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 .
Amendments Received
Amendments to the claims were received and entered on May 26, 2026.
Status of Claims
Claims 2-9, 11, 13, and 15 are cancelled.
Claims 1, 10, 12, 14, and 16 are currently pending and under consideration.
Priority
The present application claims status as a 371 (National Stage) of PCT/EP2021/084781 filed on 12/08/2021 and claims priority to European patent application EP20212569.6, filed on 12/08/2020. Acknowledgment is made of applicant's claim for foreign priority and papers submitted under 35 U.S.C. 119 (a)-(d). The present application and all claims are being examined with an effective filing date of 12/08/2020. In future actions, the effective filing date may change due to amendments or further review of priority documents.
Withdrawn Rejections
In view of Applicant’s cancellation of claims 2-9, 11, 13, and 15, all rejection of claims 2-9, 11, 13, and 15 re now moot and are hereby withdrawn.
In view of Applicant’s amendments, rejection of claim 10 under 35 USC § 112(b) is hereby withdrawn.
In view of Applicant’s amendments, rejection of claim 1-2, 4-7, and 9-14 under 35 USC § 112(a) is hereby withdrawn.
In view of Applicant’s amendments, rejection of claim 1-2, 4-8 and 11-15 under 35 USC § 102 by Noorman is hereby withdrawn.
New Rejections Necessitated by Amendment
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 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.
Claims 1, 12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Noorman, Hendrick Jan (EP3715464A1, herein “Noorman”, cited in the IDS) and Ma et al. (Electrochemical conversion of CO2 to useful chemicals: current status, remaining challenges, and future opportunities, Current Opinion in Chemical Engineering Vol 2, Iss 2, May 2013, pg. 191-199, cited in a previous office action).
Regarding claim 1, Noorman discloses a method for cultivating a microorganism capable of utilizing an organic feedstock wherein CO₂ from one or more bioreactors is captured (in a capturing unit) and reduced to an organic feedstock in a reduction unit (paragraphs 0003 and claim 1). Furthermore, the “CO₂ capturing unit” is a physical means suitable for capturing CO₂ from the off-gas of the one or more bioreactors, thereby teaching the recovery and recycling of carbon dioxide for further reduction (paragraph 0004). Additionally, Noorman teaches the microorganisms “comprise at least one polynucleotide coding for a compound of interest or a compound involved in the production of a compound of interest by the cell”, wherein the compound of interest can be any biological compound, including a biopolymer (para 0023), wherein the biopolymer may be a polypeptide, or protein (para 0026) thereby meeting the limitation of producing a fermentation product, wherein said fermentation product is a protein. With respect to the microorganism, Noorman teaches that the preferred microorganism includes bacteria, specifically Methylobacterium (paragraphs 0016 and 0020). Methylobacterium is a methylotrophic bacterium (instant specification, page 4, lines 13-20). With respect to the “organic feedstock,” Noorman teaches it is preferably a CO₂-derived energy carrier, including methanol (paragraph 0008 and claim 2), corresponding to the claimed C1 compound (methanol). Therefore, Noorman teaches reducing CO₂ to a C1 compound, contacting the C1 compound with a methylotrophic microorganism (Methylobacterium), fermenting the C1 compound to produce a fermentation product, and recycling CO₂ from the bioreactor to a reduction unit. Furthermore, Noorman teaches that capturing CO₂ from the off-gas of the one or more bioreactors and reducing the captured CO₂ to organic feedstock in a reduction unit is preferably carried out by electrochemical reduction of CO2 (para 0013). However, Noorman does not expressly teach that oxygen is co-generated during electrochemical reduction of carbon dioxide, and that the oxygen is used to maintain aerobic conditions during the fermentation of the methanol with the methylotrophic microorganism.
Ma et al. teaches that, in low-temperature CO₂ electroreduction (CO₂RR) systems, CO₂ reduction occurs at the cathode while the oxygen evolution reaction (OER) occurs at the anode, thereby producing oxygen as the coupled half-reaction (page 191, right column, second full paragraph; page 192, left column, second full paragraph). Thus, Ma et al. teaches that oxygen is inherently co-generated during electrochemical reduction of CO₂. Accordingly, Ma et al. teaches that oxygen is inherently produced whenever electrochemical reduction of CO₂ is performed.
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, to modify the method of Noorman, in view of Ma et al.’s teaching that oxygen is inherently co-generated during electrochemical reduction of carbon dioxide, and to utilize at least a portion of the co-generated oxygen to maintain aerobic conditions during fermentation. A person of ordinary skill in the art would have recognized that the oxygen co-generated during electrochemical reduction of carbon dioxide constitutes an available internal process stream that may be used to support the aerobic fermentation already taught by Noorman, thereby improving utilization of internally generated process streams and further integrating the electrochemical CO₂ reduction process with the fermentation process. Such a modification would have been a predictable use of known electrochemical principles to improve process integration and overall system efficiency, with a reasonable expectation of success in view of Ma et al.’s disclosure of oxygen co-generation in electrochemical CO₂RR cells. Therefore, the invention as a whole would have been prima facie obvious before the effective filing date of the claimed invention.
Regarding claims 12 and 16, as described above, Noorman teaches that the microorganisms comprise at least one polynucleotide coding for a compound of interest or a compound involved in the production of a compound of interest by the cell. Noorman further teaches that the compound of interest can be any biological compound, including a biopolymer (para 0023), wherein the biopolymer may be a polypeptide, or protein (para 0026). It is noted that even the simplest proteins possess carbon backbones comprising more than 5 carbons. Furthermore, Noorman discloses several enzymes, including oxidoreductase and catalase, as the polypeptide produced in the method above – both of which are well known in the art to have carbon backbones in the hundreds. Also described above is the microorganism of Noorman is preferably Methylobacterium, which is a unicellular microorganism. It is noted that the instant specification provides the following definition for a single-cell protein: "Single cell protein" or "microbial protein" refers to a protein derived from organisms that exist in the unicellular, or single cell, state. This includes unicellular bacteria, yeasts, fungi or eukaryotic single cell organisms such as algae” (Specification, pg. 11, lines 20-23). Thus, a protein derived from Methylobacterium, as taught by Noorman above, satisfies the limitation of a single-cell protein, in view of Applicant’s definition as set forth in the instant specification.
Regarding claim 14, Noorman discloses an apparatus for producing a fermentation product, as described above, wherein said apparatus comprises a reduction unit for reducing carbon dioxide, one or more bioreactors for cultivating the methylotrophic microorganism, a capturing unit for capturing (i.e., recovering) carbon dioxide from the one or more bioreactors, and an electrolysis unit for the electrolysis of water. Noorman further discloses one or more conduits for transport of the organic feedstock (i.e., the C1 compound) and gases (e.g., carbon dioxide, H2, oxygen) ) and further discloses one or more conduits for introducing H₂ and/or O₂ into the one or more bioreactors (para 0057, 0060 and Fig. 1), thereby teaching a duct configured to transport oxygen to the fermentation vessel.
Maintained/Modified Rejections Necessitated by Amendment
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Noorman and Ma et al., as applied to claim 1 above, and further in view of Follonier et al. (Pressure to kill or pressure to boost: a review on the various effects and applications of hydrostatic pressure in bacterial biotechnology, Appl Microbiol Biotechnol (2012) 93:1805–1815, cited in a previous office action).
The teachings of Noorman and Ma et al., as they apply to claim 1, have already been discussed above and are being relied upon. Noorman does not expressly teach performing fermentation or CO2 recovery at pressures above atmospheric pressure.
Follonier et al. teaches that applying elevated pressure (up to ~10 bar) in microbial bioprocesses can enhance oxygen-transfer rates, improve gas–liquid mass transfer, and boost productivity of aerobic cultures (Abstract). Thus, Follonier et al. suggests performing microbial fermentation at pressures above atmospheric pressure to improve oxygen transfer, gas-liquid mass transfer, and overall aerobic fermentation performance.
An invention would have been obvious to a person of ordinary skill in the art if some teaching in the prior art would have led that person to combine prior art reference teachings to arrive at the claimed invention. Before the effective filing date of the claimed invention, a person of ordinary skill in the art would have been motivated to perform the fermentation process of Noorman, as modified in view of Ma et al., at a pressure above atmospheric pressure as taught by Follonier et al. because Follonier teaches that elevated pressure improves oxygen transfer, gas-liquid mass transfer, and overall productivity of aerobic microbial cultures. A person of ordinary skill in the art would have recognized that these same benefits would be expected in Noorman’s aerobic fermentation process while simultaneously facilitating recovery of the CO₂ produced during fermentation for recycle to the reduction step, thereby improving the efficiency of the integrated carbon recycling process. There is a reasonable expectation of success, because Follonier et al. discloses the beneficial effects of pressures above atmospheric pressure on microorganisms. Therefore, the invention as a whole would have been prima facie obvious before the effective filing date of the claimed invention.
Response to Arguments for Prior Art Rejections
In the response filed on May 26, 2026, Applicant argues that Noorman already teaches supplying oxygen generated by water electrolysis to maintain aerobic conditions and therefore provides no motivation to utilize oxygen co-generated during electrochemical reduction of carbon dioxide. Applicant further argues that Ma is directed to carbon dioxide conversion rather than oxygen supply for fermentation and does not suggest integrating the electrochemical reduction process with fermentation in the manner claimed. Applicant additionally contends that the rejection relies on impermissible hindsight because the claimed invention is directed to an integrated carbon dioxide-to-fermentation process architecture rather than merely substituting one oxygen source for another.
Applicant’s arguments have been fully considered but are not persuasive for the following reasons.
Applicant’s argument that Noorman already provides oxygen through water electrolysis is not persuasive because obviousness does not require that the prior art lack a workable oxygen source. Noorman teaches an aerobic methanol fermentation process requiring oxygen, while Ma teaches that electrochemical reduction of carbon dioxide inherently co-generates oxygen at the anode. One of ordinary skill in the art would have recognized that the co-generated oxygen disclosed by Ma constitutes an available oxygen source that could be utilized to maintain the aerobic conditions required by Noorman’s fermentation process, thereby making use of a product already generated by the electrochemical reduction process.
Applicant’s argument that Ma is directed only to carbon dioxide conversion is likewise unpersuasive. Although Ma focuses primarily on electrochemical reduction of carbon dioxide, Ma expressly teaches that oxygen evolution occurs at the anode during that process. Thus, Ma teaches the very oxygen generation relied upon in the rejection. The rejection does not rely on Ma as teaching fermentation, but rather for its teaching that oxygen is co-generated during electrochemical reduction of carbon dioxide.
Finally, the rejection does not rely on hindsight reconstruction. Rather, the rejection is based on the express teachings of Noorman and Ma and the rationale that a person of ordinary skill in the art would have found it obvious to utilize the oxygen inherently produced during Ma’s electrochemical reduction process to satisfy the oxygen demand of Noorman’s aerobic fermentation process. The fact that Noorman also discloses water electrolysis as an oxygen source does not teach away from, criticize, or otherwise discourage utilizing another known source of oxygen produced within the integrated process.
Conclusion
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 NAGHMEH NINA MOAZZAMI whose telephone number is (703)756-4770. The examiner can normally be reached Monday-Friday, 9:00-5:00.
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/NAGHMEH NINA MOAZZAMI/Examiner, Art Unit 1652
/ROBERT B MONDESI/Supervisory Patent Examiner, Art Unit 1652
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