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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4 January 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 3 and 7 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 claims 3 and 7, both claims recite a “conventional battery”, but do not define what a conventional battery is, nor is there a definition of a “conventional battery” in the specification. In the interest of compact prosecution, the examiner interprets a “conventional battery” to be a device with a cathode and an anode, separated by a separator, surrounded with electrolyte, that converts chemical energy to electrical energy.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0097250 (Book et al., hereinafter, Book), in view of U.S. Patent Application Publication Number 2021/0101661 (Peterson et al., hereinafter, Peterson), and in further view of Non-Patent Literature “Microbial Electrochemical Energy Storage and Recovery in a combined Electrotrophic and Electrogenic Biofilm” Environmental Science & Technology Letters, 2017, Volume 4, Issue 9, Pages 374-379 (Yates et al., hereinafter, Yates).
Regarding claim 1, Book teaches a benthic microbial fuel cell comprising an anode embedded in the sediment at the bottom of a body of water (¶ 22), a cathode that stays in the oxygenated water when deployed (Abstract), a flexible seal around a mooring that can cope with unevenness in the ocean bottom and is not easily displaced by ocean currents (¶ 15) so that the relative positions of the anode and cathode can be maintained, an anode that comprises a plurality of carbon fiber bottlebrush electrodes, and a cathode that comprises a second plurality of bottlebrush electrodes (¶ 32), and a power source for applying a voltage (Scribner model electronic load tester ¶ 33), but not that the power source would apply a voltage that would cause electrons to flow from the cathode to the anode and store energy in the BMFC, or that the power source obtains energy via solar, wind, or wave power.
In a related field of endeavor, Peterson teaches a variable buoy that can be powered by renewable power such as solar, current, or wave action systems (Peterson ¶ 27). In another related field of endeavor, Yates teaches that by reversing the electrode potential between the cathode and the anode, it was possible for energy to be stored in a biofilm created by using an inoculum from a sediment-based bioelectrochemical system (Yates Introduction, Results and Discussion). It would be obvious to one of ordinary skill in the art before the filing date to modify the benthic microbial fuel cell of Book with the solar, current, or wave action systems from Peterson to renewably provide energy to the power source, and to modify the method of use of the power source to apply a voltage that would cause electrons to flow from the cathode to the anode storing energy in the biofilm, to further the potential applicability of bioelectrochemical systems (Yates Abstract).
Regarding claim 2, Book in view of Peterson in further view of Yates teaches the BMFC of claim 1, wherein the BMFC is configured as an oceanographic mooring (Book Abstract, remotely-deployed bottom mooring).
Regarding claim 3, Book in view of Peterson in further view of Yates teaches the BMFC of claim 1 without a conventional battery (previously defined by the examiner for the sake of compact prosecution). The variable buoy of Peterson may be designed to be powered by renewable energy sources such as solar, current, or wave action systems, and the renewable energy source may charge one or more power supplies in the system (Peterson ¶ 27), like the power source of Book for applying a voltage to cause the energy storage of the biofilm according to Yates.
Regarding claim 4, Book in view of Peterson in further view of Yates teaches the BMFC of claim 1 comprising a sensor (Book ¶ 5, at least one sensor device on a circuit between the anode and the cathode).
Regarding claim 5, Book in view of Peterson in further view of Yates teaches a method of charging a BMFC, the method comprising:
providing an anode embedded in the sediment at the bottom of a body of water (¶ 22), a cathode that stays in the oxygenated water when deployed (Abstract), a flexible seal around a mooring that can cope with unevenness in the ocean bottom and is not easily displaced by ocean currents (¶ 15) so that the relative positions of the anode and cathode can be maintained, an anode that comprises a plurality of carbon fiber bottlebrush electrodes, and a cathode that comprises a second plurality of bottlebrush electrodes (¶ 32), and a power source for applying a voltage (Scribner model electronic load tester ¶ 33), that would cause electrons to flow from the cathode to the anode and store energy in the BMFC (Yates Introduction, Results and Discussion), and that the power source can be powered by renewable power such as solar, current, or wave action systems (Peterson ¶ 27); and
and applying a voltage to the BMFC via the power source, thereby storing energy associated with the BMFC (Yates Introduction, Results and Discussion, by reversing the electrode potential between the cathode and the anode, electrons can flow from the cathode into the anode and store energy in the biofilm of the BMFC).
Regarding claim 6, Book in view of Peterson in further view of Yates teaches the BMFC of claim 5, wherein the BMFC is configured as an oceanographic mooring (Book Abstract, remotely-deployed bottom mooring).
Regarding claim 7, Book in view of Peterson in further view of Yates teaches the BMFC of claim 5 without a conventional battery (previously defined by the examiner for the sake of compact prosecution). The variable buoy of Peterson may be designed to be powered by renewable energy sources such as solar, current, or wave action systems, and the renewable energy source may charge one or more power supplies in the system (Peterson ¶ 27), like the power source of Book for applying a voltage to cause the energy storage of the biofilm according to Yates.
Regarding claim 8, Book in view of Peterson in further view of Yates teaches the BMFC of claim 5 comprising a sensor (Book ¶ 5, at least one sensor device on a circuit between the anode and the cathode).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 6,913,854 in view of U.S. Patent Application Publication Number 2021/0101661 (Peterson), and in further view of Non-Patent Literature “Microbial Electrochemical Energy Storage and Recovery in a combined Electrotrophic and Electrogenic Biofilm” Environmental Science & Technology Letters, 2017, Volume 4, Issue 9, Pages 374-379 (Yates).
Instant claim 1 is directed to a benthic microbial fuel cell (BMFC) comprising: an anode electrode assembly in contact with aquatic sediment; a cathode electrode in seawater above the sediment; a rig for maintaining relative positions of the anode electrode assembly and the cathode electrode; electrical leads extending from the anode electrode assembly and the cathode electrode; and a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power, and
Claim 1 of Patent ‘854 is directed to an apparatus for generating energy at the interface of aquatic sediment and seawater comprising: a first anode electrode embedded within the aquatic sediment; a second cathode electrode positioned within the seawater and above the aquatic sediment; rig means for maintaining the relative positions of the anode and cathode electrodes; and electrical leads extending from the anode and cathode electrodes to a load.
Although Patent ‘854 is directed to a load, it does not mention that it is a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power. In the same field of endeavor, Peterson teaches a variable buoy that can be powered by renewable power such as solar, current, or wave action systems (Peterson ¶ 27). In another related field of endeavor, Yates teaches that by reversing the electrode potential between the cathode and the anode, it was possible for energy to be stored in a biofilm created by using an inoculum from a sediment-based bioelectrochemical system (Yates Introduction, Results and Discussion). It would be obvious to one of ordinary skill in the art before the filing date to modify the apparatus of Patent ‘854 with the solar, current, or wave action systems from Peterson to renewably provide energy to the power source, and to modify the method of use of the power source to apply a voltage that would cause electrons to flow from the cathode to the anode storing energy in the biofilm, to further the potential applicability of bioelectrochemical systems (Yates Abstract).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 7,550,224 in view of U.S. Patent Application Publication Number 2021/0101661 (Peterson), and in further view of Non-Patent Literature “Microbial Electrochemical Energy Storage and Recovery in a combined Electrotrophic and Electrogenic Biofilm” Environmental Science & Technology Letters, 2017, Volume 4, Issue 9, Pages 374-379 (Yates).
Instant claim 1 is directed to a benthic microbial fuel cell (BMFC) comprising: an anode electrode assembly in contact with aquatic sediment; a cathode electrode in seawater above the sediment; a rig for maintaining relative positions of the anode electrode assembly and the cathode electrode; electrical leads extending from the anode electrode assembly and the cathode electrode; and a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power, and
Claim 2 of Patent ‘224 is directed to an apparatus comprising: an anode comprising metallic manganese; a cathode capable of reducing at least one species found in marine water; and a rig coupled to the anode and the cathode capable of maintaining the anode below a marine sediment surface and maintaining the cathode above the marine sediment surface, further comprising: electrical leads capable of connecting the anode and the cathode to an electrical circuit.
Although Patent ‘244 is directed to an electrical circuit, it does not mention that it is a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power. In the same field of endeavor, Peterson teaches a variable buoy that can be powered by renewable power such as solar, current, or wave action systems (Peterson ¶ 27). In another related field of endeavor, Yates teaches that by reversing the electrode potential between the cathode and the anode, it was possible for energy to be stored in a biofilm created by using an inoculum from a sediment-based bioelectrochemical system (Yates Introduction, Results and Discussion). It would be obvious to one of ordinary skill in the art before the filing date to modify the apparatus of Patent ‘224 with the solar, current, or wave action systems from Peterson to renewably provide energy to the power source, and to modify the method of use of the power source to apply a voltage that would cause electrons to flow from the cathode to the anode storing energy in the biofilm, to further the potential applicability of bioelectrochemical systems (Yates Abstract).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,012,616 in view of U.S. Patent Application Publication Number 2021/0101661 (Peterson), and in further view of Non-Patent Literature “Microbial Electrochemical Energy Storage and Recovery in a combined Electrotrophic and Electrogenic Biofilm” Environmental Science & Technology Letters, 2017, Volume 4, Issue 9, Pages 374-379 (Yates).
Instant claim 1 is directed to a benthic microbial fuel cell (BMFC) comprising: an anode electrode assembly in contact with aquatic sediment; a cathode electrode in seawater above the sediment; a rig for maintaining relative positions of the anode electrode assembly and the cathode electrode; electrical leads extending from the anode electrode assembly and the cathode electrode; and a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power, and
Claim 1 of Patent ‘616 is directed to an apparatus for generating energy at the interface of aquatic sediment and seawater, the apparatus comprising: an anode electrode embedded within the aquatic sediment; a cathode electrode positioned within the seawater and above the aquatic sediment; a rig for maintaining the relative positions of the anode and cathode electrodes; and electrical leads extending from the anode and cathode electrodes to a load, wherein the anode electrode comprises a bottlebrush electrode residing within a permeable tube.
Although Patent ‘616 is directed to a load, it does not mention that it is a power source operably connected to the leads and configured to apply a voltage causing electrons to flow from the cathode to the anode, thereby resulting in the storage of energy associated with the BMFC, wherein the power source obtains energy via solar power source, wind power, and/or wave power. In the same field of endeavor, Peterson teaches a variable buoy that can be powered by renewable power such as solar, current, or wave action systems (Peterson ¶ 27). In another related field of endeavor, Yates teaches that by reversing the electrode potential between the cathode and the anode, it was possible for energy to be stored in a biofilm created by using an inoculum from a sediment-based bioelectrochemical system (Yates Introduction, Results and Discussion). It would be obvious to one of ordinary skill in the art before the filing date to modify the apparatus of Patent ‘854 with the solar, current, or wave action systems from Peterson to renewably provide energy to the power source, and to modify the method of use of the power source to apply a voltage that would cause electrons to flow from the cathode to the anode storing energy in the biofilm, to further the potential applicability of bioelectrochemical systems (Yates Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FANG whose telephone number is (571)272-8815. The examiner can normally be reached Mon-Fri. 7:30am-5:00pm.
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/M.F./Examiner, Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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