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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 11-20 in the reply filed on June 18, 2026 is acknowledged.
No claims are withdrawn because claims 1-10 have been cancelled and the species have been limited to enzymes capable of forming carbonate.
Claims 1-10 and 14-15 have been cancelled. Claims 11-13 and 16-20 will be examined to the extent they read on the elected subject matter of record.
Priority
This application is a continuation of 16/787,673, now U.S. Patent No. 11,512,021, filed February 11, 2021, which is a continuation of PCT/EP2019/053722 filed February 14, 2019, which claims benefit to Foreign German Application No. 102018103314.1 filed February 14, 2018.
Information Disclosure Statement
Receipt of Information Disclosure Statements filed October 19, 2022, April 14, 2023, May 26, 2023, January 25, 2024, and March 14, 2024 is acknowledged.
Claim Rejections - 35 USC § 112
Claims 11-13 and 16-20 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.
Regarding claim 11, line 10, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if gum arabic and latex are a part of the claim.
Claim 11, line 12 recites “cold soluble and/or warm soluble (plant) glues”. The use of parentheses renders the claims indefinite because it is unclear whether the limitation “plant” within the parentheses is part of the claimed invention. Correction is required.
Regarding claim 11, line 21 recites “glass-like” binders. It is unclear what a “glass-like” binder encompasses. The term should be clarified.
Claim 13 recites the limitation "the one or more organisms" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 11 from which claim 13 depends has been amended to cancel the limitation of “organisms”. As such, there is lack of antecedent basis for limitation in claim 13.
Claims 12, 13, and 16-20 are dependent from claim 11. Therefore, these claims are also rejected.
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 11, 12, 16, 17, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(1) as being anticipated by Wilson et al. (US 2017/0029689). Wilson et al. cited by Applicant on the IDS dated 3/14/2024.
Wilson et al. disclose samples were prepared in 50 mL conical tubes by adding buffers A-C as shown in Table 1 to 10 grams of sand so that the final volume in each tube was 40 cc. Enzymes (urease) were added to each tube (Tubes 1 and 2) and then the tubes were capped and mixed well. The tubes were then placed in the 37° C. (100° F.) incubator and allowed to rest overnight and checked every few days. Calcite precipitation was noticed after about 2 days (page 3, paragraph 38).
Regarding claims 11, 12, 16, 17, and 18, Wilson et al. disclose Table 1 comprises:
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220
483
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Greyscale
Buffer C comprises urea (claims 11 and 16, urea, substance to form the carbonate). Buffer C comprises CaCl2 (claims 11 and 18, cation source, calcium salt). Buffer C comprises Casein (claim 11, additive). Buffer C is added to urease (claims 11 and 16, enzyme, urease).
Wilson et al. disclose the casein (milk protein) served to stabilize the urease in solution. It has been shown to enhance the activity of enzymes by about 10 times. In the cases of tests of C2 and B2 a strong ammonia smell was noticed when the test tubes were opened. C2 had a large assortment of consolidated sand while B2 had some large grains and pebbles but not consolidated to the extent of C2. The results indicate that the enzyme is effective in producing calcite, with the greatest amount of calcite resulting from the larger concentrations of urea and calcium. The addition of casein to the reaction mixture results in increased calcite precipitation (page 4, paragraph 39).
Regarding claim 16, Wilson et al. disclose suitable carbonate precipitating enzyme includes urease, carbonic anhydrase (page 1, paragraph 14).
Regarding claim 18, Wilson et al. disclose the calcium ion sources include calcium chloride, calcium bromide…or a combination (page 2, paragraph 17).
Regarding claim 20, Wilson et al. disclose a method of cementing a wellbore penetrating a subterranean formation, the method comprising: injecting into the wellbore a settable slurry comprising: an aqueous carrier; an aggregate; urea; a calcium ion source; and a calcium carbonate producing agent comprising a microbe, an enzyme, or a combination comprising at least one of the foregoing; and allowing the slurry to set (page 4, claim 1).
Wilson et al. meet all the limitations of the claims and thereby anticipate the claims.
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.
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 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al. (US 2017/0029689). Wilson et al. cited by Applicant on the IDS dated 3/14/2024.
Applicant’s Invention
Applicant claims a mixture capable of biocementation of a substrate comprising: (i) one or more enzymes capable of forming carbonate; (ii) one or more substances to for the carbonate; (iii) optionally, one or more cation sources; and (iv) one or more additives…wherein the additives are present in an amount to additionally solidify or harden the substrate or to increase its stability.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
The teachings of Wilson et al. with respect to the 35 U.S.C. 103 rejection is hereby incorporated and are therefore applied in the instant rejection as discussed above.
Wilson et al. further teach microbes that have the ability to induce the precipitation of calcium carbonate include those from the genera such as Bacillus sp., Sporosarcina sp.,and Helicobacter pylori.
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Wilson et al. do not specifically disclose example of one or more organisms, wherein the one or more organisms are selected from microorganisms.
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Wilson et al. and use one or more organisms, wherein the one or more organisms are selected from microorganisms in the methods taught by Wilson et al. Wilson et al. teach a method of cementing a wellbore penetrating a subterranean formation, the method comprising: injecting into the wellbore a settable slurry comprising: an aqueous carrier; an aggregate; urea; a calcium ion source; and a calcium carbonate producing agent comprising a microbe, an enzyme, or a combination comprising at least one of the foregoing; and allowing the slurry to set. One of ordinary skill in the art would have been motivated to substitute or use a microbe in the compositions used in the methods of Wilson et al. because Wilson et al. specifically teach a microbe that is calcium carbonate producing is used in the composition. Wilson et al. further teach microbes include those from the genera such as Bacillus sp., Sporosarcina sp.,…and Helicobacter pylori, which are bacteria and bacteria spores, microorganisms. As such, it would have been obvious to one of ordinary skill in the art to use a microorganism with a reasonable expectation of success.
Therefore, the claimed 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.
Claims 11, 12, 16, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen et al. (WO 2018/064320).
Applicant’s Invention
Applicant claims a mixture capable of biocementation of a substrate comprising: (i) one or more enzymes capable of forming carbonate; (ii) one or more substances to for the carbonate; (iii) optionally, one or more cation sources; and (iv) one or more additives…wherein the additives are present in an amount to additionally solidify or harden the substrate or to increase its stability.
Determination of the scope of the content of the prior art
(MPEP 2141.01)
Vorderbruggen et al. teach urea, metal ions and carbonate producing enzymes can be used to produce carbonate precipitate such as calcite, which then cements or bonds solid particles together. To enhance the precipitation of carbonates, the inventors have used a substrate that has less affinity to the active sites of the carbonate producing enzymes as compared to urea (page 2, paragraph 7).
Regarding claim 11 and 16, Vorderbruggen et al. teach a method of enhancing carbonate precipitation in a downhole environment, the method comprising: introducing into the downhole environment a treatment field comprising: a carbonate producing agent comprising an enzyme, and a substrate comprising N-oxyurea, semicarbazide, N,N-dioxyurea, or a combination comprising at least one of the foregoing; and forming a carbonate precipitate; wherein greater than about 70 wt.% of the substrate is consumed in one or more reactions to produce the carbonate precipitate (page 12, paragraph 54).
Regarding claim 11, Vorderbruggen et al. teach the compositions also comprise an enzyme stabilizer including casein, albumin. The presence of enzyme stabilizers can enhance the activity of the enzymes (page 6, paragraph 28).
Regarding claim 12, Vorderbruggen et al. teach the substrate can be in various forms. In an embodiment, the substrate is provided as a aqueous solution in water (page 3, paragraph 12).
Regarding claim 16, Vorderbruggen et al. teach suitable carbonate precipitating enzymes include urease, carbonic anhydrase (page 4, paragraph 16).
Regarding claim 17, Vorderbruggen et al. teach the substrate can further comprise urea (page 3, paragraph 11).
Regarding claim 20, Vorderbruggen et al. teach a method of forming a self-healing cemented structure in a downhole environment comprises injecting into the downhole environment a treatment compositions comprising: an aqueous carrier, an aggregate, a cementitious material; and a self-healing composition comprising: an encapsulated carbonate producing agent containing an enzyme; and a substrate comprising urea, N-oxyurea…N,N-diooxyurea, an organic feedstock, and forming a self-healing cemented structure (page 10, paragraph 43).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
Vorderbruggen et al. do not specifically disclose the mixture does not comprise the one or more cation sources of (iii).
Finding a prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to use the teachings of Vorderbruggen et al. and not include a cation source in the composition. Vorderbruggen et al. teach a method of forming a self-healing cemented structure in a downhole environment comprises injecting into the downhole environment a treatment compositions comprising: an aqueous carrier, an aggregate, a cementitious material; and a self-healing composition comprising: an encapsulated carbonate producing agent containing an enzyme (enzymes capable of forming carbonate); and a substrate comprising urea, N-oxyurea…N,N-diooxyurea (substance to form the carbonate), an organic feedstock (additive), and forming a self-healing cemented structure. It would have been obvious to one of ordinary skill in the art that this embodiment of the invention does not contain a cation. While Vorderbruggen et al. does teach some embodiments that comprise a cation, there are several embodiments that do not require the presence of a cation of form the carbonate precipitate. As such, it would have been obvious to one of ordinary skill in the art to not include a cation with a reasonable expectation of success.
Therefore, the claimed 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.
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.
Claims 11, 12, 13, 16, 17, 18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 6, 13, 14, 15, 16, 18, 19, and 20 of U.S. Patent No. 11,512,021. Although the claims at issue are not identical, they are not patentably distinct from each other because each is directed to a mixture capable of biocementation of a substrate comprising (i) one or more enzymes capable of forming carbonate and/or catalyzing carbonate formulation; (ii) one or more substances for the formation of carbonate; (iii) optionally, one or more cation sources; and (iv) one or more additives selected from cold source and/or warm soluble glues, binders, and bacteria capable of forming polymers, natural adhesives, chitin, extracellular polymeric substance, a polysaccharide, a monomer of polysaccharides selected from lactose, sucrose…and inulin (claims 11 and 20, instant invention; claims 1, 2, 5, 16, 18, 19 and 20, U.S. Patent No. 11,512,021). Each claims the mixture is present in liquid form, as a gel, paste, or powders (claim 12, instant invention; claim 4, U.S. Patent No. 11,512,021). Each claims the mixture comprises one or more microorganisms (claim 13, instant application; claim 6, U.S. Patent No. 11,512,021). Each claims the mixture comprises one or more enzymes selected from urease…metabolic enzymes (claim 16, instant invention; claim 13, U.S. Patent No. 11,512,021). Each claims the one or more substances for the formation of a carbonate are selected from urea…anaerobic substance (claim 17, instant invention; claim 14, U.S. Patent No. 11,512,021). Each claims the mixture comprises one or more cation sources selected from calcium salts…radioactive cations, and mixtures thereof (claim 18, instant invention; claim 15, U.S. Patent No. 11,512,021). For these reasons, one of ordinary skill in the art would that the instant claims are obvious over the claims of U.S. Patent No. 11,512,021.
Claims 11, 12, 13, 16, 17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 5, 6, and 7 of U.S. Patent No. 12,643,819. Although the claims at issue are not identical, they are not patentably distinct from each other because each is directed to a mixture capable of biocementation of a substrate comprising (i) one or more enzymes capable of forming carbonate and/or catalyzing carbonate formulation; (ii) one or more substances for the formation of carbonate; and (iv) one or more additives selected from natural and chemical herbicides, fungicides, bacterial capable of forming polymers and substances that modify biocementation (claims 11 and 20, instant invention; claims 1 and 7, U.S. Patent No. 12,643,819). Each claims the mixture is present in liquid form, as a gel, paste, or powders (claim 12, instant invention; claim 4, U.S. Patent No. 11,512,021). Each claims the mixture comprises one or more microorganisms (claim 13, instant application; claim 5, U.S. Patent No. 12,643,819). Each claims the mixture comprises one or more enzymes selected from urease…metabolic enzymes (claim 16, instant invention; claim 6, U.S. Patent No. 12,643,819). Each claims the one or more substances for the formation of a carbonate are selected from urea…anaerobic substance (claim 17, instant invention; claim 3, U.S. Patent No. 12,643,819). For these reasons, one of ordinary skill in the art would that the instant claims are obvious over the claims of U.S. Patent No. 12,643,819.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andriae M Holt whose telephone number is (571)272-9328. The examiner can normally be reached Monday-Friday, 8:00 am-4:30 pm EST.
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/ANDRIAE M HOLT/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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