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 .
The Response of 30 July 2025 has been entered.
Claims 1-4 and 29-39 are currently pending.
Election/Restrictions
Applicant’s election of the invention of Group I, claims 1-4 and 29-39, in the reply filed on 30 July 2025 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)).
Claims 1-4 and 29-39 are considered here.
Claim Rejections - 35 USC § 112(b)
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.
Claim 38 is rejected under 35 U.S.C. 112(b) 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 38 recites the limitation "the product of the product stream" in claim 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear what if any specific product is being referred to, or if the limitation implies that the product stream consists of a single product. The rejection can be overcome by amending as follows: "a product of the product stream".
Claim Rejections - 35 USC § 103
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.
Claims 1-4 and 29-39 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Fackler et al., Annual Review of Chemical and Biomolecular Engineering 12 (2021): 439-470 in view of Dunnett et al., Biotechnology for biofuels 1.1 (2008): 13, as evidenced by Handler et al., Industrial & Engineering Chemistry Research 55.12 (2016): 3253-3261.
Regarding claim 1, Fackler teaches a method for producing ethanol via gas fermentation, comprising: providing a gas fermentation system co-located with a carbon source comprising a CO-containing gas; fermenting at least a portion of the carbon source in a bioreactor of the gas fermentation system using at least one C1 fixing microorganism to produce a product stream comprising ethanol (entire doc, including 2. BIOLOGY OF GAS FERMENTATION; 3. GAS FERMENTATION PROCESS; Fig. 2).
Regarding claim 2, Fackler teaches that the gas fermentation process comprises producing a mixture in a gas fermentation bioreactor and recovering a product stream from the mixture (Fig. 2a).
Regarding claims 3 and 33-35, Fackler teaches the fermentation can be carried out using anaerobic carboxydotrophic bacteria, including Clostridium autoethanogenum (under . BIOLOGY OF GAS FERMENTATION; p. 447, 1st ¶).
Regarding claim 4, Fackler teaches measured volumes of product streams from the fermentation (e.g., gallons ethanol) (Fig. 2c; p. 447, 1st ¶), and it would have been obvious to measure mass and/or volume of the fermentation output in order to monitor the fermentation, assess the economics of the process, troubleshoot, etc.
Regarding claims 29-31, Fackler teaches that the gas fermentation bioreactor can be co-located with carbon sources including an oil refinery (i.e. hydrocarbon production process, chemical plant and/or energy production facility) and/or a gasification plant (i.e. an energy production facility) (p. 447, 1st ¶).
Regarding claim 32, Fackler teaches that the carbon source can be agricultural residues or municipal waste which is gasified (to syngas) and then fermented to ethanol (p. 447, 1st ¶).
Regarding claim 36, Fackler teaches that the feed gas can comprise H2 gas (p. 445, last ¶).
Regarding claim 37, Fackler teaches that the feed gas can be gasified syngas (i.e. which would contain brown hydrogen; cf. Published Spec. US20230357803, [0091]) (p. 447, 1st ¶).
Regarding claim 38, Fackler teaches that bioethanol yielded by the fermentation can be converted to additional products, e.g. using ethylene as an intermediate or via a second fermentation with chain-elongating microorganisms (under 4. CHEMICAL PRODUCTION).
Regarding claim 39, it would have been obvious in view of Fackler that multiple fermenters could be used to scale the process as desired. A mere duplication of parts generally has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04, VI. B.).
Claims 1-4 and 29-39 differ from Fackler in that: the process further comprises integrating the product stream with a transportation network wherein the transportation network is already integrated with at least another product stream from another gas fermentation system co-located with another carbon source; and transporting the product stream to a remote location through the transportation network.
Dunnett teaches factors and considerations for improving efficiency of bioethanol production and distribution, and teaches that efficiencies can be obtained via pipeline transport of ethanol products from multiple fermentation plants to one or more centralized processing plants (p. 8-9, under Logistics and Intermediate purity ethanol logistics; p. 13-14, under Intermediate purity ethanol logistics; Fig. 6).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to use a gas fermentation process of Fackler to convert waste gas/syngas to a product stream including ethanol wherein the product stream is integrated with a pipeline transport network that connects product streams from other similar fermentation plant(s) to a central processing plant (e.g., a distillation/purification facility) as taught by Dunnett because it would have been obvious to combine prior art elements according to known methods to yield predictable results. One of ordinary skill would have been motivated to integrate the product streams from multiple gas fermentation plants of the type taught by Fackler into a pipeline transport system in order to achieve greater efficiency in the overall production and utilization of ethanol (e.g., by taking advantage of economies of scale in purification processes and/or utilizing cheaper or more carbon efficient modes of transport). Integrating the product streams from multiple gas fermentation plants of the type taught by Fackler into a pipeline transport system would have led to predictable results with a reasonable expectation of success because Dunnett teaches that such integration can enhance efficiency for bioethanol production via a similar fermentation process. While Dunnett focuses on bioethanol produced via saccharified lignocellulose fermentation, Handler evidences that the purification/distillation process for gas fermentation of the type taught by Fackler (the LanzaTech process) has similar energetic requirements as other ethanol distillation processes (p. 3256, under Product Separation), and thus the economies of scale and other efficiencies taught by Dunnett would likely be applicable to the process of Fackler (including e.g., economies of scale in using a single processing plant for final distillation). Moreover, one of ordinary skill would recognize that the most efficient system for transporting/integrating product streams would depend on the details of a particular system (e.g., locations, distances, relative costs of different transport modes, etc.), and it would be within the skill of one versed in the art to weigh such factors to determine when an integrated pipeline system would be appropriate.
In addition to the above, Dunnett teaches that liquid road transport is commonly used for bioethanol (Dunnett, p. 8, under Logistics), and the “transportation network” of the instant claims can be construed to include a network of roads. Since any fermentation plant would require roads to deliver materials, workers, etc., and any such roads would be connected to the larger road system, any fermentation plants connected to the general road system can be considered “integrated” with such a road transportation network. As such, it would have further been obvious to use a gas fermentation process of Fackler to convert waste gas/syngas to a product stream including ethanol wherein the product stream is integrated with a road transport network that connects product streams from other similar fermentation plant(s) to a central processing plant (e.g., a distillation/purification facility).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 29-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-17 of copending Application No. 18313173 in view of Fackler and Dunnett, as applied above (see 103 rejection).
The ‘173 claims teach a system (and implied process for use thereof) comprising a gas fermentation plant co-located with a carbon source that produces a gaseous carbon stream comprising CO, wherein the gas fermentation comprises a C1-fixing anaerobic bacteria that converts the gaseous stream to an alcohol product and wherein the fermentation plant is integrated with a pipeline that transports the product to a processing facility (‘173 claims 7, 8, 11, 12, 15). The ‘173 claims further teach measuring an amount of the product (‘173, claim 16) and that the gaseous stream can include H2 (‘173, claim 11).
The ‘173 claims differ from the instant claims in that the pipeline is integrated with the product stream of one or more other fermentation plants. However, Dunnett teaches enhancing the efficiency of bioethanol production/transport by integrating multiple fermentation plants with a central processing facility (e.g., via pipeline), and it would have been obvious to do so to achieve such efficiencies. Fackler further teaches the limitations of the dependent claims as obvious variants of the same type of C1-fixing anaerobic gas fermentation as taught by the ‘173 claims (see 103 rejection, above).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J YAMASAKI whose telephone number is (571)270-5467. The examiner can normally be reached M-F 930-6 PST.
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/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657