The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/249,117 application filed on April 14, 2023. Claims 1-8 were cancelled and claims 9-21 were added in a preliminary amendment.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 04/14/2023, 04/22/2023, 02/07/2025, 06/02/2025 and 09/08/2025. Please refer to the signed copy of the PTO-1449 form attached herewith.
Claim Interpretation
In the patentability analysis below, the bolded portions represent structural aspects of the claim. The italicized portions represent one or more portions of the manipulative steps. If a prior art device, in its normal and usual operation necessarily performs a manipulative step, act, or the method claimed, then Examiner will consider the particular manipulative step or act to be disclosed by the prior art device. That is, when the prior art device is the same as a device described in Applicant’s specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. MPEP §2112.02.
Claim Objections
Claims 18 and 19 are objected to because of the following informality: The phrase ‘in form’ in these claims should likely be “in the form.”
Appropriate correction is required.
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 9-21 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 pre-AIA the applicant regards as the invention.
Claim 9 recites: “A method for eliminating legionellae from water of a cooling circuit of an industrial plant (2), the water being loaded with organic substances and inorganic particles, the method comprising:
passing the water in a cooling circuit (3) through a separation device (5) for separating the organic substances and/or the inorganic particles from the water . . .”
The claim mentions “a cooling unit” twice, which leaves doubt regarding whether the latter refers to the previously mentioned cooling unit, or is a separate cooling unit.
Claim 21 is unclear because it states that the bacteria have different milieu requirements, namely anaerobic, anoxic and/or aerobic. Since anaerobic, anoxic and aerobic are the only choice, it is unclear what the claim requires. Additionally, the use of the term ‘different’ and then giving a choice among the three is confusing. For example, is the bacteria a mix of at least two of the milieu requirements (i.e., different) or can it be only one type.
Claims 10-21 depend on claim 9.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a natural phenomenon, or product of nature) without significantly more.
STEP 2A, Prong 1: Identify the abstract ideas/law of nature/natural phenomenon.
The claims recite generic bacteria (claim 9) which are impliedly natural bacteria. The bacteria is not changed in any way in any of the claims.
STEP 2A, Prong 2: Has the abstract ideas/law of nature/natural phenomenon been integrated into a particular practical application?
This judicial exception is not integrated into a practical application because the bacteria is within the ecosystem and does not appear to have an application other than growing which also occurs in nature. Alternately, the bacteria is merely linking the use of the judicial exception to a particular technological environment or field of use MPEP 2106.05(h). Therefore, either the exception is not applied at all, or it is merely generally linked to the technological environment or field of use.
Step 2B: Do the claims recite any elements which are significantly more than the abstract ideas/law of nature/natural phenomenon?
The additional claim 9 structures include a cooling circuit and a separation device. As noted in the patentability analysis, each of these structures appear to be well understood, routine and conventional within the art (WURC). Certainly, the cooling circuit could comprise a cooling tower and he separation device is quite generic so together these are WURC. If there is some combination of elements or manipulative steps in combination with the claimed processes and structures that is not WURC, then claim 9 would not warrant a 101 rejection. As presently recited, this process appears to be disclosed or prima facie obvious in Flettner, or the combination of Flettner and Snell, or Flettner and Jones. With respect to the dependent claims, no additional features amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 102/103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9, 11-16, 20 and 21 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Flettner et al. (US20120234753; Flettner)(IDS of 4-14-2023).
Regarding claims 9, 11-16, 20 and 21, Flettner discloses a method for eliminating legionellae ([0004], where legionella is mentioned as a pathogenic microorganism) from water of a cooling circuit of an industrial plant, the water being loaded with organic substances and inorganic particles (Abstract, [0005], [0023], [0044], Fig., where the water is expected to contain organic substances and inorganic particles and the prior art and Flettner discloses traditional means of removing these constituents), the method comprising:
passing the water in a cooling circuit ([0007], [0024]) through a separation device 7, 11, 12 ([0044], [0053]) for separating the organic substances and/or the inorganic particles from the water;
cooling the water by passing the water through an open cooling tower arranged downstream of the separation device ([0043]-[0044]);
adding bacteria to the water, the bacteria being suitable for degrading the organic substances present in the water ([0011]-[0015], [0049], [0050], [0053]); and
thereby forming a biological purification stage within the cooling circuit, such that, in a steady state, a legionellae limit value in the water of the cooling circuit of less than 100 CFU/ml is achieved ([0015]).
Less that less than 100 CFU/ml is a range from zero to just under 100 CFU/ml. Flettner does not provide a specific concentration for the legionellae reduction. However, Flettner states that the undesired bacteria starve and die ([0015]), which implies a concentration of less than 100 CFU/ml, or specifically a concentration of 0 CFU/ml, and an elimination of these undesired bacteria.
Alternatively, Flettner discloses the claimed invention, except where a legionellae limit value in the water of the cooling circuit of less than 100 CFU/ml is achieved. However, at the time of the effective filing of the claimed invention, one of ordinary skill would have recognized that the given concentration is a relatively low level at steady state, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention been obvious that the achieved concentration is less that 100 CFU/ml.
Additional Disclosures Included: Claim 11: The achieved legionellae limit value in the water of the cooling circuit is less than 70 CFU/ml (claim 9 analysis); Claim 12: The achieved legionellae limit value in the water of the cooling circuit is less than 40 CFU/ml (claim 9 analysis); Claim 13: The achieved legionellae limit value in the water of the cooling circuit is less than 10 CFU/ml (claim 9 analysis); Claim 14: The achieved legionellae limit value in the water of the cooling circuit is less than 1 CFU/ml (claim 9 analysis); Claim 15: The bacteria are added to the water of the cooling circuit upstream of and/or within the separation device, and/or upstream of the cooling tower ([0017], [0047]-[0050], Fig.); Claim 16: The method further comprises:
adding nutrients to the water of the cooling circuit upstream of the separation device and/or upstream of the cooling tower to promote growth of the added bacteria ([0010]-[0016]); Claim 20: The method further comprises passing the water within the separation device through a settling basin, a clarifying basin and/or a filtration purification device ([0047]-[0050], [0052], [0053], Fig.); and Claim 21: The bacteria have different milieu requirements, namely anaerobic, anoxic and/or aerobic ([0024]).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Flettner et al. (US20120234753) in view of Snell (US20060124560).
Regarding claim 10, Flettner discloses the method of claim 9, except wherein the industrial plant is a hot rolling mill.
The particular industrial plant may be a source for the legionellae, or merely a plant where the industrially employed water requires cooling.
Snell discloses a filter aid and a method of using the same are disclosed that effectively removes contaminants from water-based metal forming liquids used in aluminum forming, rolling and other metal working processes (Abstract). Metal working fluids, which can be water based, are commonly used for purposes of cooling, lubricating and/or cleaning metal during metal working processes such as cutting, grinding, forming, rolling, and the like ([0003], [0005]). One example of the metal working process is aluminum hot rolling mill ([0031]).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to employ the legionellae eliminating method in a hot rolling mill since this is a typical industrial plant that produces effluent water that may require cooling circuit and that could produce undesired bacteria ([0006], [0007]).
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Flettner et al. (US20120234753), as applied to claim 16 above.
Regarding claims 17 and 18, Flettner discloses or suggests the method according to claim 16, except further comprising:
reducing a ratio of added bacteria to added nutrients over time.
This implies decreasing the proportion of bacteria relative to nutrients over time. Examiner interprets this as less bacteria is added compared to nutrients or that no more bacteria is added after a period of time.
Since the bacteria colonies store and utilize nutrients (0010]), and would have already grown in size due to previously added nutrients, and would have thereby caused the elimination of legionella over time, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to consider adjusting the bacterial content, and to for example reduce a ratio of added bacteria to added nutrients, since the ratio of added bacteria to necessary nutrients for achieve the desired legionella elimination is expected to change over time.
Additional Disclosure Included: Claim 18: The bacteria and/or the nutrients are provided in form of a granulate and/or a suspension and/or are added to the water of the cooling circuit in form of an aqueous solution ([0048], where at least some bacteria may be added I the form of an aqueous solution; alternately, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the bacteria in any suitable form that is convenient to the operator, as a matter of design choice).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Flettner et al. (US20120234753), as applied to claim 16 above, in view of Jones et al. (US20130126427).
Regarding claim 19, Flettner discloses or suggests the method according to claim 16, except wherein the bacteria and/or the nutrients are provided in form of a granulate and/or a suspension, and wherein the bacteria in the granulate and/or the suspension are lyophilized bacteria.
Jones discloses a system for the reduction of contaminants from water or wastewater using bacteria (Abstract, 0003]). In an embodiment, a method of preparing bacteria capable of reducing contaminants in a wastewater stream includes treating bacteria in a succession of growth mediums that include increasingly higher concentrations of inorganic salts (0008]). Jones teaches that Preserving bacteria in particles or immobilizing bacteria on hydrophobic substrates may allow the preserved bacteria to be more resilient to environmental stress and/or toxins and/or may reduce cell mortality upon revival ([0143]). One process for preservation is
lyophilization, which produces lyophilized bacteria with longer shelf lives (Id.).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to employ lyophilized bacteria to allow for a potentially longer bacteria shelf life such that the bacteria will be available for the expected use.
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 claims at issue 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); and 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 9-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 16, 19, 20, 21, and 26 of copending Application No. 18/249,153 (153-application). Although the claims at issue are not identical, they are not patentably distinct from each other because the applications recite the same or similar limitations relating to adding bacteria capable of degrading organic substances to a cooling circuit of an industrial plant, combined with separation and cooling steps. Although the ‘153-application does not mention the reduction of legionellae, one could view this as tantamount to an intended use. The 153-application may have additional steps but the claimed features significantly overlap .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAYDEN BREWSTER/Examiner, AU 1779