DETAILED CORRESPONDENCE
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 6-10, 12, and 14 are pending in the application and are being examined on the merits.
Applicant’s amendment to the claims, filed June 29, 2026, is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Applicant’s amendment to the specification, filed June 29, 2026, is acknowledged.
Applicant’s remarks filed June 29, 2026 in response to the non-final rejection filed March 27, 2026 are acknowledged and have been fully considered.
Claims 1-5, 11, 13, and 15 have been canceled by applicant’s amendment filed June 29, 2026 and objections and rejections previously applied to these claims are withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Specification/Informalities
The objection to the specification is withdrawn in view of applicant’s amendment to address the use of trade names or marks used in commerce.
The specification is objected to as failing to comply with 37 CFR 1.809(d)(4), which requires that for a deposit of biological material, the specification shall contain the name and address of the depository. While the specification discloses the name of the depository at paragraph [0021], the specification does not disclose the address of the depository. Appropriate correction is required.
Claim Objections
The objection to claim 7 is withdrawn in view of applicant’s amendment to claim 7 to recite “The method according to claim 6.”
Claims 6 and 12 are objected to because of the following informalities:
Claims 6 and 12 are objected to in the recitation of “(DSM) Deposit Number” and in the interest of improving claim form, it is suggested that the noted phrase be amended to recite (with markings to show changes made) “(DSM) with Deposit Number.”
Claim 6 is also objected to in the recitation of “separation of biomass and metal-depleted liquid material” and “recovering of metals from biomass” in steps b) and c), respectively, and in the interest of improving claim form and consistency, it is suggested that the noted phrases be amended to recite (with markings to show changes made) “separation of the biomass of the Pseudomonas bacteria and metal-depleted liquid material” and “recovering the biomass of the Pseudomonas bacteria.”
Claim 6 is also objected to in the recitation of “Pseudomonas,” which should be italicized.
Claim 12 is also objected to in the recitation of “the isolated Pseudomonas” and in the interest of improving claim form and consistency, it is suggested that the noted phrase be amended to recite (with markings to show changes made) “Pseudomonas.”
Claim Rejections - 35 USC § 112(b)
The rejection of claims 6-11 under 35 U.S.C. 112(b) as being indefinite because the claims do not set forth steps involved in the process is withdrawn in view of applicant’s amendment to claim 6 to recite active process steps for recovering metals from liquid material.
The rejection of claims 8 and 9 under 35 U.S.C. 112(b) as being confusing in the recitation of “where the is from liquid material streams” is withdrawn in view of applicant’s amendment to claim 8 to recite “where the metal recovery is from liquid material streams.”
The rejection of claims 9, 12, and 14 under 35 U.S.C. 112(b) as being indefinite in the recitation of “for example” in claim 9 and “particularly” in claim 12 is withdrawn in view of applicant’s amendments to delete “for example” in claim 9 and to delete “particularly” in claim 12.
Claim Rejections - 35 USC § 112(a)
The rejections of claims 6-10, 12, and 14 under 35 U.S.C. 112(a) as failing to comply with the written description and enablement requirements are withdrawn in view of applicant’s amendments to claims 6 and 12 to limit the isolated Pseudomonas bacteria to Pseudomonas sp BR8764 deposited at the German Collection of Microorganisms and Cell Cultures (DSM) Deposit Number DSM 33684 and applicant’s statement that Pseudomonas sp BR8764 was deposited and accepted under the terms of the Budapest Treaty, and will be irrevocably and without restriction or condition released to the public upon the issuance of the patent.
Claim Rejections - 35 USC § 101
The rejection of claims 6-10 under 35 U.S.C. 101 is withdrawn in view of applicant’s amendment to claim 6 to recite active process steps for recovering metals from liquid material.
Claims 12 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Applicant’s attention is directed to the "Guidance for Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products”, released on December 16, 2014.
Claim Interpretation: As amended, claims 12 and 14 are drawn to a composition comprising:
(a) the isolated Pseudomonas sp BR8764 deposited at the German Collection of Microorganisms and Cell Cultures (DSM) Deposit Number DSM 33684 in amounts effective to facilitate metal recovery of precious metals and/or platinum group metals;
(b) at least one liquid material;
wherein at least one liquid material (b) is selected from secondary resources, wherein the secondary resource is selected from waste waters from mine drainages, communal or industrial waste waters, process streams from metal refining or recycling processes or biobleaching processes.
Given a broadest reasonable interpretation, claims 12 and 14 encompass a combination of naturally occurring components – a naturally-occurring bacterium, e.g., Pseudomonas sp. BR8764, and a liquid material such as water.
Patent Eligibility Analysis Step 1: The claims are drawn to a composition of matter, which is one of the statutory categories of invention.
Patent Eligibility Analysis Step 2A Prong 1: The claims recite a combination of naturally occurring components, which is considered to be a law of nature or a natural phenomenon (a natural product). There is no indication in the specification or evidence of record that the combination of components has any characteristics (structural, functional, or otherwise) that are different from the corresponding individual components as each occurs in nature. Furthermore, there is no indication in the specification or evidence of record that combining these components changes the structure, function, or other properties of the naturally occurring components. In other words, the overall combination of components does not render the resulting composition different from each of the individual components. Thus, the composition of claims 12 and 14 is not considered to have markedly different characteristics from what occurs in nature, and is considered to be a “product of nature” exception. Accordingly, the composition of claims 12 and 14 is directed to a judicial exception.
Patent Eligibility Analysis Step 2A Prong 2: There are no additional elements recited in the claims beyond the judicial exception.
Patent Eligibility Analysis Step 2B: The claims only recite the products of nature, without more and do not include any additional elements that could add significantly more to the judicial exception.
As such, claims 12 and 14 do not qualify as eligible subject matter.
RESPONSE TO REMARKS: Applicant argues the rejection is obviated by amendment to claim 12 to recite specific liquid materials that are included in the composition, which amounts to more than a naturally-occurring bacterium.
Applicant’s arguments are not found persuasive. Given a broadest reasonable interpretation, the recited “liquid material” in claim 12 encompasses water and for the reasons set forth above, the claimed composition is not markedly different from what occurs in nature and does not qualify as eligible subject matter.
Conclusion
Status of the claims:
Claims 6-10, 12, and 14 are pending.
Claims 12 and 14 are rejected.
Claim 6 is objected to for a formal matter and claims 7-10, which incorporate the limitations of claim 6, are objected to as being dependent upon claim 6.
No claim is in condition for allowance.
THIS ACTION IS MADE FINAL. 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 DAVID J STEADMAN whose telephone number is (571)272-0942. The examiner can normally be reached Monday to Friday, 7:30 AM to 4:00 PM.
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, MANJUNATH N. RAO can be reached on 571-272-0939. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Steadman/Primary Examiner, Art Unit 1656
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