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 .
This action is a response to the amendments and remarks filed on 8 September 2025.
Examiner’s Note
The examiner attempted to resolve the issues discussed below by telephone interview, leaving voice messages for Applicant’s representative on 31 October, 3 November, and 5 November 2025, but as of 17 November 2025, a response from Applicant’s representative has not been received.
Response to Amendment
Claims 1 and 4-8 have been amended. Claim 2 has been canceled. Claims 1 and 3-16 are pending. In the previous action (Non-Final Rejection filed on 11 June 2025, claims 1-16 were indicated as containing allowable subject matter.
In response to the amendments to the claims, the objections thereto are withdrawn.
Regarding the rejections of claims 9 and 10 under 35 USC 112(b) (Non-Final Rejection, p. 7), since Applicant has not presented arguments nor amended the claims, the rejections are maintained.
Applicant’s amendment to claim 1 changes the scope of the claims. Because of Applicant’s amendments, after further consideration and search, new grounds of rejection are presented herein as a final rejection. See MPEP 706.07(a).
Claim Objections
Claims 5, 9, and 16 are objected to because of the following informalities:
Claim 5: Applicant is respectfully advised to amend the claim as follows to avoid redundancy: “at least one product in the product depleted stream is less than
Claim 9: Applicant is respectfully advised to maintain consistency in the terminology for claim elements in improve clarity, i.e., the
Claim 16: The claim recites, “further comprising degassing the fermentation broth to produce a degassed fermentation broth and an evolved gas stream, prior to passing the fermentation broth to the vacuum distillation vessel.” Applicant is respectfully advised to make clear the equivalence between the “fermentation broth” of claim 1 and the “degassed fermentation broth” of claim 16, e.g., “prior to passing the fermentation broth as the degassed fermentation broth to the vacuum distillation vessel.”
Appropriate correction is required.
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 9-10 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 9: The claim recites, “further comprising passing the fermentation product depleted stream back to the bioreactor.” The claim depends from claim 1, which recites, “passing the product depleted stream to a secondary separation unit to remove the at least one by-product before passing the product depleted stream back to the bioreactor.” The text of claim 9 is unclear because “further comprising passing” implies that the passing is a further or additional step, but claim 1 already recites “before passing the product depleted stream back to the bioreactor,” which is not acknowledged, raising uncertainty about the scope of the claim. For the purposes of examination only, this text will be interpreted as acknowledging the corresponding antecedent text as the step being claimed in claim 9.
Claims 9 and 10: Claim limitation “conversion unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure appears to address the idea of the claimed conversion in [0022], but there is no use of the term “conversion unit,” and no structure is mentioned, so it is unclear what the metes and bounds of this term are.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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, 3-5, and 9-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 5-7, 9-10, and 12 of U.S. Patent No. 11471786B2 (“reference document”) in view of Grady et al (US 2012/0211348 A1).
Regarding claim 1, claim 1 of the reference document discloses the same limitations, except for the following differences: (i) the reference document claim includes additional limitations (“wherein the fermentation broth has a residence time in the vacuum distillation vessel from about 0.5 to about 15 minutes”); and (ii) the reference document claim lacks “wherein the concentration of the at least one product in the product depleted stream is less than about 1.0 wt.-%.”
Regarding (i), a less-limited claim is obvious in view of a more limited claim, so the additional limitations regarding residence time do not detract from the obviousness of the instant claim over the reference document claim.
Regarding (ii), Grady discloses a process for removing C2 to C8 alcohols from a fermentation broth ([0002]) wherein a fermentation liquid is fed to a distillation column and a bottoms stream 214 from the column is returned to a fermentation vessel ([0012], [0107]). Grady teaches that the bottoms stream 214 contains less 1 g/L of the product alcohol (i.e., less than about 1.0 wt.-%, assuming the bottoms stream is mostly water, and that the product alcohol is less dense than the water) in consideration of the tolerance of the microorganism to the product alcohol. ([0107]). It has been held that obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to provide a concentration of the at least one product in the product depleted stream of less than about 1.0 wt.-% in consideration of the tolerance of the microorganism to the product alcohol. (Grady, [0107]).
In addition, claims 3, 4, 5, 9, 10, 11, 12, 13, 14, 15, and 16 correspond to claims 5, 1, 1, 2, 2, 6, 7, 9, 10, and 12 of the reference document, respectively.
Additional Claim Objections
Claims 6-8 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.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 1 and 3-16. The concept of a method for producing and recovering at least one product from a fermentation process comprising:
a. introducing a C1-containing gas substrate from a source to a bioreactor containing at least one microorganism capable of fermenting the C1-containing gas substrate and producing at least one product and at least one by-product;
b. generating a fermentation broth in the bioreactor comprising the at least one microorganism as viable microbial biomass, the at least one product, and the at least one by-product;
c. passing the fermentation broth from the bioreactor to a vacuum distillation vessel;
d. partially vaporizing the fermentation broth to produce a product enriched stream and a product depleted stream, the product depleted stream comprising the viable microbial biomass and the at least one by-product; and
e. passing the product depleted stream to a secondary separation unit to remove the at least one by-product before passing the product depleted stream back to the bioreactor, wherein the concentration of the at least one product in the product depleted stream is less than about 1.0 wt.-% and the difference between the viability of the microbial mass in the product depleted stream and the viability of the microbial biomass in the fermentation broth is less than 10% (claim 1)
is considered to define patentable subject matter over the prior art.
The closest prior art appears to be Datta et al. (US 2010/0294642 A1), which discloses feeding raw syngas to a bioreactor 28 (Fig. 1; [0060]), passing a fermentation broth 41 to a distillation column 38 ([0065]) to obtain an ethylene product 56 ([0070]), and recycling fermentation broth bottoms stream from the distillation column via lines 60 and 34 ([0072]). However, Datta does not suggest that the recycled broth contains viable microbes, or that a product concentration of this stream is less than about 1.0 wt%.
Other related prior art is Evanko et al. (US 2011/0124068 A1), which teaches conducting a liquid phase resulting from a distillation step (a depleted liquid phase) to a fermentation medium, and that microorganisms can remain in a depleted liquid phase returned to the fermentation medium ([0233]). However, Evanko does not discuss a product concentration in this liquid phase, a proportion of viable cells in this liquid phase, or a fermentation medium fed a C1-containing gas substrate.
Conclusion
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 GABRIEL E GITMAN whose telephone number is (571)272-7934. The examiner can normally be reached M-Th 7:15-5:45pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-3471. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GABRIEL E GITMAN/Primary Examiner, Art Unit 1772