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 .
Applicant’s amendment has been considered and entered for the record.
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.
Claims 1-8, 11 and 15-16 are rejected under 35 U.S.C. 102a1 as being anticipated by Wensel et al. (US 2021/0238519 A1 – hereafter ‘519).
‘519 discloses a bioproduct manufacturing system that includes a hollow-fiber membrane (Abstract) that includes the following limitations for claim 1:
“A temperature controlled biological growth surface”: ‘519 discloses a hollow fiber growth surface (Fig. 2; Fig. 3; [0041]) that is temperature controlled by a heating element ([0057]).
“a temperature source in thermal communication with the biomass growth surface”: ‘519 discloses a heating element such as an electrical heater ([0057]) that is in thermal communication with the growth surface.
“the temperature source is configured to heat or cool the biomass growth surface to a temperature range that is higher or lower than a surrounding medium.”: the electrical heater of ‘519 is configured to heat the biomass to a temperature range that is higher than a surrounding medium. See MPEP §2114.
For claim 2, ‘519 discloses that the biomass or algae is in contact with the growth surface ([0041]).
For claim 3, ‘519 uses cyanobacteria which is a phototrophic, prokaryote ([0030]).
For claim 4, the biomass of ‘519 grows on the growth surface ([0041}).
For claim 5, ‘516 discloses using a hollow-fiber membrane ([0041]).
For claim 6, the hollow-fiber membrane of ‘519 has a cylindrical shape, i.e. a lumen ([0023]).
For claim 7, ‘519 adds a film to the membrane ([0068]) that is being interpreted as the biofilm of the instant application.
For claim 8, ‘519 discloses that the temperature control element can be a copper wire ([0057]) which is a resistive heat element.
For claim 11, ‘519 discloses using a cooling water coil ([0036]) which reads on a cold reservoir of water.
For claim 15, the lumen of ‘519 is configured to support a biomass and is made of a hydrogel ([0054]).
For claim 16, the hydrogel of ‘519 is configured to come in contact with the biomass ([0054]).
Therefore, ‘519 meets the limitations of claims 1-8, 11 and 15-16.
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 9, 10, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wensel et al. (US 2021/0238519 A1 – hereafter ‘519) in view of Paripati et al. (US 2015/0376833 A1 – hereafter ‘833).
For claim 9, ‘519 (Wensel) differs from claim 9 regarding a radiation source as the source for heating the biomass growth surface, but does disclose that any suitable heat source can be used ([0057]).
‘833 (Paripati) discloses a system for the treatment of a biomass (Abstract) that for claim 9 includes using an infrared heating system ([0077]) to heat the biomass. The wavelengths used may be the near IR of about 0.75 to 1.4 mm , the mid IR with wavelengths of about 3-8 mm or the far IR with wavelengths of about 15-1000 mm([0109]). This allows for the biomass to be maintained at a temperature range.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the radiation source of ‘833 within ‘519 in order to heat the biomass. The suggestion for doing so at the time would have been in order to maintain the biomass at a temperature range ([0077]).
‘519 differs from the limitations of claim 10.
For claim 10, ‘833 discloses that the biomass is made of smaller sized particles ([0112]) that is fully capable of being heated by the radiation.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the particles of ‘833 within ‘519 in order to form the biomass. The suggestion for doing so at the time would have been in order to maintain the biomass at a temperature range ([0077]).
‘519 differs from the limitations of claims 12 and 13.
For claims 12 and 13, ‘833 discloses using a thermocouple ([0059]; i.e. the temperature controller).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the temperature sensor of ‘833 within ‘519 in order to heat the biomass. The suggestion for doing so at the time would have been in order to maintain the biomass at a temperature range ([0077]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wensel et al. (US 2021/0238519 A1 – hereafter ‘519) in views of Paripati et al. (US 2015/0376833 A1 – hereafter ‘833) and Applegate et al. (US 2005/0133443 A1 – hereafter ‘443).
‘519 differs from claim 14 regarding a PID controller and a temperature sensor. ‘833 discloses a microcontroller ([0174]) with sensors connected to the controller ([0093]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the controller and temperature sensor of ‘833 within ‘519 in order to heat the biomass. The suggestion for doing so at the time would have been in order to maintain the biomass at a temperature range ([0077]).
‘833 does not disclose a PID controller.
‘443 discloses a wastewater treatment (Abstract) that for claim 14 includes using a control that may be a proportional-integral-derivative control ([0026]). This allows the operation to be automatically use an algorithm to control the process.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to include the PID controller of ‘443 within modified ‘519 in order to operate the system. The suggestion for doing so at the time would have been in order to automate the process ([0026]). See also MPEP §2144.04 III.
Response to Arguments
Applicant's arguments filed 09/10/2026 have been fully considered but they are not persuasive. On the bottom of page 6 to the top of page 7, Applicant argues that the present invention is used for the selectively heating of a biomass which is a feature not claimed in the current claim set. Moreover, this is drawn to the intended use of the claimed invention which does not structurally define the claimed invention over the prior art. See MPEP §2114.
In the first full paragraph on page 7, Applicant argues that Wensel does not directly heat the growth surface. This is not found persuasive as Wensel does heat the surface and the requirement that the surface has to be directly heated is a feature relied upon, but not claimed.
With regards to the arguments in the second paragraph on page 7, these appear to be drawn to the manner in which the device is operated which does not structurally define the claimed invention over the prior art. See MPEP § 2114.
With regards to the argument that Wensel does not result in an improvement, this is not found persuasive as the reference teaches all the elements of the claimed invention.
Applicant’s argument on page 8 regarding the applied reference of Paripati does not teach the temperature controlled surface and the biomass. This is not found persuasive since, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Moreover, Paripatic was applied due to the teaching of the IR heating and would have been obvious to combine with Wensel since this is a) a common heating method and b) that Wensel discloses other heating methods may also be used with the cartridge.
It should also be noted that “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.”Id. at ___, 82 USPQ2d at 1396.
Therefore, claims 1-16 stand rejected.
Allowable Subject Matter
Claims 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: For claim 17, the prior art fails to teach or fairly suggest a method for removing one or more of nitrogen, carbon or phosphate that includes the following steps: heating the temperature controlled biological growth surface to within the temperature range in order to allow the organism to remove the one or more of nitrogen, carbon, or phosphate from the medium, wherein the biological growth surface is heated to a temperature than is higher than the medium; or cooling the temperature controlled biological growth surface to within the temperature range in order to allow the organism to remove the one or more of nitrogen, carbon, or phosphate from the medium, wherein the biological growth surface is heated to a temperature that is lower the medium.
For claim 18, the prior art fails to teach or fairly suggest a method for converting one or more of nitrogen, carbon or phosphate that includes the following steps; heating the temperature controlled biological growth surface to within the temperature range in order to allow the organism to convert the one or more of nitrogen, carbon, or phosphate from the medium ,wherein the biological growth surface is heated to a temperature that is higher than the medium; or cooling the temperature controlled biological growth surface to within the temperature range in order to allow the organism to convert the one or more of nitrogen, carbon, or phosphate from the medium, wherein the biological growth surface is heated to a temperature than is higher lower the medium.
Claims 19 and 20 would be allowable for the same reasons as claim 17.
The closest prior art is Wensel et al. (US 2021/0238519 A1) which discloses a bioproduct manufacturing system that includes a growth surface and a heater. However, Wensel does not teach or suggest the steps of claims 17 and 18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pickett et al. (US 2015/0034552 A1) discloses a biologically active water treatment systems.
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 MICHAEL L HOBBS whose telephone number is (571)270-3724. The examiner can normally be reached Variable, but generally 8AM-5PM M-F.
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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.
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/MICHAEL L HOBBS/Primary Examiner, Art Unit 1799
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