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 .
Claims1-3 and newly presented claims 7-8 are still at issue and are present for examination.
Applicants' arguments filed on 11/20/25 have been fully considered and are deemed to be persuasive to overcome some of the rejections previously applied. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.
Claims 4-6 and 9 are hereby withdrawn as drawn to non-elected invention.
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 1-3, 7-8 remain 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, according to previous office action.
In traversal of this rejection applicant argues that “configured to” is used in its well-established sense in patent claim drafting to denote the structural capability of a component and said phrase does not render the claim indefinite.
This argument was fully considered but was found unpersuasive. This is because, firstly, it is noted that in claim 1 said phrase has been utilized at least 5 times to refer to according to applicant, “structural capabilities” of each of the components referred to, such as “vessel”, in line 11, cooling jacket in line 15, fermenter in claim 18 etc. Obviously, since each of said components are different, their respective structural capabilities are also different but applicant refers to all the different structural capabilities as “configured to” which is improper.
Secondly, the phrase “configured to “ is ambiguous. For example, looking at phrase “vessel” configured to utilize an organism for converting the waste material to ….” in lines 11-12 of claim 1, it is unclear as to which specific structural capabilities of the vessel were adapted or adjusted (under the scope of “configured to”) to convert the waste organic material. After all, the vessel may be optimized by its shape, size, reactor building materials in terms of its iron, copper, zinc percentages, the number of baffles thereof etc. However, the phrase “configured to” does not identify said specific structural characteristics. Similarly, in for example claim 1, lines 18-19, “vessel further configured to receive sterile air at a controlled rate” does not reveal any specific structural characteristics of the claimed vessel. Here, the vessel may have a membrane to filter air as it enters the vessel, or it may have a tube (air jet) that allows entrance of already sterile air into the vessel etc. but said generic phrase is silent about such structural information. In addition, in terms of “controlled rate”, the vessel may utilize a gauge, or a specific stirrer shape etc. and the phrase “configured to” fails to provide such structural features.
In claim 8, once again the phrase “configured to maintain the broth under sterile conditions …” is confusing. Here, one does not know if the surge tank has an inlet for specific antibiotics, or has a specific heater or has a UV light etc.
Therefore, the examiner maintains that in this particular case, where the invention is a product and not a method, the phrase “configured to” in contrast to applicant’s view, is ambiguous and does render the claims indefinite.
Claims 2-3, 7 are merely rejected for depending from claim 1.
Claims 2-3 remain 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, according to previous office action. In traversal of this rejection applicant mentions that said information is taken directly from the written description and identifies these species as appropriate organism for converting waste materials into high protein, single cell matter.
This argument was fully considered but was also found unpersuasive. Once again, it is unclear how the organisms referred to (wherever in the disclosure they are extracted from), impact the structural characteristics of the fermenters, in terms of their shape, size, number of baffles, propeller shape etc. Therefore, this rejection also remains for applicant to consider.
Claims 1-3, 7-8 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. In claim 1, the phrase “high protein, single cell organism matter” is indefinite. No specific definition for said phrase could be found in the disclosure. It is unclear if said phrase is referring a high protein powder (or liquid) or to a population of single cell organisms, which have high protein content or something else. It is also unknown what exactly constitutes the term “high”.
Further, the system of claim 1 does not have any collection tanks or reservoirs for collecting “ high protein, single cell organism matter”.
Furthermore, in claim 1, it is unclear what exactly are the structural components of a “water chiller system”. Said system appears to be a system within the system of claim 1, wherein said system of claim 1 itself is a system within the ethanol plant (which may be also interpreted as a “ethanol plant system”).
In addition, in claim 1, lines 16-17, it is vague as to what “ to return the chilled water via a chilled water return to the water chiller system” means.
Claims 2-3, 7 and 8 are merely rejected for depending from claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(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.
Claim(s) 1-3 and 7-8 remain rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee (US 2016/0374364, cited previously) according to previous office action.
In traversal of this rejection applicant argues that while Lee does disclose secondary fermentation of ethanol by products, it fails to disclose or suggest sterilizing the broth at 190 ºF or integrating broth surge tank downstream of a sterilizer as shown in amended claim 1.
Further, according to applicant First argument, Lee relies upon the viability of microorganisms, such as lactic acid bacteria or probiotics, within the by-product streams. For example, Lee describes systems in which whole stillage, syrup, or thin stillage are inoculated with bacteria to yield microbial products for animal feed (see, e.g., Lee [0023]-[0035]). In contrast, the present invention requires a sterilizer that heats the fermenter contents to approximately 190 °F using steam. Such sterilization necessarily kills the microorganisms, producing a sterile broth. This step is fundamentally at odds with Lee's teachings because it would destroy the very organisms Lee depends upon, for producing
Second, amended claim 1 requires a broth surge tank that receives the sterilized broth from the sterilizer before returning it to the ethanol plant. The specification describes this feature in detail, stating: "The contents of each fermenter will be pulled from the fermenter ... passed through a sterilizer ... heat the stream to approximately 190º F using steam ... and passed along to the Broth Surge Tank, 400 as heated broth, 320. Fermenter broth, 410, will be sent back to the existing ethanol plant"
This surge tank is a critical integration point that allows sterile broth to be held before reintegration into the ethanol plant's processing streams. Lee, however, describes holding tanks for live microbial broths or stillage products intended for continued microbial metabolism. These tanks are not positioned downstream of a sterilizer and do not hold sterile broth. Accordingly, the surge tank of the present claims is structurally and functionally distinct from any vessel in Lee.
Third, the claimed invention as a whole reflects a different objective than Lee. Lee is directed toward generating value-added feed products enriched with viable microbial biomass and metabolites. Applicant's system, by contrast, is directed toward integrating aerobic fermentation with sterilization and reintegration into the ethanol plant, producing a sterile broth of high-protein, single-cell organism matter. The sterilizer and surge tank features represent essential system components that enable this different outcome. These distinctions confirm that Lee does not disclose each and every element of claim 1 as required for anticipation.
These arguments were fully considered but once again were found unpersuasive.
With respect to applicant’s first, second and third arguments above, it should be pointed out that unfortunately, applicant’s arguments do not relate to instant claim 1 as written. Instant claim 1, does not identify this invention as a sub-system of the ethanol plant but as an independent system, which is totally misleading. Looking at claim 1 as written, it appears that the preamble is directed to an independent system which produces “high protein, single-cell matter” but despite mentioning in the preamble, instantly claimed system does not have any collection tanks or reservoirs that accumulate the claimed product at its end point, said product being “high, protein, single organism matter”. In fact, currently, by reading the claim 1 alone without applicant’s explanations, it is unclear whether instant system is made for producing a “high protein, single organism matter” product or is it made for replenishing feed into an ethanol plant to produce more ethanol. If the latter objective is sought after, which appears to be the case, based on applicant’s arguments mentioned above), then applicant should have written at least claim 1 differently, especially the preamble thereof.
Applicant is also reminded that if instant claims are directed to a sub-system of the “ ethanol plant system”, then the structural features of ethanol plant (system) and how it connects to instant invention (in terms of structural features such as connecting pipe/channel length and diameter, pipe construction materials, the number of valves and specific pumps used etc.) may be a necessity to define the metes and bounds of instant invention.
Therefore, despite applicant’s arguments, in view of ambiguity of instant claims, the difference between Lee’s art and instant invention can hardly be assessed and hence, this rejection also remains for the reasons of record.
No claim is allowed.
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 MARYAM MONSHIPOURI whose telephone number is (571)272-0932. The examiner can normally be reached full-flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARYAM MONSHIPOURI/Primary Examiner, Art Unit 1651