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 .
Response to Arguments
The Amendment filed 23APR2026 has been entered. Applicant’s amendments have overcome each and every claim objections previously set forth in the Non-Final Office Action mailed 24OCT2025.
Applicant's arguments filed 23APR2026 have been fully considered but they are not persuasive.
Regarding the carrier, ROWSELL teaches a clay (abstract), which is may be a carrier for the microorganisms C2/L66-67). Independent claim 2 claims that a clay may be a carrier.
Regarding the inoculation and biofilm, see the explanation below.
Product-by-Process Claims
Note that product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. (See MPEP §2113). Claims 2-5,11-12,51-54 are interpreted as product-by-process claims and will be examined upon the merits of such claims (note “microbial species that are selected for degrading hydrocarbons […] inoculated on particles”).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 51-54 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 51, the specification as originally filed does not describe “the enriched hydrocarbon-degrading microbiome comprises a plurality of further microbial species that do not degrade hydrocarbons”.
Any negative limitation or exclusionary proviso must have basis in the original disclosure. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. See MPEP 2173.05(i).
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4,11-12 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 ROWSELL (US 5342525) in view of BARBATO et. al. 2019 “Cultivable hydrocarbon degrading bacteria have low phylogenetic diversity but highly versatile functional potential”.
Regarding claims 2-3, ROWSELL teaches a method for aiding microbial degradation of spilled oil (title) including a composition comprising:
a plurality of enriched hydrocarbon-degrading microbiome aggregates that comprise a plurality of microbial species that are selected for degrading hydrocarbons (oil or hydrocarbon-consuming microorganisms with clay carriers that are elective cultures with screening for hydrocarbon digestion; C1/L25-26,42-43,C2/L19-22,66-67; C16/L38-44);
a carrier (e.g. a clay; C2/L66-67); and
a fluid medium (e.g. a liquid carrier or medium; C10/L25-27,49-51) wherein the carrier and the plurality of enriched hydrocarbon-degrading microbiome aggregates are suspended (a clay/microorganism formulation including a liquid carrier or medium will be a suspension or slurry, C17/L25, as small particles in a liquid such as water C11/L5-12; C13/L31-33,58-60);
whereby the composition is a dynamic microbiome composition wherein numbers of a plurality of microbial species are increasing and/or decreasing (note that live cultures are constantly growing and/or dying; see also C6/L5-6).
While ROWSELL does not specify a biofilm, it is noted that many microorganisms attach to solid surfaces (such as clay particles) and form biofilms, especially in hostile conditions including pollutants (see BARBATO 2019 P46/right C/fourth paragraph). If not apparent that ROWSELL’s microbiome aggregates include a biofilm, it is obvious to one having ordinary skill in the art to provide for a biofilm to allow for easier and more efficient pollutant degradation (BARBATO 2019 P46/right C/fourth paragraph). The references are combinable, because they are in the same technological environment of microbial bioremediation. See MPEP 2141 III (A) and (G).
Note that the limitation “the plurality of microbial species are inoculated on particles of the particulate carrier” sets forth a method of making the composition. Note that the claims are directed towards a composition, not a method of making the composition (see product-by-process claims above).
Whether the microbes are inoculated on particles of the particulate carrier or not, generally microorganisms will attach to substrates such as clays (see also BARBATO P46/left C/ “Coherently with its capability to grow attached to oil sorbent materials” ... “A. venustensis and A. dieselolei were isolated from different sites, both from seawater and sediments”; P49/right C/ “bacteria able to move reaching the HC source and enrich those able to attach to the substrate growing in the form of biofilm”).
Regarding claim 4, ROWSELL teaches the a C5-40 hydrocarbon (e.g. bioremediated cyclohexane, which is a C6 hydrocarbon; C5/L43-49).
Regarding claim 11, ROWSELL teaches an enriched hydrocarbon-degrading microbiome comprises e.g. Pseudomonas (abstract).
Regarding claim 12, ROWSELL teaches the fluid medium is a volume of a marine water (C21/L46-50).
Regarding claims 51-54, ROWSELL teaches the enriched hydrocarbon-degrading microbiome comprises a plurality of microbial species selected to grow, survive, and degrade hydrocarbons (C22/L5-8). ROWSELL’s microbial species are selected as a mixture of microorganisms to obtain a broad spectrum of degradability (C16/L67-C17/L13). ROWSELL is silent as to the microbiome comprising a plurality of further microbial species that do not degrade hydrocarbons.
However, one having ordinary skill in the art would understand this may be the case depending on how the selection is made and may also be advantageous when mixed cultures of different origin and contamination history is applied with different enrichment strategies to enhance their metabolic diversification (BARBATO abstract; see also BARBATO Left C/first full paragraph starting with “In the perspective to develop enrichment strategies” and the enrichment method of “2.1. Microcosm enrichments and bacteria isolation”). See also above regarding microorganisms producing biofilm.
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the composition of ROWSELL to including other microorganism that do not degrade hydrocarbons as taught by BARBATO and generally known in the art. The references are combinable, because they are in the same technological environment of separations. See MPEP 2141 III (A) and (G).
Claim(s) 5 is 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 ROWSELL (US 5342525) in view of BARBATO et. al. 2019 “Cultivable hydrocarbon degrading bacteria have low phylogenetic diversity but highly versatile functional potential” and evidenced by EPA EDBAC 2011.
Regarding claim 5, ROWSELL teaches e.g. a surfactant (e.g. alkyl dimethyl benzyl ammonium chloride; C9/L4-5; see EPA EDBAC P5: “The ADBAC (Alkyl Dimethyl Benzyl Ammonium Chlorides) Category chemicals are similar to other cationic surfactants”).
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
KUMAR (US 9272933) discloses a bio-augmentation composition and use thereof for improving efficiency of effluent treatment in hydrocarbon processing plant including microorganisms capable of degrading hydrocarbons are developed by a selective enrichment technique including a microbial mixed consortium.
Telephonic Inquiries
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 LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777
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