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 .
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claim 12 is objected to because of the following informalities: “proton exchange membrane” and “solid polymer electrolyte” do not need to be capitalized. 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 6, 12, and 26 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 6 recites the limitation "said knallgas" in the first line. There is insufficient antecedent basis for this limitation in the claim. It appears as though claim 6 should be dependent on claim 5, as this claim recites knallgas. For the sake of examining the claim on its merit, it will be assumed that claim 6 should be dependent on claim 5.
Regarding claim 12, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 26 is indefinite because it is unclear what the claim is trying to describe. The wording does not appear to make sense.
Claim Rejections - 35 USC § 102
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 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, 3-9, and 11-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reed, et al (PGPub 2020/0165733 [IDS Reference]). Reed teaches the biological conversion of gaseous carbon dioxide into a value-product. See paragraph [0002]. Reed teaches that the gas is held at a pressure greater than ambient pressure. See paragraph [0223]. Reed teaches conditions that are suitable for the support of the microorganism. See paragraph [0038]. Reed indicates that the microorganisms convert the substrate carbon into a value-product by way of carbon fixation. See paragraph [0018] [0027]. Reed indicates that the biochemical reactions involve the same electrochemical energy, including the same electron donors/acceptors. See paragraph [0046] [0052]. Reed indicates that the chemical reactants undergo the same biochemical changes as those described in the claim. See paragraph [0269]. Although Reed does not appear to state that the increased partial pressure improves the kinetics of the reaction, Reed provides for the same increase in partial pressure, and thusly Reed must also inherently teach this functionality. See paragraph [0434].
With respect to claim 1, Reed appears to teach a method that is consistent with that claimed. Although the instant claim is quite verbose, it appears as though each limitation has been met by Reed’s disclosure.
With respect to claim 3, Reed teaches carbon dioxide. See paragraph [0002].
With respect to claims 4-7, Reed teaches the chemoautrotroph knallgas microorganism: Cupriavidus necator. See paragraph [0031] [0032] [0034].
With respect to claims 8 and 9, Reed teaches the same bioreactor conditions as those claimed. See paragraph [0231] [0233] [0234].
With respect to claim 11, Reed teaches the same gaseous recirculation loop/ See paragraph [0241].
With respect to claim 12, Reed teaches the electrolysis of water using the same conditions. See paragraph [0055].
With respect to claim 13, Reed teaches that the oxygen is acquired through water electrolysis. See paragraph [0268].
With respect to claims 14 and 15, Reed teaches generating electron donors and acceptors using the same means as those claimed. See paragraph [0053] [0054].
With respect to claim 16, Reed teaches the same bioreactors. See paragraph [0221].
With respect to claim 17, Reed appears to describe the same impeller design. See paragraph [0232] [0241] [0244].
Claim Rejections - 35 USC § 102/103
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 and 25-32 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Reed, et al (PGPub 2020/0165733 [IDS Reference]). See the discussion of Reed above.
With respect to claim 2, Reed teaches that the substrate gas is supplied at 15 psig, which should be greater than 1 bar gauge (14 psig). If this is not what Reed taught, Reed is clear that increased partial pressure improves kinetics. See paragraph [0434]. As such, Reed either anticipates the claimed limitation, or provides the ordinary artisan to test increased pressures to determine where the improved kinetics lie.
With respect to claim 25, Reed teaches the same hydrogen or CO-oxidizing microorganisms. See paragraph [0211]. With the same oxygen sensors. See paragraph [0258] [0268]. Reed appears to use the same gas manifold as that claimed. See paragraph [0342] [0343]. Reed provides for a more detailed look at the structure of the reactor, which appears consistent with that claimed. See Figure 10. Based upon the claimed structure, and that presented in Reed, it appears as though the claimed structure is anticipated by Reed. If it can be shown that these are not identical, between the teaching of Reed, and the fact that the ordinary artisan possesses ample knowledge in the instant field, these structural limitations would be obvious to the ordinary artisan. See MPEP 2141.03.
With respect to claims 26 and 27, Reed teaches “controlled addition of oxygen,” which appears to describe the limitation (see the 35 USC 112(b) rejection). See paragraph [0173]. If this is not what Reed teaches, the ordinary artisan understands gas flow rates and can control the flow rate to optimize a culture.
With respect to claim 28, Reed teaches using ammonium hydroxide. See paragraph [0260].
With respect to claim 29, Reed teaches the same sensors and mixers. See paragraph [0233] [0241] [0258] [0268].
With respect to claim 30, Reed teaches automated culture media addition. See paragraph [0233] [0268]. Reed either anticipates the claimed structural elements, or provides for structures that are different, but provide for identical functions, thereby providing obvious variants.
With respect to claim 31, Reed measures optical density, and as such, must have an optical density sensor. See paragraph [0072]. The ordinary artisan would find it obvious to control nutrient/media input, depending on the optical density of the sample. The ordinary artisan understands that providing a sample at a set density level would require control of the nutrients.
With respect to claim 32, Reed teaches the same gas-permeable barrier, using the same microorganisms. See paragraph [0241].
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/823,534 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims provide for overlapping inventions of biological conversion of inorganic or organic carbon, as a gas substrate, wherein the microorganisms utilize the same biosynthetic pathways.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/089,103 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claims provide for overlapping inventions of biological conversion of inorganic or organic carbon, as a gas substrate, wherein the microorganisms utilize the same biosynthetic pathways.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sefton (PGPub 2013/0065285); Smith, et al (PGPub 2019/0300838); Sefton, et al (PGPub 2019/0300844).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID W BERKE-SCHLESSEL/ Primary Examiner, Art Unit 1651
