DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The Preliminary Amendment filed on July 3, 2025, have been received and entered.
Claim Disposition
3. Claims 1-17 are pending and are under examination.
Abstract
4. The abstract is objected to for the following informalities:
“A method of biomineralizing carbon dioxide (CO₂) in a formation that includes injecting a CO₂- containing fluid and an Enzyme Induced Carbonate Precipitation (EICP) solution in the formation, to form a mineralization mixture and forming a carbonate precipitate in the formation from the mineralization mixture. The EICP solution may include urea, one or more polysaccharides, a casein protein, a protease, an ionic compound, and a urease”.
Appropriate correction is required.
Information Disclosure Statement
5. The Information Disclosure Statements filed on July 3, 2025 and January 22, 2024, have been received and entered. The references cited on the PTO-1449 Form have been considered by the examiner and a copy is attached to the instant Office action.
Specification Objection
6. The specification is objected to for the following informalities:
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The following is suggested: "A method of biomineralizing CO2".
Appropriate correction is required.
Claim objection
7. Claims 1-17 are objected to for the following informalities:
For clarity and precision of claim language it is suggested that claim 1 is amended to recite “…..carbon dioxide (CO2) in a geological formation, [[the method]] comprising:………..and an enzyme induced carbonate precipitation (EICP) solution …….”.The dependent claims hereto are also included.
For clarity and consistency it is suggested that claims 4-6 and 17 are amended to recite “wherein” in lieu of “where”.
For clarity it is suggested that claim 10 is amended to read, “…..in a rock of the geological formation….”.
For clarity it is suggested that claims 16-17 are amended to delete “such that”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. Claims 1-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or
a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to “a method of biomineralizing carbon dioxide (CO2) in a formation that includes injecting a CO2-containing fluid and an Enzyme Induced Carbonate Precipitation (EICP) solution in the formation to form a mineralization mixture, and forming a carbonate precipitate…..” (see claim 1 in its entirety). The claimed invention is not adequately described and overly broad with respect to the EICP solution and the formation. The art generally recognizes that biomineralization is the way organisms produce inorganic minerals to harden or stiffen tissues like making bones, teeth and the like. The claims broadly represents all of that, however, claim 10 introduces the ‘rock’ to define the formation as being geological. The specification discloses geological formations, however, claim 1 is not limited to that. The EICP solution is defined in claim 2 as encompasses urea, polysaccharides, casein protein, protease, ionic compound and urease, however, claim 1 does not provide any indication of what is in the solution which is key aspect of the invention. The claimed invention as set forth in claim 2 is overly broad also with the large genus of polysaccharides, any protease or ionic compounds and the recited one or more components for example, when the disclosure is geared towards a limited set like sodium chloride for the ionic compound and xanthan gum or guar gum for the polysaccharide. Thus applicant has not demonstrated possession of the large genus encompassed in the claims.
Thus the claimed invention is overly broad and not commensurate in scope with the disclosure in the specification. The claimed invention is not adequately described.
No correlation is made between structure and function for the protease of the claimed invention, and does not demonstrate possession of the large genus. The specification fails to provide a representative number of species for the claimed genus to show that applicant was in possession of the claimed genus. A representative number of species means that the species, which are adequately described, are representative of the entire genus.
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, disclosure of drawings, or by disclosure of relevant identifying characteristics, for example, structure or other physical and/or chemical properties, by
functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
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.
9. Claims 1-17 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 is ambiguous because ‘formation’ is not clearly defined. It can be construed as a composite, geological formation, bones, teeth etc., (see suggestions above to clarify claim 1). The dependent claims hereto are also included.
Claim 10 lacks clear antecedent basis for the recitation of “ in a rock of the formation”. Independent claim 1 does not clearly establish what the formation is, which reads on a composite, geological formation, bones, teeth etc., (see suggestions above to clarify claim 1).
Claim 13 is ambiguous for the recitation of “…..injecting…… comprises….. a first solution and a second solution” because claim 1 from which it depends recites a CO2 containing fluid and an EICP solution” which could be construed as two solutions (first and second); and claim 13 appears to be referring to the EICP as being two solutions (first and second).
Claim15 lacks clarity because the EICP solution is one solution in independent claim 1, thus unclear shy claim 15 recites that the “EICP solution is introduced into the formation as one solution”.
Claim 17 lacks clear antecedent basis for the recitation of “one or more components”.
Claim Rejections - 35 USC § 102
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.
10. Claim(s) 1-2, 10-12 and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (Geosciences J., vol. 26, no. 2, pages 279-288, April 2022).
The claimed invention is directed to a method of biomineralizing carbon dioxide (CO2) in a formation that includes injecting a CO2-containing fluid and an Enzyme Induced Carbonate Precipitation (EICP) solution in the formation to form a mineralization mixture, and forming a carbonate precipitate in the formation from the mineralization mixture.
Park et al. teach biomineralization promotes calcium carbonate precipitation using a urease enzyme (enzyme-induced calcium carbonate precipitation, EICP), used to reduce CO2 leakage. The art used conditions such as temps of 30-50 degrees which falls in the range recited in the claims, pH of 3-9 (see abstract and page 280) and injection solution into the geological formation (rock), see pages 28-286. Therefore, the limitations of the claims are met by the reference.
11. Claim(s) 1-2, 5 and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 114605046(6/10/22, of record in application).
The claimed invention is directed to a method of biomineralizing carbon dioxide (CO2) in a formation that includes injecting a CO2-containing fluid and an Enzyme Induced Carbonate Precipitation (EICP) solution in the formation to form a mineralization mixture, and forming a carbonate precipitate in the formation from the mineralization mixture.
The primary reference teaches a chitosan reinforced enzyme induced carbonate precipitation curing agent and application method thereof, the chitosan enhanced enzyme inducing carbonate precipitation curing, agent urease solution, chitosan colloid solution and urea solution; the volume of the chitosan colloid solution is 4 times to 9 times of the volume of the urease solution, the volume of the urea solution is 1.5 times to 10 times of the volume of the urease solution; the concentration of the urease solution is 20g/L to 100g/L; the concentration of the urea solution is 0.5mol/L to 4mol/L. The curing agent solidifying the agent colloid solution and urea solution curing the heavy metal pollution, so as to realize pollution repairing, the urease system under the protection of chitosan has high activity catalytic carbonate precipitate wrapping heavy metal ion, which can effectively avoid the pollutant migration diffusion, the repairing efficiency can reach 99 % (see abstract, claims, figures and entire document). The reference teaches, “wherein the volume of the calcium source solution in step one is 20 times to 40 times of the volume of the soluble salt solution containing heavy metal, the concentration of the soluble salt solution containing heavy metal is 250 mmol/L to 2000mmol/L. the concentration of the calcium source solution is 0.25mol/L to 2mol/L, the soluble salt solution containing heavy metal comprises copper nitrate solution or lead nitrate solution, the calcium source is calcium chloride or calcium acetate (see entire document). Therefore, the limitations of the claims are met by the reference.
Conclusion
12. No claims are presently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOPE A ROBINSON whose telephone number is (571) 272-0957. The examiner can normally be reached 9-5pm on Monday to Friday.
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/HOPE A ROBINSON/Primary Examiner, Art Unit 1652