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 claims 19-20 in the reply filed on 3/19/2026 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)).
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Claim Rejections - 35 USC § 112
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.
Claims 1 and 19-20 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.
Claim 1 recites “the microbially induced carbonate precipitation component.” There is insufficient antecedent basis for this limitation in the claims. It is noted that while claim 1 is not being examined on its merits, Examiner has included all wording of claim 1 in claim 19 making the antecedent basis issue applicable.
Claim 19 is a method claim but is dependent on a non-elected apparatus claim. Further, on allowance of the method claim, apparatus claim 1 would be cancelled due to being a non-elected invention and claim 19 would be dependent on a cancelled claim.
As claim 19 is dependent on the apparatus of claim 1, the analysis of apparatus claims versus method claims under anticipation and obviousness is different. Limitations directed to how an apparatus operates or what the apparatus works upon are given little to no patentable weight whereas in a method claim, such limitations are given full patentable weight. Therefore, it is unclear if claim 19 is attempting to include merely the apparatus of claim 1 without reference to any method or operational steps/results included in the intended use limitations, or if claim 19 is attempting to include all method and operational steps/results, such as the pH values of the product streams and the fluid being treated. For the purposes of examination, it will be assumed that all language of claim 1 is present in claim 19 providing a basis that the method includes the apparatus operating at the specific pH values of the product stream and treating the claimed fluid being worked upon.
Allowable Subject Matter
Claims 19-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: It is noted that various portions of the claimed method are known in the art. Such as electrodialysis cells having a bipolar membrane are known to be used treat seawater to remove carbon dioxide therefrom (Xiang et al. US 2022/0144673), that in removing carbon dioxide from flue gases, the removed carbon dioxide can be used in photoreactors for carbon dioxide sequestration (Kumar et al. Development of suitable photobioreactors for CO2 sequestration addressing global warming using green algae and cyanobacteria in IDS), and that carbon dioxide can be sequestered via microbial precipitation of carbonate material (Achal et al. A review of microbial precipitation for sustainable construction in IDS). However, no prior art combines all elements of the claimed invention as it applies to treating seawater to capture carbon dioxide via an electrodialysis cell providing the product streams at the claimed pH, the photobioreactor as defined by Applicant treating only the acidified seawater product stream, and a microbially induced carbonate precipitation reactor that provides a carbonate precipitation step that is fluidly connected to both the acidified seawater product stream and the basified seawater product stream. Further, it is Examiner’s position that one skilled in the art would not arrive at the claimed invention absent impermissible hindsight as the combination includes elements that combine various known ways of carbon capture in various fluids but are different enough in application and function that one skilled in the art would not consider them to be equivalents. Therefore, the method is considered to be allowable over the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER KEYWORTH whose telephone number is (571)270-3479. The examiner can normally be reached 9-5 MT (11-7 ET).
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, Jennifer Dieterle can be reached at (571) 270-7872. 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.
/PETER KEYWORTH/Primary Examiner, Art Unit 1777
Prosecution Insights