or all of the one or more soil-based microbes of claim 1. The Examiner suggests amending “the soil-based microbes” in each of claims 3 and 4 to “the one or more soil-based microbes” in order to overcome this rejection (e.g., see claim 5).
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bi et al (Environ. Sci. Pollut. Res. (2019), 26(15), 14977-14987, published 03/27/2019, cited in Notice of References Cited dated 10/01/2025) as evidenced by Sapkota (“Bacillus subtilis- An Overview and Applications”, Microbe Notes, accessed 09/17/2025, cited in Notice of References Cited dated 10/01/2025) in view of Gantar et al (“Allelopathic activity among Cyanobacteria and microalgae isolated from Florida freshwater habitats”, FEMS Microbiol. Ecol., (2008), 64, 55-64, published 02/08/2008, cited in Notice of References Cited dated 10/01/2025), New York State Department of Health (“Boil Water Response - Information for the Public Health Professional”, published 12/19/2012 as determined using Wayback Machine, cited in Notice of References Cited dated 10/01/2025), and Le (US 10,179,744 B2, published 01/15/2019, cited in Notice of References Cited dated 10/01/2025).
Bi et al teach Bacillus as algicidal bacteria for control of cyanobacteria blooms in freshwater (See entire document, e.g., Par. 1 and 4 of Introduction). The method of Bi et al included taking water samples (i.e., an ‘extract’) from a pond with bloom-forming species of cyanobacteria, separately obtaining and culturing Bacillus subtilis (i.e., a soil-based microbe from Bacillaceae; Bacillus subtilis is a species of the family Bacillaceae and is a Gram-positive, rod-shaped, spore-forming, and facultative anaerobe as evidenced by Sapkota, See Par. 2 on Page 1 and taxonomical classification table on Page 4), adding the culture of Bacillus subtilis to the water samples containing the cyanobacteria, and growing the culture (e.g., Par. 1-3 of Materials and methods). Bi et al then analyzed the samples after 72 hours and found that the samples containing Bacillus subtilis had lower cyanobacterial cell densities than the control group without Bacillus subtilis suggesting a time dependent algicidal effect on the growth of colonial cyanobacteria (e.g., Par. 1 of Results).
Bi et al do not teach pasteurizing the water sample before adding Bacillus subtilis or releasing the grown cultures containing Bacillus subtilis from the water sample back into the pond with bloom-forming species of cyanobacteria.
These deficiencies are made up for in the teachings of Gantar et al, New York State Department of Health, and Le.
Gantar et al teach that cyanobacteria exhibit allelopathic activity, and that the allelopathic activity of cyanobacteria is seen as a possible factor in the dominance of toxin-producing species in a habitat, i.e., harmful algal blooms (See entire document, e.g., Abstract, Par. 3 of Introduction).
New York State Department of Health teaches that inactivation of viruses, bacteria, protozoa, and other pathogens can be achieved by using heat to damage structural components and disrupt essential life processes. This can be achieved using a process of pasteurization, which in order to be effective, water must be heated to at least the pasteurization temperature for the organisms of concern and held at that temperature for a prescribed interval, i.e., 99.999% kill of water borne microorganisms can be achieved at 149°F/65°C in five minutes of exposure (See entire document, e.g., Boiling and Pasteurization spanning Pages 1-2).
Le teaches that algae blooms are one of the most common problems encountered by lake and pond owners, and more than just aesthetically unappealing, certain forms of algae, e.g., blue-green algae, may harbor potentially toxic bacteria (See entire document, e.g., Col 1 Lines 16-19, Col. 5 Line 8). Le teaches an alternative method of water remediation to mechanical, physical, biological and material interventions which are expensive and/or environmentally harmful (e.g., Col. 1 Line 15, Lines 19-49). The method of Le includes preparing a microbial solution with microbes, a growth medium, and water; iteratively and selectively breeding generations of microbes to arrive at a predetermined microbial solution in a highly concentrated form of at least 1×109 cfu/ml (colony-forming units per milliliter); and dispensing the microbial solution into the water, wherein the microbes metabolize excess nutrients and uses microbial desalination to reduce water salinity (e.g., Abstract, Col. 1 Lines 53-61). The microbe may be a member of Bacillus, wherein Bacillus subtilis is exemplified (e.g., Col. 2 Line 1-Col. 3 Line 15, Col. 4 Lines 37-44, Col. 5 Lines 51-57). It is particularly preferable to use microbes to grow rapidly and colonize substrata in water after treatment with the solutions, wherein these microbes include Bacillus species such as Bacillus subtilis (e.g., Col. 5 Lines 48-52). These beneficial microbes, including Bacillus subtilis, are naturally occurring microorganisms that perform their work by producing enzymes and detect the organics present to continue produce specifically those enzymes needed to break down the organics present. These microbes are capable of improving water quality and clarity by targeting organic particulates and excess nutrients, such as Nitrogen and Phosphorus, brought in by various sources. Since they are naturally occurring and present in low concentrations, microbes in the ponds are not able to affect the water quality and clarity on their own, but by using concentrated beneficial microbes, they have the ability to affect water quality and clarity (e.g., Col. 5 Lines 31-44).
It would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide a method of using Bacillus as algicidal bacteria for control of cyanobacteria blooms in freshwater comprising taking a water sample from the freshwater with bloom-forming species of cyanobacteria, exposing the water sample to 149°F/65°C for five minutes to inactivate the viruses, bacteria, protozoa, and other pathogens, separately obtaining and culturing Bacillus subtilis, adding the culture of Bacillus subtilis to the water sample, growing the culture in the water sample until the concentration of Bacillus subtilis is at least 1×109 cfu/ml, and dispensing the culture-containing water sample into the freshwater source, wherein the Bacillus subtilis metabolize excess nutrients and use microbial desalination to reduce water salinity.
One of ordinary skill in the art would have been motivated to inactivate the viruses, bacteria, protozoa, and other pathogens in the water sample and do so before combining the culture of Bacillus subtilis and the water sample because Gantar et al teach that cyanobacteria, which are present in the water sample, exhibit allelopathic activity, which would interfere with the culture of Bacillus subtilis, and one of ordinary skill in the art would have looked to the teaching of New York State Department of Health because it offers an effective pasteurization process for water borne microorganisms, i.e., expose the water sample to 149°F/65°C for five minutes.
Because Bi et al teach a method of controlling cyanobacteria blooms in freshwater involving using Bacillus subtilis as algicidal bacteria in a water sample from the cyanobacteria bloom-containing freshwater, but do not teach how to apply this method to the rest of the freshwater source outside of the water sample, one of ordinary skill in the art would have looked to the teaching of Le in order to modify the method of Bi et al in order to provide a method of controlling cyanobacteria blooms in freshwater involving introducing the Bacillus subtilis as algicidal bacteria to an inactivated water sample from the freshwater source, culturing and growing the Bacillus subtilis to an effective concentration level for targeting the cyanobacteria bloom in the cyanobacteria bloom-containing freshwater source, and dispensing the culture of Bacillus subtilis into the cyanobacteria bloom-containing freshwater source.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)).
The method of freshwater remediation using Bacillus as algicidal bacteria for control of cyanobacteria blooms in freshwater of Bi et al in view of Gantar et al, New York State Department of Health, and Le render obvious instant claims 1-6.
NEW GROUNDS OF OBJECTION
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Label 344 is discussed in Par. [0152] of the specification but is not present in Figure 3.
The Examiner believes that “344” in Par. [0152] of the amended specification is a typographical error of “334”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Response to Applicant’s Arguments
Applicant’s arguments filed 01/30/2026 have been considered.
Regarding the above maintained objection to the abstract, in Remarks dated 01/30/2026, Applicant states that the amendments to the abstract address the issues raised by the Examiner, however, only one recitation of “there is provided” has been amended (line 1 of Amended Abstract dated 01/30/2026) and one recitation of “there is provided” remains (line 3 of Amended Abstract dated 01/30/2026). Because this objection has not been fully addressed, the above objection to the abstract is hereby maintained.
Regarding the above maintained rejection under 35 USC § 112(b), in Remarks dated 01/30/2026, Applicant addresses the rejections under 35 USC 112(b) denoted as rejection (a) and rejection (b) set forth in the Office action dated 10/01/2025, however Applicant does not address the rejection denoted as (c). Because this rejection has not been addressed, the above rejection under 35 USC § 112(b) is hereby maintained.
Regarding the above maintained rejection under 35 USC § 103, Applicant argues that the misuse of terminology in the teaching of Bi et al has the effect of incorrectly and misleadingly assigning certain properties, such as algaecidal activity, to Bacillus sp, and therefore, the presently claimed subject matter is not disclosed, taught or suggested by Bi et al. Applicant argues that the deficiencies of Bi et al are not cured by Sapkota, Gantar et al, New York State Department of Health, or Le, alone or in combination, and moreover, a person of ordinary skill in the art would not be motivated to consult any of these documents in combination without the benefit of hindsight provided by the presently claimed subject matter. Applicant argues that Sapkota simply describes an overview of genus Bacillus, Gantar et al does not evaluate Bacillus sp, New York State Department of Health does not mention the fate of inhibitory chemistry such as toxic metabolites produced by the cyanobacteria prior to pasteurization of the extract and therefore a person of ordinary skill in the art would have no expectation that the culture of soil-based microbes in the inactivated extract as presently claimed would be viable as part of a method for reducing cyanobacteria in a cyanobacteria-contaminated body of water without the benefit of the teachings of the present disclosure, and Le et al provide no disclosure or suggestion that the microbial solution can or should be prepared using an inactivated extract of the body of water targeted for water remediation itself and that consulting Le et al in view of any of the other cited documents would have the effect of teaching away from the presently claimed method wherein the soil-based microbes grow with and adapt to the inactivated extract.
The above arguments regarding that the presently claimed subject matter is not disclosed, taught or suggested by Bi et al and that the deficiencies of Bi et al are not cured by Sapkota, Gantar et al, New York State Department of Health, or Le, alone or in combination, have been fully considered by the Examiner but are not persuasive because the maintained rejection under 35 USC 103 is based on the combined teachings of Bi et al, Gantar et al, New York State Department of Health, and Le and not the individual teaching of Bi et al, not the teaching of Bi et al cured alone by the teaching of Sapkota, not the teaching of Bi et al cured alone by the teaching of Gantar et al, not the teaching of Bi et al cured alone by the teaching of New York State Department of Health, not the teaching of Bi et al cured alone by the teaching of Le, nor the teaching of Bi et al cured by the combination of teachings of Sapkota, Gantar et al, New York State Department of Health, and Le. Further, the rejection, as can be seen above, relies on Sapkota as evidence that Bacillus subtilis is a species of the family Bacillaceae and is a Gram-positive, rod-shaped, spore-forming, and facultative anaerobe. Applicant is remined that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant is reminded that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). Further, as discussed in the maintained rejection under 35 USC 103 above, a person of ordinary skill in the art would have been motivated to, based on the teachings of Bi et al, Gantar et al, New York State Department of Health, and Le, modify the method of Bi et al as follows: i) inactivate the viruses, bacteria, protozoa, and other pathogens in the water sample of Bi et al and do so before combining the culture of Bacillus subtilis and the water sample because Gantar et al teach that cyanobacteria, which are present in the water sample, exhibit allelopathic activity, which would interfere with the culture of Bacillus subtilis, ii) expose the water sample to 149°F/65°C for five minutes because New York State Department of Health teaches this as an effective pasteurization process for water borne microorganisms, and iii) introduce the Bacillus subtilis as algicidal bacteria to an inactivated water sample from the freshwater source, culturing and growing the Bacillus subtilis to an effective concentration level for targeting the cyanobacteria bloom in the cyanobacteria bloom-containing freshwater source, and dispensing the culture of Bacillus subtilis into the cyanobacteria bloom-containing freshwater source because Bi et al do not teach how to apply the method of controlling cyanobacteria blooms in freshwater involving using Bacillus subtilis as algicidal bacteria in a water sample from the cyanobacteria bloom-containing freshwater to the rest of the freshwater source outside of the water sample for which Le teaches how. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)). Further, the art needs to provide “a motivation” and not the same motivation as Applicant or necessarily recognize the same problem/solution as Applicant. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'l Co. v. Teleflex lnc., 550 U.S. 398,419 (2007). Instead, "any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." Id. at 420. For at least these reasons, the above rejection under 35 USC § 103 is hereby maintained.
Conclusion
No claims are allowable.
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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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