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 .
Election/Restrictions
Applicant’s election of Group I, Claims 1-14 in the reply filed on 3/10/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/26.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/17/23 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the concavity of claim 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because Figure 2 appears to be missing a label as an indicator line extends above the feed mixing but unlike the “enriched feed” line there is no label. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 13 recites "means for further processing the concentrated living microorganism material into amino acids, peptides and/or proteins" which is interpreted under 35 USC 112(f) as stated above. The specification and drawings provide no indication of what structures are used for the further processing into amino acids etc. At most the specification discloses sending the concentrated living microorganism material to a feed mixer for adding feed ingredients, but does not mention if this mixer is also used to further process the concentrated living microorganism material into amino acids, peptides or proteins. There is no other disclosure as to what constitutes the mechanism of “further processing” and therefore the claim fails to comply with the written description requirement.
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.
Claim 12 and 13 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.
Regarding claim 12, it is unclear whether the dewatering separator of claim 1 is required or not. The claim recites a pipe for transporting liquid to a dewatering separator but does not positively recite the dewatering separator as part of the system. As claim 12 recites functional limitations of the dewatering separator it appears to require the dewatering separator. Therefore, it is unclear whether the fermenter tank and claimed pipes defines the meets and bounds of the invention alone or if the dewatering separator is required.
Claim limitation “means for further processing the concentrated living microorganism material into amino acids, peptides and/or proteins” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification and drawings provide no indication of what structures are used for the further processing into amino acids etc. At most the specification discloses sending the concentrated living microorganism material to a feed mixer for adding feed ingredients, but does not mention if this mixer is also used to further process the concentrated living microorganism material into amino acids, peptides or proteins. There is no other disclosure as to what constitutes the mechanism of “further processing”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
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.
Claim(s) 1, 3-14 is/are rejected under 35 U.S.C. 102a1 as being anticipated by SILVERMAN (US 2017/0298315).
Regarding claim 1, SILVERMAN discloses a fermentation system using a gaseous substrate (dependent on gas supply) [0001] comprising:
A liquid distributor 130 and gas distributor 132 (inlet pipe) for feeding of growth medium and gas, the pipes inherently having a diameter (D1), connected to fluid & gas movers 216, 218 (adjustable inlet pump members) that allow a velocity through the inlets (V1) [0094-0098, Fig 2];
A fermenter vessel 108 (fermenter tank) having a substantially cylindrical volume and a diameter (D2), filled with liquid media [Fig 1, 3] and having a liquid distributor 130 and one or more gas distributors 132 (plurality of feeding nozzles) arranged at the top (nozzles are in upper portion) that receive and distribute media and gas from the inlets with a forced downward flow determined by the pump 216, 218 (allowing given velocity of V2 from top to bottom of tank) [Fig 2, 0096];
A cylindrical hollow fluid conduit 102 (outlet pipe) having a diameter (D3), the conduit extending from the bottom towards the top of the tank; encircled by the distributors (nozzles) at the top of the tank [Fig 1, 3] which allows a forced upward flow (velocity V3) of liquid media upward through the conduit [0096] in which the downward flow rate can be controlled to increase residence time in the downward path (is capable of being higher than the driven flow of the liquid media V2) [0148];
A discharge fluid connection 138 (transport pipe) having a diameter (D4) less than that of the conduit 102 (D3) and therefore would have a higher velocity, the connection transports liquid media to a separation subsystem (dewatering separator) and thereby obtaining a concentrated living microorganism material for further processing [Fig 2, 0158].
Regarding claim 3, It is noted the use of the concentrated living microorganism material produced by the system is considered to be an intended use of the product of the system and does not further limit the claimed structure. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
Regarding claim 4, SILVERMAN discloses at least a portion of the liquid effluent that is separated can be recycled to the fermenter tank as a liquid media 202 [0107].
Regarding claim 5, SILVERMAN discloses a variety of microorganisms that can be cultivated including methanotrophic and methylotrophic organisms [0013].
Regarding claim 6, SILVERMAN discloses the gas in the inlet pipe can comprise methane or oxygen [0097].
Regarding claim 7, SILVERMAN discloses the gas distributors (nozzles) can comprise a pipe containing a number of orifices which produce numerous bubbles, the distributors are positioned within the downward flow path (extending down into the liquid media) [Fig 3, 0090-0092].
Regarding claim 8, It is noted the limitation reciting adjustment of the nozzles to provide an optimum gas to liquid depending on the microorganism being fermented is considered to be a functional limitation and does not recite any further limitations to the claimed structure. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
Additionally, SILVERMAN discloses adjusting the gas distributor 132 (nozzle) to provide various sizes of bubbles [0092] which would be capable of providing the optimal gas to liquid as required by the specific organism used in the device.
Regarding claim 9, SILVERMAN discloses that the dimensions of the various components including, the diameters of the conduits, tanks, etc. can range based on desired properties of operation [0070, 0080, 0089]. It is noted the claim limitation does not recite any specific diameters nor any ratios of diameters that would further limit the claimed structures.
Regarding claim 10, SILVERMAN discloses the backpressure subsystem 230 can include a pressure reducing valve (degassing valve) connected to the discharge connection 138 atop the inner cylindrical conduit 102 (at an end of)[Fig 2, 3, 0103].
Regarding claim 11, SILVERMAN discloses the bottom can be dished (concave) [Fig 6, 0066, 0143].
Regarding claim 12, It is noted the liquid content of the product of the separator that the fermenter system is used with is considered to be an intended use and does not further limit the claimed structure. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
Regarding claim 13, SILVERMAN discloses microorganisms conveyed out of the fermenter can be sent for subsequent processing into one or more desired other products [0108]. As “means for” language was interpreted under 35 USC 112f as stated above and neither the claim nor specification provide any structural components that function as said “means” as stated in the above 35 USC 112a/b rejections the system disclosed by SILVERMAN is considered to meet all the claimed structural limitations. It is noted the recitation regarding the contents of the product produced by the further processing and its use as an animal feed are both considered to be an intended use of the product of the system and does not recite any further limitations to the claimed structure. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
Regarding claim 14, SILVERMAN discloses the microorganism is a recombinant microorganism [0015]. It is noted the recitation stating the use of the microorganisms produced by the system is considered to be an intended use of the product of the system and does not recite any further limitations to the claimed structure. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over SILVERMAN (US 2017/0298315) as applied above, further in view of GREER (Pub 2011).
Regarding claim 2, SILVERMAN discloses microorganisms conveyed out of the fermenter can be sent for subsequent processing into one or more desired other products [0108] but does not explicitly disclose it being conveyed to a feed mixer to be blended with feed ingredients.
However, GREER discloses that the by products of fermentation are sent through a solid-liquid separator and a portion of the solids is mixed (conveyed to feed mixer) with distillers’ grains (feed ingredients) which is sold into animal feed markets (creates microorganism enriched feed) [1st paragraph].
It would have been obvious to one of ordinary skill in the art to modify the fermenter system of SILVERMAN to have the concentrated living microorganism material further conveyed to a feed mixer to be blended with feed ingredients as taught by GREER because it allows for a profitable use for the solid wastes of the fermenter system [see GREER “sold into animal feed markets”].
It is noted that the ratio of ingredients in the resulting enriched feed are considered to add only functional limitations without any additional structural limitations. It is well established that a recitation with respect to the manner in which an apparatus is intended to be employed, i.e., a functional limitation, does not impose any structural limitation upon the claimed apparatus which differentiates it from a prior art reference disclosing the structural limitations of the claims. Where the prior art reference is inherently capable of performing the function described in a functional limitation, such functional limitation does not define the claimed apparatus over such art reference, regardless of whether the prior art reference explicitly discloses such capacity for performing the recited function. See MPEP 2114 and 2115.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The additional references cited on the attached PTO 892 disclose the state of the art of the field of applicant’s endeavor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE B HENKEL whose telephone number is (571)270-5505. The examiner can normally be reached M-Th 11-7 EST, Alt. Fridays.
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, Michael Marcheschi can be reached at 571-272-1374. The 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.
/DANIELLE B HENKEL/Examiner, Art Unit 1799
/William H. Beisner/Primary Examiner, Art Unit 1799
Prosecution Insights