DETAILED CORRESPONDENCE
Application Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4, 7-9, 11-18, 20-27, 29-34, 36-37, 39-40 are pending.
Claims 5-6, 10, 19, 28, 35, 38 are canceled.
This second non-final rejection is being sent out to the Applicant to address the limitation ‘using a single fermentation step in a single reactor’ in the instant application claim 1 which was not thoroughly addressed in the office action dated 9/12/2025.
Withdrawn Rejections
The rejection of claims 1-4, 7-9, 11-18, 20-27, 29-34, 36-37, 39-40 under 35 U.S.C. 102 a1 as being anticipated by Schultz et al. (WO patent number 2013/119866) filed on 7 February 2013, published 08/15/2013 (reference cited in IDS) {herein Schultz} is withdrawn in view of Applicant’s Pre-Appeal Brief that Schultz does not anticipate ‘using a single fermentation step in a single reactor.’
New 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 7-9, 11-18, 20-27, 29-34, 36-37, 39-40 are newly rejected under 35 U.S.C. 103 as being unpatentable over Schultz et al. (WO patent number 2013/119866) filed on 7 February 2013, published 08/15/2013 (reference cited in IDS) {herein Schultz} on view of Vega et al (1989, Biotechniology and Bioengineering, Examiner cited) {herein Vega}. The new rejection is necessitated by Applicant’s pre-appeal brief that Schultz does not anticipate ‘using a single fermentation step in a single reactor’ as recited in claims 1, 23, 32.
Claims 1-4, 7-9, 11-18, 20-22 are drawn to a method of preparing ethanol using a single fermentation step in a single reactor, the method comprising: a. providing a syngas comprising at least two of the following components: CO,CO2, and H2; b. mixing the syngas with H2-rich industrial waste gas to form a hydrogen- enriched substrate gas; and c. a single fermentation step in a single reactor wherein the H2- enriched substrate gas is fermented using acetogenic carboxydotrophic bacteria in a liquid medium to produce a broth containing ethanol, the broth having a pH of 5.3 or less.
Claims 23-27, 29-31 are drawn to a method of preparing ethanol using a single fermentation step in a single reactor, the method comprising: a. providing a syngas comprising at least two of the following components: CO,CO2, and H2; b. mixing the syngas with H2-rich industrial waste gas to form a hydrogen- enriched substrate gas having at least 50 vol.% of 12; c. a single fermentation step in a single reactor wherein the H2- enriched substrate gas is fermented using bacteria in a liquid medium-to produce a broth containing ethanol, the broth having a pH of 5.3 or less.
Claims 32-34, 36-37, 39-40 are drawn to a method of renewably preparing ethanol using a single fermentation step in a single reactor, the method comprising: a. providing a syngas comprising at least two of the following compounds: CO,CO2, and H2; b. adding H2 from a wind or solar renewable source to the syngas to form an H2 enriched substrate gas; c. a single fermentation step in a single reactor wherein fermenting the H2- enriched substrate gas is fermented using bacteria in a liquid medium to produce a broth containing ethanol, the broth having a pH of 5.3 or less.
With respect to claim 1, Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (para 000125) wherein culturing of the bacteria used in the methods of the invention may be conducted via fermenting substrates using anaerobia bacteria by the processes taught by Vega, et al. (1989). Study of gaseous substrate fermentations: Carbon monoxide conversion to acetate. 1. Batch culture. Biotechnology and Bioengineering. 34. 6. 774-784 (para 00099). The process of fermentation by Vega is a method utilizing batch vessels (Vega: abstract). The batch method a single-step (single-stage) closed system, wherein all of the raw materials and nutrients are added to the fermenter at the very beginning, and the microorganisms carry out the fermentation until completion without any fresh media added halfway through. The batch method taught by Vega may be used to convert gas phase substrates, such as H2S, CH4, CO, H2, and CO into useful products (Vega: abstract). Schultz would be motivated to utilize the batch method taught by Vega as it would reduce unit operations, cuts capital costs, and prevents the accumulation of toxic intermediates. Furthermore, it simplifies sterilization and maintenance while maximizing product yield without complex multi-stage transfer. One of ordinary skill in the art knowing the benefit of batch fermentation for the production of ethanol based on the teachings of Schultz and Vega would have a reasonable expectation of success to combine batch fermentation for the production of ethanol because one of ordinary skill in the art would expect them both to easily yield ethanol. Especially since Vega teaches a method wherein batch fermentation is used to ferment gas phase substrates CO, CO2, H2 into ethanol (Vega: abstract, column 1, para 1) and Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (Schultz: para 000125). Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Schultz further teaches the gaseous substrate of the invention is H2 rich, comprising H2 and CO2 at a 2:1 ratio (para 000125). Additionally, Schultz teaches a method wherein natural gas converted to syngas comprised of CO, H2 and CO2 makes up a syngas substrate (para 000133). The gaseous substrate of the reference invention may be the result of blending one or more gaseous substrates to provide a blended stream (para 000125). Examiner is interpreting the blended stream taught by Schultz to be a mix of syngas substrate and H2 rich industrial waste gas substrate as Schultz teaches the gas substrate of the invention may be a blend of one or more gaseous substrates, of which Examiner is interpreting the syngas substrate taught by Schultz as being one gas with the H2 rich industrial waste substrate being another gas. Absent evidence otherwise, it is the Examiner’s position that the blended gaseous substrates taught by Schultz would necessarily form a hydrogen- enriched substrate gas, especially since Schultz teaches a preference for hydrogen rich gaseous substrate to be used for the production of alcohol from fermentation (para 000134). Since the Office does not have the facilities for examining and comparing Applicants’ hydrogen- enriched substrate gas with the hydrogen- enriched substrate gas of the prior art, the burden is on the Applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the hydrogen- enriched substrate gas of the prior art does not possess the same material structural and functional characteristics of the claimed hydrogen- enriched substrate gas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594. Schultz further teaches a liquid medium comprising a culture of Clostridiwn autoethanogenum ferments the substrate gas in a bioreactor to produce one or more alcohols (para 000134) of which can be ethanol (para 000137) to form a fermentation broth (para 00053). Examiner is interpreting the fermentation broth as being a liquid medium. Furthermore, Examiner is interpreting said step to be a single fermentation step in a single reactor as Schultz teaches said step of fermentation to occur within a single reactor (para 000137). Strains of acetogenic carboxydotrophic bacteria can be used in experimentation (para 00093-0097). The preferred pH of the fermentation broth is about 3 (para 000113). Although the reference of Schultz does not explicitly teach the limitation of claim 1 (the broth having a pH of 5.3 or less), MPEP 2144.05 states"[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the pH of the fermentation broth depending on the particular application. It would be routine for one to arrive at the pH for the application they intend on using the broth. Therefore, the above invention would have been prima facie obvious.
With respect to claim 2, Schultz teaches the method where typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 3, Schultz teaches the method where a typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 4, Schultz teaches the method where a typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 7, ethanol may be recovered from the fermentation broth by methods such as fractional distillation or evaporation, and extractive fermentation (page 24, paragraph 000111).
With respect to claim 8, Schultz teaches the ability of micro-organisms to grow on CO as their sole carbon source was first discovered in 1903. This was later determined to be a property of organisms that use the acetyl coenzyme A (acetyl CoA) biochemical pathway of autotrophic growth (also known as the Woods-Ljungdahl pathway and the carbon monoxide dehydrogenase / acetyl CoA synthase (CODH/ACS) pathway). A large number of anaerobic organisms including carboxydotrophic, photosynthetic, methanogenic and acetogenic organisms have been shown to metabolize CO to various end products, namely CO2, H2, methane, n-butanol, acetate and ethanol (page 2, paragraph 0007). While using CO as the sole carbon source all such organisms produce at least two of these end products (page 2, paragraph 0007). Examiner is interpreting the following microbial characteristic to be in-line with an acetogenic carboxydotrophic microorganism: use of the acetyl CoA biochemical pathway, anaerobic and carboxydotrophic; as recited by Schultz (page 2, paragraph 0007). Additionally, Schultz teaches the bioreactor contains a culture of microorganisms capable of fermenting the H2 containing substrate to produce a hydrocarbon product (para 00073). Strains of acetogenic carboxydotrophic bacteria can be used in experimentation (para 00093-0097).
With respect to claim 9, Schultz teaches the method where anaerobic bacteria, such as those from the genus Clostridium, have been demonstrated to produce ethanol from CO, CO2 and H2 via the acetyl CoA biochemical pathway (para 0008 and 00093).
With respect to claim 11, Schultz teaches the method where preferably the carbon source for the fermentation can be a gaseous substrate comprising carbon dioxide in combination with hydrogen (page 28, paragraph 000124). Similarly, the gaseous substrate may be a CO2 and H2 containing waste gas obtained as a by-product of an industrial process, or from some other source (page 28, paragraph 000124). The largest source of CO2 emissions globally is from the combustion of fossil fuels such as coal, oil and gas in power plants, industrial facilities and other sources (page 28, paragraph 000124).
With respect to claim 12, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060). Since e/C is defined in their specification as the ratio of electrons from hydrogen to total carbon, Schultz teach identical volume % for hydrogen and CO and CO2 as defined by the specification, so absent evidence otherwise, it is the examiner’s position that this e/C value would be inherent to the syngas taught in Schultz absent evidence otherwise (Instant Application: page 5, paragraph 0015). Since the Office does not have the facilities for examining and comparing Applicants’ syngas with the syngas of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the syngas of the prior art does not possess the same material structural and functional characteristics of the claimed syngas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
With respect to claim 13, Schultz teaches the method where the present invention captures carbon from a substrate containing CO and/or H2 and/or CO2 via a fermentation process and produces a valuable hydrocarbon product (page 29, paragraph 000129). In the absence of the fermentation of the present invention, the CO would be likely to be burned to release energy and the resulting CO2 emitted to the atmosphere. Where the energy produced is used to generate electricity, there are likely to be considerable losses in energy due to the transmission along high-voltage power lines. In contrast, the hydrocarbon product produced by the present invention may be easily transported and delivered in a usable form to industrial, commercial, residential and transportation end-users resulting in increased energy efficiency and convenience. The production of hydrocarbon products that are formed from what are effectively waste gases is an attractive proposition for industry. This is especially true for industries situated in remote locations if it is logistically feasible to transport the product long distances (page 29, paragraph 000129).
With respect to claim 14, Schultz teaches the method where the syngas produced by the gas reforming reactions further comprises sulfur components and other contaminants (page 5, paragraph 00022). Examiner is interpreting that hydrogen sulfide is a product of gaseous fermentation. Therefore it is understood that the lack of Schultz reciting its removal during fermentation means it has not been removed.
With respect to claim 15, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060). Since e/C is defined in their specification as the ratio of electrons from hydrogen to total carbon, Schultz teach identical volume % for hydrogen and CO and CO2 as defined by the specification, so absent evidence otherwise, it is the examiner’s position that this e/C value would be inherent to the syngas taught in Schultz absent evidence otherwise (Instant Application: page 5, paragraph 0015). Since the Office does not have the facilities for examining and comparing applicants’ syngas with the syngas of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the syngas of the prior art does not possess the same material structural and functional characteristics of the claimed syngas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
With respect to claim 16, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 17, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 18, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 20, Schultz teaches the method where hydrogen rich gas streams are produced by a variety of processes including reformation of hydrocarbons, and in particular reformation of natural gas (page 28, paragraph 000126). Other sources of hydrogen rich gas include the electrolysis of water, by-products from electrolytic cells used to produce chlorine and from various refinery and chemical streams (page 28, paragraph 000126).
With respect to claim 21, Schultz teaches the method where anaerobic bacteria, such as those from the genus Clostridium, have been demonstrated to produce ethanol from CO, CO2 and H2 via the acetyl CoA biochemical pathway.
With respect to claim 22, Schultz teaches the method where the hydrogen enriched tail gas is then passed to the secondary bioreactor (page 8, paragraph 00038). Examiner is interpreting ‘rich in H2’ to be synonyms with ‘hydrogen-enriched’ since the outcome is a product that contains additional hydrogen. In addition, Schultz teaches the syngas produced by the gas reforming reactions further comprises sulfur components and other contaminants (page 5, paragraph 00022). Examiner is interpreting that hydrogen sulfide is a product of gaseous fermentation. Therefore it is understood that the lack of Schultz reciting its removal during fermentation means it has not been removed.
With respect to claim 23, Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (para 000125) wherein culturing of the bacteria used in the methods of the invention may be conducted via fermenting substrates using anaerobia bacteria by the processes taught by Vega, et al. (1989). Study of gaseous substrate fermentations: Carbon monoxide conversion to acetate. 1. Batch culture. Biotechnology and Bioengineering. 34. 6. 774-784 (para 00099). The process of fermentation by Vega is a method utilizing batch vessels (Vega: abstract). The batch method a single-step (single-stage) closed system, wherein all of the raw materials and nutrients are added to the fermenter at the very beginning, and the microorganisms carry out the fermentation until completion without any fresh media added halfway through. The batch method taught by Vega may be used to convert gas phase substrates, such as H2S, CH4, CO, H2, and CO into useful products (Vega: abstract). Schultz would be motivated to utilize the batch method taught by Vega as it would reduce unit operations, cuts capital costs, and prevents the accumulation of toxic intermediates. Furthermore, it simplifies sterilization and maintenance while maximizing product yield without complex multi-stage transfer. One of ordinary skill in the art knowing the benefit of batch fermentation for the production of ethanol based on the teachings of Schultz and Vega would have a reasonable expectation of success to combine batch fermentation for the production of ethanol because one of ordinary skill in the art would expect them both to easily yield ethanol. Especially since Vega teaches a method wherein batch fermentation is used to ferment gas phase substrates CO, CO2, H2 into ethanol (Vega: abstract, column 1, para 1) and Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (Schultz: para 000125). Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Schultz further teaches the gaseous substrate of the invention is H2 rich, comprising H2 and CO2 at a 2:1 ratio (para 000125). Additionally, Schultz teaches a method wherein natural gas converted to syngas comprised of CO, H2 and CO2 makes up a syngas substrate (para 000133). The CO containing substrate may comprise greater than 50 % H2 (para 00089). The gaseous substrate of the invention may be the result of blending one or more gaseous substrates to provide a blended stream (para 000125). Examiner is interpreting the blended stream taught by Schultz to be a mix of syngas substrate and H2 rich industrial waste gas substrate as Schultz teaches the gas substrate of the invention may be a blend of one or more gaseous substrates, of which Examiner is interpreting the syngas substrate taught by Schultz as being one gas stream with the H2 rich industrial waste substrate being another gaseous stream. Absent evidence otherwise, it is the Examiner’s position that the blended gaseous substrates taught by Schultz would necessarily form a hydrogen- enriched substrate gas. Since the Office does not have the facilities for examining and comparing Applicants’ hydrogen- enriched substrate gas with the hydrogen- enriched substrate gas of the prior art, the burden is on the Applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the hydrogen- enriched substrate gas of the prior art does not possess the same material structural and functional characteristics of the claimed hydrogen- enriched substrate gas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.‘ Schultz further teaches a liquid medium comprising a culture of Clostridiwn autoethanogenum ferments the substrate gas in a bioreactor to produce one or more alcohols (para 000134) of which can be ethanol (para 000137) to form a fermentation broth (para 00053). Examiner is interpreting the fermentation broth as being a liquid medium. Furthermore, Examiner is interpreting said step to be a single fermentation step in a single reactor as Schultz teaches said step of fermentation to occur within a single reactor (para 000137). It is noted that the recitation of “to produce a broth containing ethanol” according to claim 23 is a “product-by-process” claim limitation. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Strains of acetogenic carboxydotrophic bacteria can be used in experimentation (para 00093-0097). The preferred pH of the fermentation broth is about 3 (para 000113). Although the reference of Schultz does not explicitly teach the limitation of claim 1 (the broth having a pH of 5.3 or less), MPEP 2144.05 states"[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the pH of the fermentation broth depending on the particular application. It would be routine for one to arrive at the pH for the application they intend on using the broth. Therefore, the above invention would have been prima facie obvious.
With respect to claim 24, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 25, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 26, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 27, Schultz teaches the method where the products of the fermentation reaction can be recovered using known methods (page 24, paragraph 000109). However, briefly and by way of example ethanol may be recovered from the fermentation broth by methods such as fractional distillation or evaporation, and extractive fermentation (page 24, paragraph 000109).
With respect to claim 29, Schultz teaches the method where the ability of micro-organisms to grow on CO as their sole carbon source was first discovered in 1903. This was later determined to be a property of organisms that use the acetyl coenzyme A (acetyl CoA) biochemical pathway of autotrophic growth (also known as the Woods-Ljungdahl pathway and the carbon monoxide dehydrogenase / acetyl CoA synthase (CODH/ACS) pathway). A large number of anaerobic organisms including carboxydotrophic, photosynthetic, methanogenic and acetogenic organisms have been shown to metabolize CO to various end products, namely CO2, H2, methane, n-butanol, acetate and ethanol (page 2, paragraph 0007). While using CO as the sole carbon source all such organisms produce at least two of these end products (page 2, paragraph 0007). Examiner is interpreting the following microbial characteristic to be in-line with an acetogenic carboxydotrophic microorganism: use of the acetyl CoA biochemical pathway, anaerobic and carboxydotrophic; as recited by Schultz (page 2, paragraph 0007). Schultz further teaches the bioreactor contains a culture of microorganisms capable of fermenting the H2 containing substrate to produce a hydrocarbon product (para 00073). Strains of acetogenic carboxydotrophic bacteria can be used in experimentation (para 00093-0097).
With respect to claim 30, Schultz teaches the method where anaerobic bacteria, such as those from the genus Clostridium, have been demonstrated to produce ethanol from CO, CO2 and H2 via the acetyl CoA biochemical pathway (para 0007).
With respect to claim 31, Schultz teaches the method where the hydrogen enriched tail gas is then passed to the secondary bioreactor (page 8, paragraph 00038). Examiner is interpreting ‘rich in H2’ to be synonyms with ‘hydrogen-enriched’ since the outcome is a product that contains additional hydrogen. In addition, Schultz teaches the syngas produced by the gas reforming reactions further comprises sulfur components and other contaminants (page 5, paragraph 00022). Examiner is interpreting that hydrogen sulfide is a product of gaseous fermentation. Therefore it is understood that the lack of Schultz reciting its removal during fermentation means it has not been removed.
With respect to claim 32, Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (para 000125) wherein culturing of the bacteria used in the methods of the invention may be conducted via fermenting substrates using anaerobia bacteria by the processes taught by Vega, et al. (1989). Study of gaseous substrate fermentations: Carbon monoxide conversion to acetate. 1. Batch culture. Biotechnology and Bioengineering. 34. 6. 774-784 (para 00099). The process of fermentation by Vega is a method utilizing batch vessels (Vega: abstract). The batch method a single-step (single-stage) closed system, wherein all of the raw materials and nutrients are added to the fermenter at the very beginning, and the microorganisms carry out the fermentation until completion without any fresh media added halfway through. The batch method taught by Vega may be used to convert gas phase substrates, such as H2S, CH4, CO, H2, and CO into useful products (Vega: abstract). Schultz would be motivated to utilize the batch method taught by Vega as it would reduce unit operations, cuts capital costs, and prevents the accumulation of toxic intermediates. Furthermore, it simplifies sterilization and maintenance while maximizing product yield without complex multi-stage transfer. One of ordinary skill in the art knowing the benefit of batch fermentation for the production of ethanol based on the teachings of Schultz and Vega would have a reasonable expectation of success to combine batch fermentation for the production of ethanol because one of ordinary skill in the art would expect them both to easily yield ethanol. Especially since Vega teaches a method wherein batch fermentation is used to ferment gas phase substrates CO, CO2, H2 into ethanol (Vega: abstract, column 1, para 1) and Schultz teaches a method of preparing ethanol using a gaseous substrate from waste gas obtained from industrial processes (Schultz: para 000125). Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Schultz further teaches the gaseous substrate of the invention is H2 rich, comprising H2 and CO2 at a 2:1 ratio (para 000125). Additionally, Schultz teaches a method wherein natural gas converted to syngas comprised of CO, H2 and CO2 makes up a syngas substrate (para 000133). The gaseous substrate of the invention may be the result of blending one or more gaseous substrates to provide a blended stream (para 000125). Examiner is interpreting the blended stream taught by Schultz to be a mix of syngas substrate and H2 rich industrial waste gas substrate as Schultz teaches the gas substrate of the invention may be a blend of one or more gaseous substrates, of which Examiner is interpreting the syngas substrate taught by Schultz as being one gas stream with the H2 rich industrial waste substrate being another gaseous stream. Absent evidence otherwise, it is the Examiner’s position that the blended gaseous substrates taught by Schultz would necessarily form a hydrogen- enriched substrate gas. Since the Office does not have the facilities for examining and comparing Applicants’ hydrogen- enriched substrate gas with the hydrogen- enriched substrate gas of the prior art, the burden is on the Applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the hydrogen- enriched substrate gas of the prior art does not possess the same material structural and functional characteristics of the claimed hydrogen- enriched substrate gas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.‘ Schultz further teaches a culture of Clostridiwn autoethanogenum ferments the substrate gas in a bioreactor to produce one or more alcohols (para 000134) of which can be ethanol (para 000137) to form a fermentation broth (para 00053). Furthermore, given that Schultz teaches adding H2 to form the gaseous substrate (page 8, paragraph 0071), absent evidence otherwise, the structure of said H2 would be interpreted as being the same no matter the source by which it was generated. As such, Examiner is interpreting the recitation ‘adding H2 from a wind or solar renewable source to the syngas to form an H2 enriched substrate gas’ to be anticipated by Schultz as the structure of said H2 would be interpreted as being the same no matter the source by which it was generated.
Examiner is interpreting the fermentation broth as being a liquid medium. Furthermore, Examiner is interpreting said step to be a single fermentation step in a single reactor as Schultz teaches said step of fermentation to occur within a single reactor (para 000137). It is noted that the recitation of “to produce a broth containing ethanol” according to claim 32 is a “product-by-process” claim limitation. MPEP 2113 states “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)”. Strains of acetogenic carboxydotrophic bacteria can be used in experimentation (para 00093-0097). The preferred pH of the fermentation broth is about 3 (para 000113). Although the reference of Schultz does not explicitly teach the limitation of claim 1 (the broth having a pH of 5.3 or less), MPEP 2144.05 states"[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the pH of the fermentation broth depending on the particular application. It would be routine for one to arrive at the pH for the application they intend on using the broth. Therefore, the above invention would have been prima facie obvious.
With respect to claim 33, Schultz teaches the method where hydrogen rich gas streams are produced by a variety of processes including reformation of hydrocarbons, and in particular reformation of natural gas (page 28, paragraph 000126). Other sources of hydrogen rich gas include the electrolysis of water, by-products from electrolytic cells used to produce chlorine and from various refinery and chemical streams (page 28, paragraph 000126).
With respect to claim 34, Schultz teaches the method where the hydrogen enriched tail gas is then passed to the secondary bioreactor (page 8, paragraph 00038). Examiner is interpreting ‘rich in H2’ to be synonyms with ‘hydrogen-enriched’ since the outcome is a product that contains additional hydrogen. In addition, Schultz teaches the syngas produced by the gas reforming reactions further comprises sulfur components and other contaminants (page 5, paragraph 00022). Examiner is interpreting that hydrogen sulfide is a product of gaseous fermentation. Therefore it is understood that the lack of Schultz reciting its removal during fermentation means it has not been removed.
With respect to claim 36, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060).
With respect to claim 37, Schultz teaches the method where a gaseous substrate comprising carbon monoxide and/or hydrogen includes any gas which contains carbon monoxide and/or hydrogen (page 9, paragraph 00048). The gaseous substrate may contain a significant proportion of CO, preferably at least about 2% to about 75% CO by volume and/or preferably about 0% to about 95% hydrogen by volume (page 9, paragraph 00048). A typical output gas composition from the steam reforming process would include the following approximate composition: H2 - 73%, CO2 - 10%, CO - 8% (page 11, paragraph 00060). Since e/C is defined in their specification as the ratio of electrons from hydrogen to total carbon, Schultz teach identical volume % for hydrogen and CO and CO2 as defined by the specification, so absent evidence otherwise, it is the examiner’s position that this e/C value would be inherent to the syngas taught in Schultz absent evidence otherwise (Instant Application: page 5, paragraph 0015). Since the Office does not have the facilities for examining and comparing applicants’ syngas with the syngas of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed product and the product of the prior art (i.e., that the syngas of the prior art does not possess the same material structural and functional characteristics of the claimed syngas). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
With respect to claim 39, Schultz teaches the method where anaerobic bacteria, such as those from the genus Clostridium, have been demonstrated to produce ethanol from CO, CO2 and H2 via the acetyl CoA biochemical pathway.
With respect to claims 40, Schultz teaches the method where the products of the fermentation reaction can be recovered using known methods (page 24, paragraph 000109). However, briefly and by way of example ethanol may be recovered from the fermentation broth by methods such as fractional distillation or evaporation, and extractive fermentation (page 24, paragraph 000109).
RESPONSE TO REMARKS: Beginning on p. 1 of Applicant’s Pre-Appeal Brief Conference dated 3/11/2026, Applicant contends that every Schultz embodiment requires two reactors. Applicant contends that the blending citation describes the wrong part of Schultz’s process. Applicant contends that Schultz does not disclose fermenting for ethanol at a pH of 5.3 or less.
This argument is found to be not persuasive in view of the modified rejection set forth. Examiner contends that Schultz in view of Vega teaches a step of fermenting the H2-enriched substrate gas in a batch fermentation step in a single reactor using acetogenic carboxydotrophic bacteria in a liquid medium to produce a broth containing ethanol, the broth having a pH of about 5 and a liquid medium comprising a culture of Clostridiwn autoethanogenum that ferments substrate gas in a bioreactor to produce ethanol (Schultz: para 0000134, 00137 and Vega: page 1, column 1, para 1) thereby forming a fermentation broth (Schultz: para 00053). Therefore, the step of batch fermentation (a single fermentation step in a single reactor is envisioned by Schultz in view of Vega with the teaching of culturing of bacteria used in the method of the invention can be conducted using batch vessels (Schultz: para 00099 and Vega: abstract).
Examiner contends that Schultz teaches the gaseous substrates of the invention may be the result of blending one or more gaseous substrates to provide a blended stream (para 000125). As such, it is the Examiner’s position that the blended stream taught by Schultz can be any gaseous substrate, including waste gas as Schultz teaches the gas substrate of the invention may be a blend of one or more gaseous substrates. Schultz further teaches the gaseous substrate may be a CO2 and H2 containing waste gas obtained as a by-product of an industrial process (para 000124). Furthermore, since Schultz, in view of Vega teaches batch fermentation. Therefore, it would be obvious to one of ordinary skill in the art that the gases would necessarily be mixed. Especially since batch fermentation is a closed system where nutrients are added at the start, and the culture runs until completion without further nutrient additions.
Examiner contends that Schultz teaches the preferred pH of the fermentation broth is about 3 (para 000113). MPEP 2144.05 states"[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the pH of the fermentation broth depending on the particular application. It would be routine for one to arrive at the pH for the application they intend on using the broth. Therefore, the above invention would have been prima facie obvious.
Conclusion
Claims 1-4, 7-9, 11-18, 20-27, 29-34, 36-37, 39-40 are pending.
Claims 5-6, 10, 19, 28, 35, 38 are canceled.
Claims 1-4, 7-9, 11-18, 20-27, 29-34, 36-37, 39-40 are rejected.
No claims are in condition for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
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