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 .
DETAILED ACTION
Applicant’s response filed on 02/04/2026 is duly acknowledged.
Claims 1-20 (originally presented on 11/08/2023) are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-18; directed to “A process comprising biologically producing hydrogen gas from organic waste…”) in the reply filed on 02/04/2026 (see REM, p. 2) is acknowledged.
Claims 19 and 20 (drawn to non-elected invention of Group II) have been withdrawn from further considerations.
Claims 1-18 (elected invention of Group I, without traverse; directed to “A process comprising biologically producing hydrogen gas from organic waste…”), as presented, have been examined on their merits in this action hereinafter.
Priority
This application is a CIP of 17/763,761 (filed on 03/25/2022, now a US PAT 12139738), which would be eligible to get domestic benefit from US provisional application 62/906,261 filed on 09/26/2019 if properly claimed for the elected process claims 1-15 and 18 under examination (except for claims 16 and 17) hereinafter. However, it is to be noted that applicant has not claimed such domestic benefit on record as per the filing receipt dated 11/17/2023, and therefore, the effective filing date for this application is the date of filing of the CIP application as 11/08/2023.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claims 16 and 17 require the limitations “without intentional additions of bacteria to the organic waste”, and “with intentional additions of bacteria to the organic waste”, respectively, wherein said terms “intentional additions of bacteria” do not have proper support in the specification of record filed as CIP of parent application 17/763,761. 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 16 and 17 (as currently presented) 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.
Claims 16 and 17 are reproduced herein as follows:
“16. The process of claim 1, wherein the anaerobic fermentation is performed without intentional additions of bacteria to the organic waste.”
“17. The process of claim 1, wherein the anaerobic fermentation is performed with intentional additions of bacteria to the organic waste.”
As noted above, the dependent claims 16 and 17 require the limitations “without intentional additions of bacteria to the organic waste”, and “with intentional additions of bacteria to the organic waste”, respectively, wherein the term “intentional” has not been specifically defined in the disclosure of record (see SPEC, p. 4, [0020], for instance) as to how it differs from any other way, design and/or manner of performing “additions of bacteria…” in the process as currently claimed. The term as recited for the process renders it ambiguous as it is deemed vague and unclear as to what exactly are the scope and/or boundaries of such method step(s) as required by the claims. Appropriate correction is required.
NOTE: 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.
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.
Claims 1-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kramer et al (US 2022/0340937 A1; US-PGPUB dated 10/27/2022; in IDS dated 05/28/2025; also published as WO 2021/062218 A1 on 04/01/2021).
Claim 1 is directed to “A process comprising biologically producing hydrogen gas from organic waste by anaerobic fermentation of the organic waste with at least one strain of yeast.”
Kramer et al (2022), while teaching processes and systems for biological hydrogen production from organic waste using yeast (see Title, Abstract, and Claims), discloses (regarding instant claims l), the process comprising biologically producing hydrogen gas from organic waste by anaerobic fermentation of the organic waste with at least one strain of yeast (see Kramer et al, see p. 3, claims l-2), employing a system for performing the process comprises a reactor tank, wherein the reactor tank is sealed and maintained at a low pressure, above atmospheric pressure but preferably not greater than about 0.25 psi (about 12 Pa) above atmospheric pressure (see Kramer et al, paragraph [0013]; figure 1, for instance). Regarding instant claim 3, Kramer et al, disclose wherein the anaerobic fermentation is performed at a controlled elevated temperature (see Kramer et al, p.3, claim 3). Regarding instant claim 4, Kramer et al, disclose wherein the elevated temperature is about 32° C to about 42° C (see Kramer et al, p.3, claim 4). Regarding instant claim 5, Kramer et al, disclose wherein the elevated temperature is about 37° C (see Kramer et al, claim 5). Regarding instant claim 6, Kramer et al, disclose wherein the anaerobic fermentation is performed at a controlled pH (see Kramer et al, claim 6). Regarding instant claim 7, Kramer et al disclose wherein said pH is 5.5 to 5.9 (see Kramer et al, claim 7). Regarding instant claim 8, Kramer et al disclose wherein the pH is 5.7 (see Kramer et al, claim 8). Regarding instant claim 9, Kramer et al disclose wherein the pH is controlled through the introduction of a base such as with sodium hydroxide added to the organic waste material (see paragraph [0013], claim 9). Regarding instant claim 10, Kramer et al disclose wherein the process further comprising agitating the organic waste during the anaerobic fermentation (see Kramer et al, claim 10). Regarding instant claim 11, Kramer et al disclose wherein the anaerobic fermentation is performed on a mixture comprising the organic waste and water (see Kramer et al, claim 11). Regarding instant claim 12, Kramer et al disclose wherein the process further comprising agitating the mixture during the anaerobic fermentation (see Kramer et al, claim 12). Regarding instant claim 13, Kramer et al disclose wherein the anaerobic fermentation is performed so that production of the hydrogen gas exceeds production of carbon dioxide over a period of twenty-four hours (see Kramer et al, claim 13). Regarding instant claim 14, Kramer et al disclose wherein the yeast is suitable for use in the commercial production of ethanol (see Kramer et al, p. 1, [0012], for instance). Regarding instant claim 15, Kramer et al disclose wherein the yeast is at least one of Saccharomyces cerevisiae and species of the genus Schizosaccharomyces (see Kramer et al, claim 14). Regarding instant claim 16, Kramer et al disclose wherein hydrogen can be biologically produced from organic waste using a process that employs yeast rather than bacteria (i.e. without “intentional addition” of bacteria) as the basis for anaerobic fermentation (see Kramer et al, p. 2, [0016]). Regarding instant claim 17, Kramer et al disclose wherein the process that produces hydrogen from organic waste using (“intentional additions” of) bacteria to the organic waste (when compared to using yeast in the process), requires roughly double the fermentation time (see Kramer et al, p.2, [0016], for instance). Regarding instant claim 18, Kramer et al disclose wherein the organic waste is food waste (see Kramer et al, claim 15).
Thus, the cited prior art reference of Kramer et al reasonably meets all the limitations of instant claims 1-18 as currently presented.
Claims 1, 3-7, 9-12, 14, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kramer et al (US 2014/0157777A1; US-PGPUB cited as ref. [A] on PTO 892 form).
Claim 1 (as presented) is directed to “A process comprising biologically producing hydrogen gas from organic waste by anaerobic fermentation of the organic waste with at least one strain of yeast.” (It is to be noted that instant process claim recites “comprising” language, and additionally may encompass other microbial components and/or steps employed in the claimed process).
See also limitations of dependent claims 3-7, 9-12, 14, 16 and 18, as currently presented.
Kramer et al (2014), teach a modular renewable energy system comprising: a solar collector system for generating heat energy; a bioreactor including a chamber for fermenting organic waste, and one of a fuel cell and a heat engine in gaseous communication with the bioreactor; wherein (regarding instant claim 1) anaerobic fermentation of organic waste in the chamber generates hydrogen gas, the hydrogen gas being directed to the one of a fuel cell and a heat engine, and wherein (regarding instant claim 3) heat energy effective for sterilization is applied to the organic waste subsequent to fermentation, the heat energy being generated by the solar collector system, wherein studies have been conducted using microorganisms to generate hydrogen from fermentation of a variety of substrates, and wherein some studies used single species cultures of bacteria, such as species of Bacillus, Clostridium, and Enterobacter, while others used mixed cultures that originated from sludge, animal wastes, sewage, compost, soil, food waste, etc. (i.e. “without intentional additions of bacteria” to the organic waste material; see Kramer et al, claims l, 10, 17; Summary of the Invention, [0006]-[0010] on p. 1, and p. 3, [0035]-[0036], [0038]-[0039], for instance). Heat treated organic waste is the introduced into the bioreactor, where it is allowed to ferment. The bioreactor includes a controller for controlling the temperature, pH, pressure, water content, and flow rate for the bioreactor. The bioreactor may be a batch or continuous bioreactor. DDGS produced as a byproduct of ethanol production includes hydrogen-producing yeast [0039]. Kramer et al disclose the process for producing hydrogen gas from organic waste, including food waste (regarding instant claim 18) using anaerobic fermentation in the bioreactor (regarding instant claim 4-8; that includes a controller for regulating temperature, pressure, pH, water content, and flow rate for the bioreactor; see Kramer et al, [0039]) that uses DDGS produced as a byproduct of ethanol production (regarding instant claim 14), and has been known to include “hydrogen-producing yeast” (i.e. “at least one strain of yeast”, it is noted that the specific strain of yeast has not been recited in instant claim 1 per se), wherein results indicated that yeast remaining in the DDGS after fermentation is able to robustly produce hydrogen under anaerobic conditions (see Kramer et al, p. 5, [0053], for instance); wherein the anaerobic fermentation of food waste is performed at a “controlled elevated temperature” between 35 degree C to 45 degree C (see [0050], for instance), and at an elevated temperature of 37 degree C (see Kramer et al, [0058], for instance; wherein the controlled pH range is between pH of 4.5 to 6.5, with initial pH of about 6 (see Kramer et al, [0052], for instance), and the test fermentation pH is maintained at 5.5 (see Kramer et al, [0058], for instance); wherein it was found that “increased hydrogen content is obtained by controlling pH below 6.0”, wherein “maintaining a pH in the range of 4.5-6.5, or in the range of 5-6, or about 5.75, over the duration of fermentation is preferred” (see Kramer et al, [0055], in particular)); wherein the pH is controlled with addition of a base such as sodium hydroxide (regarding instant claim 9; see Kramer et al, p. 5, [0052]); wherein the gas produced by the bioreactor is “approximately 25% hydrogen with the remainder being nitrogen and carbon dioxide” (see Kramer et al, p.6, [0028], [0064]; Figure 8, in particular), wherein carbon dioxide produced was measured in the headspace using a computer controlled automated device in a separate channel of the GC equipped with a suitable column and carrier gas (see Kramer et al, p. 4, [0046]); and wherein Kramer et al disclose that the hydrogen production rate increased with increasing substrate concentrations up to 120 g/L tested, and that by increasing the agitation it was possible to “decrease the time to first hydrogen production” (regarding instant claims 10 and 12; see page 6, [0061], [0063], for instance).
Thus, the disclosure provided by Kramer et al reasonably meets all the limitations of instant claims 1, 3-7, 9-12, 14, 16 and 18, as currently presented.
As per MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, F.3d, 2004 WL 1067528 (Fed. Cir. May 13, 2004)(The USPTO uses a different standard for construing claims than that used by district courts; during examination the USPTO must give claims their broadest reasonable interpretation.). This means that the words of the claim must be given their plain meaning unless applicant has provided a clear definition in the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
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.
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 2, 8 and 13, 15 and 17 (as currently presented) are rejected under 35 U.S.C. 103 as being unpatentable over Kramer et al (US 2014/0157777A1; US-PGPUB cited as ref. [A] in view of Battista et al (2016; NPL cited as ref. [U] on PTO 892 form).
Claims 1, 3-7, 9-12, 14, 16 and 18 have been discussed above in relation to the prior art disclosure for the biological process of producing hydrogen gas, as taught by Kramer et al 2014, and the detailed teachings and/or suggestions are further relied upon in the same manner hereinafter.
Claims 2, 8 and 13, 15 and 17 have been presented as follows:
Claim 2. “The process of claim 1, wherein the anaerobic fermentation is performed in a
reactor tank at a pressure not greater than 12 Pa above atmospheric pressure and at an oxygen
level of less than 0.25%.”
Claim 8. “The process of claim 6, wherein the pH is 5.7.”
Claim 13. “The process of claim 1, wherein the anaerobic fermentation is performed so
that production of the hydrogen gas exceeds production of carbon dioxide over a period of
twenty-four hours.”
Claim 15. “The process of claim 1, wherein the yeast is at least one of Saccharomyces
cerevisiae and species of the genus Schizosaccharomyces.” And
Claim 17. “The process of claim 1, wherein the anaerobic fermentation is performed with intentional additions of bacteria to the organic waste.”
However, the process for producing hydrogen gas from anaerobic fermentation of organic waste- (1) wherein the anaerobic fermentation is performed in a reactor tank at a pressure not greater than 12 Pa above atmospheric pressure and at an oxygen level of less than 0.25%” (instant claim 2); or (2) wherein “production of the hydrogen gas exceeds production of carbon dioxide over a period of twenty-four hours” (instant claim 13; taken herein as intended result); or (3) wherein “the yeast is at least one of Saccharomyces cerevisiae and species of the genus Schizosaccharomyces” (instant claim 15), have not been explicitly disclosed by the cited prior art of Kramer et al, as discussed above (however, they do disclose the fact that “yeast remaining in DDGS after fermentation is able to robustly produce hydrogen under anaerobic conditions”; see [0053], for instance).
Battista et al (2016) discloses a method for producing hydrogen and ethanol using anaerobic fermentation of organic waste derived from olive oil production by addition of yeast stain such as Saccharomyces cerevisiae (abstract, section “Materials and methods”, sections 2.1 and 2.2); wherein the fermentation process is carried out in an apparatus comprising two glass bottles and a plastic vessel, connected by pipes, and wherein agitation is provided via a rotary shaker. The feedstock is either pre-treated or left untreated, and the fermentation is performed at under anaerobic conditions by sparging the headspace of the bottle with nitrogen. They demonstrate various pre-treatments that were tested and found to improve the hydrogen and bioethanol produced from a mixture of olive mill waste materials (see page 406, section 4 “Conclusions”, and Table 3, for instance); wherein the basic and ultrasonic pretreatments resulted in the best bioethanol and hydrogen production (see Abstract, for instance) as the “ultrasonic pretreatment likely contributes to the destruction of complex chemical structures (lignin, cellulose) within the OP, and potentially increases the surface area available for bacterial degradation, thus enhancing the mass transfer phenomena”, thus directly eluding to the important role bacteria play in the entire fermentation process (see Battista et al, p. 405, right column, 2nd paragraph, Table 3, for instance). Although, the focus of Battista et al was on the effects of pretreatments in order to improve the yield of bioethanol and hydrogen, they nevertheless disclose the fact that yeast strains can be used for production of hydrogen under anaerobic fermentation conditions using food or sugar-containing waste materials such as olive mill waste materials.
Thus, given the teachings and/or suggestions of Battista et al as discussed above, to an artisan of ordinary skill in the art, it would have been obvious to employ a well-known and used strain of yeast such as Saccharomyces cerevisiae in the process for production of hydrogen gas from food waste materials using anaerobic fermentation conditions that have already been disclosed and/or suggested by the process disclosed by Kramer et al. Given the detailed teachings from Kramer et al, the specific limitations of anaerobic fermentation reactor conditions and/or parameters for specific range of pressure, levels of oxygen, temperature, pH, substrate concentration, etc., would have been obvious and/or fully contemplated by an artisan in the art as result effective variables (known in the art of anaerobic fermentation) that can be suitably optimized for increased production of hydrogen over carbon dioxide over a given period of time, as already discussed above for the cited prior art of Kramer et al (see for instance, [0031], [0039], [0046], [0050], [0055], and [0061]-[0065]), unless evidence/data provided on record to the contrary. In addition, given the fact that Battista et al clearly suggest the role of bacteria along with the pretreatment processes for degrading complex chemical structures such as lignin, cellulose, etc., an artisan in the fermentation art would have been motivated for addition of bacteria that are known to produce hydrogen during anaerobic fermentation processes, in order to enhance and/or significantly increase the production of hydrogen gas from food waste materials.
It is noted to applicants that the scope of the showing must be commensurate with the scope of claims to consider evidence probative of unexpected results, for example. In re Dill, 202 USPQ 805 (CCPA, 1979), In re Lindner 173 USPQ 356 (CCPA 1972), In re Hyson, 172 USPQ 399 (CCPA 1972), In re Boesch, 205 USPQ 215, (CCPA 1980), In re Grasselli, 218 USPQ 769 (Fed. Cir. 1983), In re Clemens, 206 USPQ 289 (CCPA 1980). It should be clear that the probative value of the data (see instant specification, [0020], [0033], in particular for “narrow ranges of processing parameters” in order to provide the intended result) is not commensurate in scope with the degree of protection sought by the independent claim 1 as currently presented.
Thus, the claim as a whole would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the invention as claimed.
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.
1. Claims 1-18 (as currently presented) are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claims 1-10 of U.S. Patent No. 12,139,738 B2 (issued to common inventors and assignee on 11/12/2024 from parent application 17/763,761). Although the claims at issue are not identical, they are not patentably distinct from each other because issued claim 1 of the patent ‘738 is also directed to a process which is deemed to be an species of the generic claims as currently recited in this application under examination. Issued claim 1 of ‘738 has been reproduced as follows:
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Since, the issued claim is a species and therefore anticipatory to the claims under examination in this application, an ODP rejection is deemed proper.
2. Claims 1-18 (as currently presented) are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim 1 of U.S. Patent No. 9,506,084 B2 (issued on 11/29/2016 to common inventors and assignee; from application 13/891,435 published as US-PGPUB 2014/0157777 A1 filed on June 12, 2014). Although the claims at issue are not identical, they are not patentably distinct from each other because issued claim 1 is directed to a species of the instantly claimed process for a method for producing hydrogen by anaerobic fermentation of “organic waste”, wherein the hydrogen produced is directed to “one of a fuel cell and a heat engine”; and wherein the disclosure of the issued patent provides that the organic waste contains active “yeast” that helps in production of hydrogen during anaerobic fermentation (see also issued claims 2 and 5, and column 9, 4th paragraph; and the pertinent discussion regarding yeast in the prior art rejection above using Kramer et al, US 2014/0157777 A1 from which US ‘084 is issued). Since, instant claim 1 is deemed generic to the species already issued in patent ‘084, an ODP rejection is deemed proper.
Conclusion
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SATYENDRA K. SINGH
Primary Examiner
Art Unit 1657
/SATYENDRA K SINGH/Primary Examiner, Art Unit 1657