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
Claims 8, 14, 16-17, 19 and 21-31 are canceled. Claims 32-33 are new. Claims 1-7, 9-13, 15, 18, 20 and 32-33 are pending and under consideration in this action.
Priority
The instant claims are entitled to an effective filing date of 03/28/2023.
Specification
Abstract: Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Line 1 of the abstract filed 06/29/2026 states a repetition of information given in the title, “process and plant”. Therefore, the statement should be deleted.
Specification: The use of the terms Brightwell Aquatics [0141], Draeger (sic. Dräger) [0082],which are trade names or marks used in commerce, have been noted in this application. The terms should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Objections to the Specification
Applicant argues that the abstract was amended to read “Described herein are a process and plant for”. See the remarks p. 9 para. 7.
This argument is not persuasive because MPEP 608.01(b)(I)(C) indicates that the language of the abstract “should not repeat information given in the title”. Since the title of the invention is Process and Plant, the amended abstract still repeats information given in the title. To obviate this objection, the amendment can be amended to recite something to the effect of: Described herein [[are]]is a process . Also described herein is a[[the]] plant comprising means in the form of continuous flow methodology apparatus for selecting at least one hydrogen producing microorganism and/or for selecting at least one microbiological condition conducive to the thriving of the microorganism; and means for supplying the at least one hydrogen producing microorganism into the hydrocarbonaceous deposit.
Applicant argues that, as set forth in MPEP 608.01(v), “Examiners are authorized to permit the use of the trademark if it is distinguished from common descriptive nouns by capitalization. If the trademark has a fixed and definite meaning, it constitutes sufficient identification unless some physical or chemical characteristic of the article or material is involved in the invention”. See the remarks the paragraph spanning pgs. 9-10. Applicant asserts that the terms “Brightwell Aquatics” [0141] and “Draeger” [0082] have been properly capitalized and have a fixed and defined meaning to one skilled in the art. See the remarks p. 10 para. 1.
This argument is not persuasive because the terms are not properly capitalized in accordance with MPEP 608.01(v)(II), which states that: Marks should be identified by capitalizing each letter of the mark (in the case of word or letter marks) or otherwise indicating the description of the mark (in the case of marks in the form of a symbol or device or other nontextual form). To obviate this objection, “Brightwell Aquatics” [0141] and “Draeger” [0082] can be properly capitalized to BRIGHTWELL AQUATICS and DRAEGER respectively.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-7, 9-13, 15, 18, 20 and 32-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The claims, as amended, are drawn to a genus of non-native microorganisms that preferentially produce hydrogen over methane. Claims 1-7, 9-13, 15, 18, 20 and 32-33 do not limit the structure of the microorganism that must preferentially produce hydrogen over methane, nor do the claims substantially limit the hydrocarbonaceous deposit from which the microorganism is required to be a non-native. According to the instant specification, a "non-native" microorganism does not occur naturally at the site, or does not occur naturally in abundance at the site. Furthermore, the specification discloses that an "abundance" may be defined as comprising, in a sample taken from the site, over 10%, over 5% or over 1% w/w of all microorganisms in the sample. See [0039]. The specification does not disclose a representative number of species of the claimed genus by reduction to practice, and does not provide adequate guidance with regard to the structural features of the microorganism that is required to provide the recited properties. Therefore, one of skill cannot immediately envision which hydrogen producing microorganisms will be both non-native and have the required functional characteristics, and one could not conclude that Applicant was in possession of the claimed genus at the time the filing, as discussed more fully below.
For claims drawn to a genus, MPEP § 2163(3)(a)(ii) indicates 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, reduction to drawings, or by disclosure of relevant identifying characteristics, i.e., 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. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
The instant specification reduces to practice one example of an oil well that is modified by the introduction of an exogenous microbial population. In example 1, the specification teaches conditioning a Berea sandstone core under anaerobic conditions with an oil representative of an oil sample extractable from the well. See [0130]. Table 2 shows the indigenous microbial population representative of Well 2. See [0131] and the table below. Based on the percentages provided in table 2, the total indigenous microbial population accounted for is 57.6%. Furthermore, the specification teaches adding a nutrient/microbial consortium package to [oil] well 2. See [0135]. The consortium is prepared by combining hydrogen producing microorganisms selected by means of core flood methodology to be different from the indigenous microbial populations, and for their capability to digest hydrocarbons to yield hydrogen in preference to methane. See [0132]. The exogenous microbial population introduced into well 2 is shown in table 4 below.
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MPEP 2163(3)(a)(ii) states that “the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation. Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date”. Considering the lack of guidance provided in the specification, one would appraise support from the state of the art to extrapolate the correlation between non-native microorganism structure and the function of preferentially producing hydrogen over methane.
With respect to the state of the art on non-native microorganisms, Nikolova (Front. Microbiol. 2020, 10:2996) teaches that indigenous microbial community structures in oil reservoirs is expected to vary as each reservoir is different in terms of depth, temperature, pressure, salinity and other characteristic features. Most studies exploring microbial communities use culture-based methods to recover and identify individual oil degrading isolates and do not provide complete information of how these communities are structured. Furthermore, Nikolova suggests that the process of drilling and water-flooding reservoirs likely introduces organisms. See p. 12 para. 2 in the left column. Thus, Nikolova illustrates the unpredictability of determining which microorganisms are native to hydrocarbonaceous deposits.
With respect to the state of the art on microorganisms that preferentially produce hydrogen over methane, Nikolova discloses that methane and hydrogen gas are produced by species of Clostridium and Enterobacter, as well as by the archaeon Methanobacterium. See p. 5 first passage. However, Nikolova also suggests that the growth of the microorganisms and their effects, including metabolic products, depend on any number of several factors, such as: (i) pressure, porosity and permeability, temperature, pH, dissolved solids, and salinity of a reservoir; (ii) availability of nutrients to the bacteria; (iii) the specific type of microorganisms injected into the reservoir. See p. 4 right column first passage. Moreover, Nikolova suggests that even when samples are collected from a reservoir for analysis and experimentation, ex situ, the behavior and activities of the microorganisms in a laboratory setting may not be a perfect representation to that in the reservoir. See p. 11 left column last passage. Thus, Nikolova illustrates the unpredictability of a microorganism’s preferential metabolite production because such production may vary depending on environmental conditions.
In view of the prior art, the instant disclosure does not satisfy the written description requirement because the species disclosed do not adequately represent the substantial variation within the claimed genus. Prior to the effective filing date of the instantly claimed invention, it was well known that microbial communities and their metabolites can vary depending on the environmental conditions of the hydrocarbonaceous deposit, as indicated by Nikolova. The specification reduces to practice one example of an exogenous microbial consortium that is capable of digesting hydrocarbons to yield hydrogen in preference to methane. While general knowledge in the art at the time of filing may have allowed one of skill in the art to identify hydrogen producing microorganisms, one skilled in the art could not have reasonably predicted which microorganisms would be both non-native (as defined in the specification) and capable of preferentially producing hydrogen over methane.
Claim Rejections - 35 USC § 112(b)
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 1-7, 9-13, 15, 18, 20 and 32-33 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 recites “is selected by means of continuous flow methodology” in lines 6-7, which renders the claim indefinite because it is unclear how the recitation confers a structural, material, or manipulative difference on the scope of the claim.
As added by amendment, claim 1 recites “in fluid communication” in line 4, which renders the scope of claim 1 indefinite, because “in fluid communication” is not an art recognized phrase and the specification does not provide a sufficient definition. The specification discloses that the phrase “into the vicinity” is to be construed as the at least one hydrogen producing microorganism being introduced in fluid communication with the hydrocarbonaceous deposit. See [0030]. This definition is insufficient because the description does not clearly indicate how “in fluid communication” structurally limits the required introduction step.
Claims 2-7, 9-13, 15, 18, 20 and 32-33 depend from claim 1 and are rejected for the reasons set forth above.
Claim 3 recites “the site” in line 3, which renders the claim indefinite because it is unclear whether the claim is referencing the hydrocarbonaceous deposit before or after the modification step recited in claim 1 lines 3-4.
Claims 4-7, and 9-11 depend from claim 3 and are rejected for the reason set forth above.
Claim 15 recites a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitations “a microorganism” in lines 3, and 10 and “that microorganism” in line 12, and the claim also recites “at least one hydrogen producing microorganism” in lines 1-2 which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Rejection of claims 1-7, 9-13, 15, 18, 20 and 32-33 under 35 U.S.C. 112(b)
Applicant argues that the amended claims are clear. See the remarks p. 10 para. 7.
This argument is not persuasive because the amendment filed 06/29/2026 did not address the maintained 112(b) rejections of claims 1, 3 and 15 (and dependent claims) set forth above. Furthermore, the claim 1 amendment necessitated new grounds of rejection.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 fails to include all the limitations of claim 1 from which it depends. Claim 1 requires the at least one hydrogen producing microorganism to comprise a non-native microorganism that preferentially produces hydrogen over methane. Claim 15 recites “the at least one hydrogen producing microorganism is a) a microorganism not naturally present in the hydrocarbonaceous deposit; and/or b) a microorganism naturally present in the hydrocarbonaceous deposit but genetically modified to increase relative to the naturally present microorganism its propensity for hydrogen production by the metabolization by that microorganism of one or more hydrocarbons contained within the hydrocarbonaceous deposit”. As such, claim 15 does not require the at least one hydrogen producing microorganism to comprise a non-native microorganism that preferentially produces hydrogen over methane.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Arguments
Applicant's arguments filed 06/29/2026 with respect to the rejection of claim 15 under 35 U.S.C. 112(d) have been fully considered, but they do not apply to the new grounds of rejection set forth above.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7, 9-13, 15, 18, 20 and 32-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Each step described below is in reference to the subject matter eligibility test for products and processes (MPEP 2106).
Claim 1 recites “A process”, which is one of the statutory categories (Step 1: Yes).
Claim 1, as amended, requires “the at least one hydrogen producing microorganism is selected, by means of continuous flow methodology” in lines 6-8. Under the broadest reasonable interpretation, this step entails mentally selecting at least one hydrogen producing microorganism or at least one microbiological condition based on a study of continuous flow methods. Accordingly, this selection step is an abstract idea categorized as a mental process judicial exception (MPEP 2106.04(a)(2)(III)) (Step 2A Prong 1: Yes).
Besides the abstract idea, claim 1 includes the active method step of modifying the composition of the hydrocarbonaceous deposit through the introduction into the hydrocarbonaceous deposit or in fluid communication with the hydrocarbonaceous deposit of at least one hydrogen producing microorganism, wherein the at least one hydrogen producing microorganism comprises a non-native microorganism that preferentially produces hydrogen over methane. This step is recited at a high level of generality such that the step reasonably encompasses the introduction of any microorganism that preferentially produces hydrogen over methane into or near a hydrocarbon source. At best this additional active method step of claim 1 constitutes as an insignificant extra-solution activity for the purpose of applying the abstract idea.
Claim 2 limits the continuous flow methodology to core flood and/or sandpack methodology. This limitation only serves to narrow the type of input information that can be used to perform the abstract idea. As such, the limitation of claim 2 is an attempt to generally link the use of the abstract idea to a particular technological environment.
Claim 3 requires the continuous flow methodology to comprise extracting a material sample from the site of hydrocarbonaceous deposit or selecting a representative sample from the hydrocarbonaceous deposit, and subjecting the sample to an analysis determinative of its response to microbiological conditions. Since the term methodology encompasses the study of methods, under the broadest reasonable interpretation, claim 3 merely describes steps included in the study of core flooding and/or sandpack method(s). At best, claim 3 requires extracting or selecting any material from a site and subjecting that material to a microbiological condition for the purpose of determining a response; such steps amount to data gathering.
Claim 4 requires the material sample to comprise a geological, mineralogical and/or a hydrocarbonaceous sample. Claim 5 requires the extracted or selected sample to be representative of the on-site material in terms of its geochemical or geomineralogical characteristics. The elements of claims 4 and 5 fail to meaningfully limit the claimed process, because the elements are merely an attempt to generally link the abstract idea to the technical field of geology.
Claim 6 requires the material sample to be subjected to determinative analysis on the site of the hydrocarbonaceous deposit. Claim 7 requires the determinative analysis to comprise maintaining the material sample under conditions of temperature, pressure and/or chemical environment that replicate the temperature, pressure and/or chemical environment conditions of the site of the hydrocarbonaceous deposit from which the material sample was extracted; and determining a response of the material sample to one or more microbiological conditions. Claims 6 and 7 do not add additional elements that could integrate the judicial exception into a practical application, because the claims themselves encompass mentally performed analyses.
Claim 9 requires the desirable conditions to be a pressure up to 10,000 psi. The limitations of claim 9 is recited with a high level of generality because the site location and extent of the replication are not particularly limited. As such, claim 9 fails to meaningfully limit the judicial exception.
Claim 10 requires the material sample extraction or material sample selection to be conducted under anaerobic conditions. Since the act of selecting a sample can practically be performed mentally, claim 10 encompasses an abstract idea, so the claim cannot integrate the judicial exception into a practical application. Claim 11 requires the extracted material sample to be maintained under anaerobic conditions in any interim period between sample extraction or selection and its subjection to core flood and/or sandpack methodology. Claim 12 requires the core flood and/or sandpack methodology to take place under anaerobic conditions. The additional elements of claims 11-12 are data gathering steps because the purpose of maintaining anaerobic conditions before and during core flooding and/or sandpacking is to aid in the selection step, which is the abstract idea. As such, the limitations of claims 11-12 do not integrate the judicial exception into a practical application.
Claims 13 limits the means by which the at least one hydrogen producing microorganism is selected. However, claim 13 does not require any particular structural element or active method step that could integrate the judicial exception into a practical application because the claims are merely instructions for performing the abstract idea.
Claim 15 is an attempt to limit the at least one hydrogen producing microorganism, however the claim is recited with a high level of generality such that the claim encompasses any microorganism not naturally present in the hydrocarbonaceous deposit and/or a microorganism naturally present in the hydrocarbonaceous deposit but genetically modified to increase its propensity for hydrogen production by metabolizing hydrocarbons in the deposit.
Claim 18 requires the at least one hydrogen producing microorganism to be accompanied during, after or upon its introduction by at least one nutrient selected to promote the growth of said at least one hydrogen producing microorganism. This is an insignificant post-solution activity, because the step is merely an application of the abstract idea. Claim 20 requires the at least one hydrogen producing microorganism to be accompanied during, after or upon its introduction by at least one pH regulator. This is an insignificant post-solution activity, because the step is merely an instruction to apply the results of the abstract idea.
Claim 32 requires the hydrocarbonaceous deposit to be a liquid hydrocarbonaceous deposit. This limitation merely serves to generally link the abstract idea to its field of use, so the limitation does not amount to significantly more than the exception itself, and cannot integrate the judicial exception into a practical application.
Claim 33 requires the material sample to be subjected to determinative analysis off the site of the hydrocarbonaceous deposit. As such, claim 33 does not add additional elements that could integrate the judicial exception into a practical application, because the claim itself encompasses mentally performed analyses.
Accordingly, claims 1-7, 9-13, 15, 18, 20 and 32-33 do not integrate the judicial exception into a practical application because the additional elements at most amount to either data gathering steps or instructions to implement the judicial exception. (Step 2A Prong 2: No)
The additional elements fail to amount to an inventive concept in view of the routine, well understood and conventional activities in the art. Broussard (US 2023/0099645, filed 09/23/2022) teaches a process comprising the step of modifying the composition of the deposit by the introduction into the deposit of at least one non-native hydrogen producing microorganism selected positively to diversify the microbiological abundance of hydrogen-producing microorganisms in the deposit and for the preferential production of hydrogen over methane. See claim 1 of Broussard. Stephen (Rsc Advances, 2014, 4(43), 22779-22791) teaches a core flooding experiment (i.e. continuous flow methodology) to simulate in situ, anaerobic reservoir conditions (i.e. microbial conditions). See p. 22780 section 2.1 first two sentences. Scott (US 2004/0033557) teaches injecting into fractures a consortium of selected anaerobic microorganisms. See claim 1 of Scott. Scott teaches selecting consortia including hydrogen producing organisms. See claim 3 of Scott. Thus, additional elements in claims 1-7, 9-13, 15, 18, 20 and 32-33 do not amount to more than a recitation of the words “apply it”(or an equivalent). (Step 2B: No)
For all of these reasons, claims 1-7, 9-13, 15, 18, 20 and 32-33 are not patent eligible.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered, but they are not persuasive.
Rejection of claims 1-7, 9-13, 15, 18, 20 and 32-33 under 35 U.S.C. 101
Applicant argues that the claimed process includes an active step of modifying the composition of the hydrocarbonaceous deposit through the introduction of at least one hydrogen producing microorganism, and therefore is not directed to an abstract idea. See the remarks p. 11 para. 4. Applicant asserts that the modification step is not a data gathering step. It is an active step where the at least one hydrogen producing microorganism, which was selected by means of continuous flow methodology is used to modify the composition of the hydrocarbonaceous deposit. See the remarks p. 11 para. 6.
This argument is not persuasive because the recited modification step of amended claim 1 is still an insignificant extra-solution activity. The rejection set forth above was only modified to address the amendment.
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.
Claims 1-7, 9-13, 15, 18, 20, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Stephen (Rsc Advances, 2014, 4(43), 22779-22791) in view of Broussard (US 2023/0099645, filed 09/23/2022), with evidence from McKay (Acta Pathol Microbiol Immunol Scand B. 1982 Jun;90(3):257-60)
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claim 1, Stephen discloses that coal includes a mix of hydrocarbons transformed by fermenters to H-2. See p. 22784 left column second full paragraph. Stephen teaches packing crushed coal inside a core holder. See p. 22782 the first paragraph of section 2.4. Stephen teaches inoculating the coal pack with a microbial culture. See p. 22782 section 2.4 second paragraph. As shown in figure S6, the core includes Clostridium (i.e. hydrogen producing). Stephen discloses that the inoculum for the core flooding is coal-derived, which suggests that the inoculum is the natural consortium isolated from the coal cuttings. See section 2.3. Furthermore, Stephen teaches selecting physical parameters of a core flooding experiment to simulate in situ, anaerobic reservoir conditions (i.e. microbial conditions). See p. 22780 section 2.1 first two sentences.
Evidentiary reference McKay teaches the hydrogen production of Clostridium. See the abstract. As shown in table 1, Clostridium is capable of preferentially producing hydrogen over methane.
Stephen does not teach at least one hydrogen producing microorganism that comprises a non-native microorganism.
Broussard teaches a process for the microbiological production of hydrogen from a hydrocarbon-rich deposit, said process comprising the step of modifying the composition of the deposit by the introduction into the deposit of at least one non-native hydrogen producing microorganism selected positively to diversify the microbiological abundance of hydrogen-producing microorganisms in the deposit and for the preferential production of hydrogen over methane. See claim 1 of Broussard. Broussard discloses that the at least one non-native hydrogen producing microorganism has a genus selected from a group that includes Clostridium. See claim 12 of Broussard. In example 3, Broussard teaches increasing hydrogen production from a subterranean formation having low amount of hydrogen producing microorganisms. See [0163]. Broussard teaches determining that less than 1% of the microorganisms present in the subterranean formation produce hydrogen. Broussard teaches adding cells of a nonnative hydrogen producing microorganism, such as Clostridium. Broussard suggests that Clostridium is compatible with pH of 5-8 and temperature of 77-95 F. See [0167].
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute Broussard’s non-native hydrogen producing Clostridium for the microbial culture introduced into the hydrocarbonaceous deposit of Stephen. One of ordinary skill in the art would have been motivated to do so because Broussard suggests that the nonnative Clostridium is compatible with a range of pH and temperature conditions. There would have been a reasonable expectation of success because Stephen demonstrates modifying a coal hydrocarbonaceous deposit by introducing a naturally-occurring Clostridium under in situ conditions, and Broussard demonstrates introducing the nonnative Clostridium into a subterranean formation.
Although Stephen and Broussard do not explicitly teach a selection that is aided by means of continuous flow methodology, Stephen teaches selecting conditions for a core flooding experiment, which is a type of continuous flow methodology. It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to apply the continuous flow methodology in the selection of the at least one hydrogen producing microorganism, i.e. Clostridium, as suggested by Stephen.
Regarding claim 2, Stephen teaches a core flooding experiment. See the abstract.
Regarding claim 3, Stephen teaches collecting (i.e. extracting) coal samples from a mine. See p. 22781 section 2.2 first sentence. Stephen teaches inoculating the coal pack with a microbial culture. See the second paragraph of section 2.4. Stephen teaches collecting effluent samples from the core flooding experiment and analyzing each sample for gas production and composition as well as for the presence of metabolites (i.e. response to microbial conditions). See p. 22782 section 2.4 third paragraph.
Regarding claim 4, Stephen teaches collecting coal samples (i.e. geological, mineralogical and hydrocarbonaceous) from a mine. See p. 22781 section 2.2 first sentence.
Regarding claim 5, Stephen teaches collecting coal samples from a mine (i.e. on site). See p. 22781 section 2.2 first sentence.
Regarding claim 6, Stephen teaches coal samples of subbituminous rank collected from a mine face. See p. 22781 section 2.2 first sentence. Stephen teaches inoculating the coal pack with a microbial culture. See the second paragraph of section 2.4. Stephen teaches collecting effluent samples from the core flooding experiment and analyzing each sample for gas production and composition as well as for the presence of metabolites. See p. 22782 section 2.4 third paragraph. Stephen indicates that the effluent analysis is off site because Stephen teaches setting up the experiment with the collected coal packed inside a holder (see p. 22782 section 2.4 first sentence). For gas analysis, Stephen teaches gas chromatography. See section 2.5.
Stephen does not teach a material sample subjected to determinative analysis on the site of the hydrocarbonaceous deposit.
Broussard teaches opening a well and collecting samples off the gas flow line for analysis with respect to H2 content on a gas chromatography. See [0195]. Broussard teaches field gas samples collected in gas sampling bags connected via tubing to a sampling valve directly off the of wellhead flow line. See [0196].
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to apply Broussard’s analysis to Stephen’s hydrocarbonaceous site. One of ordinary skill in the art would have been motivated to do so because Broussard suggests that gas can be directly extracted from the field. There would have been a reasonable expectation of success because Stephen demonstrates conducting a determinative analysis on a material gas sample, and Broussard suggests that field gas samples can be analyzed directly.
Regarding claim 7, Stephen teaches choosing experimental parameters for each effluent sample. The operating pressure is set at 3447 kPa(g) (500 psig). The pressure is reduced to 1724 kPa(g) (250 psig) for the 4th and 5th effluent sample to investigate the effect of pressure on methanogenesis (i.e. a response). See p. 22783 right column section 3.2 first two sentences. Furthermore, Stephen teaches selecting experimental physical parameters designed to simulate in situ (i.e. replicate conditions of the site), anaerobic reservoir conditions of elevated pressure, but ambient temperature. See p. 22780 right column section 2.1 second sentence.
Regarding claim 9, Stephen teaches an operating pressure of 500 psig and 250 psig. See p. 22783 right column section 3.2 first two sentences.
Regarding claim 10, Stephen teaches collecting coal samples from a mine. See p. 22781 section 2.2 first section. Stephen suggests that the selected coal samples were under anaerobic conditions because Stephen teaches simulating anaerobic reservoir conditions in the core-flooding experiment. See p. 22780 section 2.1 second sentence.
Regarding claim 11, Stephen teaches transferring the inoculum inside U-PA-2 under anaerobic conditions. See the sentence spanning pages S1-S2. U-PA-2is a piston accumulator. See figure 1.
Regarding claim 12, Stephen teaches maintaining the core flooding system under anaerobic conditions. See p. 22780 section 2.1.1 first sentence.
Regarding claim 13, Broussard teaches a process for the microbiological production of hydrogen from a hydrocarbon-rich deposit, said process comprising the step of modifying the composition of the deposit by the introduction into the deposit of at least one non-native hydrogen producing microorganism selected positively to diversify the microbiological abundance of hydrogen-producing microorganisms in the deposit and for the preferential production of hydrogen over methane. See claim 1 of Broussard.
Regarding claim 15, Broussard teaches a microorganism not naturally present in the hydrocarbon-rich deposit and/or a microorganism naturally present in the hydrocarbon-rich deposit but genetically modified to increase (relative to the naturally present microorganism) its propensity for hydrogen production by the metabolization by that microorganism of one or more hydrocarbons contained within the deposit. See claim 2 of Broussard.
Regarding claim 18, Stephen teaches inoculating the coal pack with a microbial culture. See p. 22781 section 2.4 second paragraph. After the incubation period, the coal pack is continuously flooding it with a mineral salt medium with tryptone. See p. 22781 section 2.4 second paragraph.
Interpretation: instant claim 20 requires a pH regulator. The instant specification discloses that phosphate can act as a buffering agent. See [0097].
Regarding claim 20, Stephen teaches fixing the microbial treated coal samples with a fixative containing phosphate buffer. See p. S6 section 9 third sentence.
Regarding claim 32, Stephen teaches coal samples of subbituminous rank collected from a mine face. See p. 22781 section 2.2 first sentence. Stephen discloses that core flooding experiments are commonly conducted for studies related to the crude oil. See p. 22780 left column last passage.
Stephen does not teach liquid hydrocarbonaceous deposit.
Broussard teaches the hydrocarbon-rich deposit is a liquid hydrocarbon-rich deposit. See claim 11 of Broussard. Broussard teaches that the hydrocarbon-rich deposit is preferably a liquid including oil. See [0037].
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to substitute Broussard’s liquid hydrocarbonaceous deposit for Stephen’s solid hydrocarbonaceous deposit. One would be motivated to do so because Broussard suggests that oil liquid deposits are hydrocarbon rich. There would have been a reasonable expectation of success because Stephen suggests that oil is commonly used for core flooding.
Regarding claim 33, Stephen teaches inoculating the coal pack with a microbial culture. See the second paragraph of section 2.4. Stephen teaches collecting effluent samples from the core flooding experiment and analyzing each sample for gas production and composition as well as for the presence of metabolites. See p. 22782 section 2.4 third paragraph. Stephen indicates that the effluent analysis is off site because Stephen teaches setting up the experiment with the collected coal packed inside a holder (see p. 22782 section 2.4 first sentence).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered to the extent that they might apply to the new grounds of rejection set forth above, but they are unpersuasive.
Rejection of claims 1-7, 9-13, 15, 18, 20 and 32-33 under 35 U.S.C. 103
Applicant argues that Stephen relates to a coal pack inoculated with a methanogenic microbial culture. The changes in the physical properties of the coal pack during the core flooding suggested coal bioconversion to methane under experimental conditions (Stephen, Abstract). See the remarks p. 12 para. 2. As such, Applicant asserts that Stephen fails to disclose the claimed methods, at least because Stephen fails to include wherein the at least one hydrogen producing microorganism comprises a non-native microorganism that preferentially produces hydrogen over methane. See the remarks p. 12 para. 3.
This argument is not persuasive because Stephen suggests that the microbial production of H2 is involved in the production of methane (CH4). See p. 22784 para. 2. Furthermore, Stephen teaches a core sample that includes Clostridium. See figure S6. Therefore, the teachings of Stephen are not limited to methane producing microorganisms. Furthermore, the instant claims recite the open-ended term “comprising” in line 2. Therefore, the instant claims encompass processes in which methane is produced in addition to hydrogen.
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.
Claims 1-7, 9-13, 15, 18, 20 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of copending Application No. 18/619,150 in view of Stephen (Rsc Advances, 2014, 4(43), 22779-22791), and Scott (US 2004/0033557).
Copending claim 1 recites a process for the microbial production of hydrogen from the site of hydrocarbonaceous deposit, the process comprising: modifying the composition of the deposit through the introduction into or into the vicinity of the deposit of at least one hydrogen producing microorganism, wherein the at least one hydrogen producing microorganism is provided on site by means of a transportable microbiological incubator.
Copending claim 2 recites a process according to claim 1,wherein the at least one hydrogen producing microorganism comprises a non-native microorganism.
Copending claim 7 recites a process according to claim 1, wherein the hydrogen producing microorganism contained in the transportable microbiological incubator is selected positively to diversify the microbial abundance of hydrogen-producing microorganisms in the deposit when charged thereto.
Copending claim 8 recites a process according to claim 1, wherein the hydrogen producing microorganism contained in the transportable microbiological incubator is selected for the preferential production of hydrogen over methane.
Copending claim 9 recites the process according to claim 1, wherein the at least one hydrogen producing microorganism is: a. a microorganism not naturally present in the hydrocarbonaceous deposit; and/or b. of a strain of microorganisms not naturally present in the hydrocarbonaceous deposit; and/or c. of a species of microorganisms not naturally present in the hydrocarbonaceous deposit; and/or d. of a genus of microorganisms not naturally present in the hydrocarbonaceous deposit; e. a microorganism naturally present in the hydrocarbonaceous deposit; and/or f. a microorganism naturally present in the hydrocarbonaceous deposit but genetically modified to increase (relative to the naturally present microorganism) its propensity for hydrogen production by the metabolization by that microorganism of one or more hydrocarbons contained within the deposit.
Copending claim 10 recites the process according to claim 1, wherein the at least one hydrogen producing microorganism is one of a plurality of different hydrogen producing microorganisms, strains of microorganisms, species of microorganisms, genera of microorganisms and/or naturally occurring, optionally genetically modified, organisms introduced into the deposit.
Copending claim 11 recites the process according to claim 10, wherein the plurality is greater than two, greater than three, greater then [sic. than] four, greater than five and/or greater than ten.
Copending claim 12 recites the process according to claim 11, wherein the at least one hydrogen producing microorganism is introduced into the deposit from the transportable microbiological incubator and accompanied during, after or upon its introduction by at least one nutrient selected to promote the growth of said microorganism and introduced into the deposit for that purpose, optionally wherein the at least one nutrient is are supplied from a nutrient reservoir, optionally a nutrient reservoir contained within the incubator.
Copending claim 13 recites the process according to claim 1, wherein the at least one hydrogen producing microorganism is introduced into the deposit and accompanied during, after or upon its introduction by at least one pH regulator selected to regulate the pH environment in which the microorganism resides in the deposit and introduced into the deposit for that purpose.
Copending claim 19 recites the process according to claim 1, wherein conditions within the incubator at least to some extent replicate one or more conditions (of temperature, pressure and/or chemical environment) of the site of hydrocarbonaceous deposit.
The copending claims lack: the at least one hydrogen producing microorganism is selected by means of continuous flow methodology (relevant to instant claim 1); wherein the continuous flow methodology is core flood and/or sandpack methodology (relevant to instant claim 2); wherein the continuous flow methodology comprises extracting a material sample from the site of hydrocarbonaceous deposit or selecting a material sample representative of a material from the site of hydrocarbonaceous deposit and subjecting the sample to analysis determinative of its response to microbiological conditions (relevant to instant claim 3); wherein the material sample comprises a geological, mineralogical and/or a hydrocarbonaceous sample (relevant to instant claim 4); wherein sample is extracted from the site of the hydrocarbonaceous deposit or otherwise selected to be representative, in at least one of its geochemical or geomineralogical characteristics, of on-site material (relevant to instant claim 5); wherein the material sample is subjected to determinative analysis on the site of the hydrocarbonaceous deposit (relevant to instant claim 6); wherein the determinative analysis comprises maintaining the sample under desirable conditions of temperature, pressure and/or chemical environment that replicate the temperature, pressure and/or chemical environment conditions of the site of the hydrocarbonaceous deposit from which the material sample was extracted; and determining a response of the sample to one or more microbiological conditions (relevant to instant claim 7); wherein the desirable conditions comprise a pressure up to 10,000 psi (relevant to instant claim 9); wherein the material sample extraction or material sample selection is conducted under anaerobic conditions (relevant to instant claim 10); wherein the extracted material sample is maintained under anaerobic conditions in any interim period between sample extraction or selection and its subjection to core flood and/or sandpack methodology (relevant to instant claim 11); wherein the core flood and/or sandpack methodology takes place under anaerobic conditions (relevant to instant claim 12) a hydrogen producing microorganism selected by means of core flood and/or sandpack methodology (relevant to instant claim 13); wherein the hydrocarbonaceous deposit is a liquid hydrocarbonaceous deposit (relevant to instant claim 32); wherein the material sample is subjected to determinative analysis off the site of the hydrocarbonaceous deposit (relevant to instant claim 33).
However, Stephen teaches selecting physical parameters of a core flooding experiment to simulate in situ, anaerobic reservoir conditions. See p. 22780 section 2.1 first two sentences (relevant to instant claims 1-2). Stephen teaches collecting coal samples from a mine. See p. 22781 section 2.2 first sentence. Stephen teaches analyzing effluent samples from a coal pack for metabolites. See p. 22782 section 2.4 third paragraph (relevant to instant claim 3-5). Scott teaches subbituminous-rank coal containing gasses based on isotopic analysis of gas samples and low gas contents. Scott discloses that monitoring wells would be indicative of metane and carbon dioxide being generated from the coal beds [i.e. on-site]. See [0060] (relevant to instant claim 6). Stephen teaches a pressure of 500 psig and 250 psig to investigate the effect of pressure on methanogenesis. See p. 22783 right column section 3.2 first two sentences. Furthermore, Stephen teaches simulating reservoir conditions, i.e. replicating. See p. 22780 right column section 2.1 (relevant to instant claims 7 and 9). Stephen teaches simulate anaerobic reservoir conditions. See p. 22780 right column section 2.1 second sentence (relevant to instant claim 10). Stephen teaches transferring the inoculum inside U-PA-2 under anaerobic conditions. See the sentence spanning pages S1-S2 (relevant to instant claim 11). Stephen teaches maintaining the core flooding system under anaerobic conditions. See p. 22780 section 2.1.1 first sentence (relevant to instant claim 12). Scott teaches that a combination of naturally occurring bacterial consortia and commercial bacterial consortia may be injected into organic sediments if the process maximizes methane or hydrogen production. See [0032] (relevant to instant claim 13). Scott teaches liquid hydrocarbon fuels. See [0008] (relevant to instant claim 32). Stephen teaches collecting effluent samples from the core flooding experiment and analyzing each sample for gas production and composition as well as for the presence of metabolites. See p. 22782 section 2.4 third paragraph. Stephen indicates that the effluent analysis is off site because Stephen teaches setting up the experiment with the collected coal packed inside a holder. See p. 22782 section 2.4 first sentence (relevant to instant claim 33).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to modify the process recited in the copending claims by applying the core flooding of Stephen, and by further substituting Scott’s liquid hydrocarbonaceous deposit for the hydrocarbonaceous deposit recited in the copending claims in order to produce hydrogen.
This is a provisional nonstatutory double patenting rejection.
Claims 1-7, 9-13, 15, 18, 20 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/694,972 in view of Stephen (Rsc Advances, 2014, 4(43), 22779-22791), and Scott (US 2004/0033557).
Copending claim 1 recites a process for the microbiological production of hydrogen from a hydrocarbon-rich deposit, said process comprising the step of modifying the composition of the deposit by the introduction into the deposit of at least one non-native hydrogen producing microorganism selected positively to diversify the microbiological abundance of hydrogen-producing microorganisms in the deposit and for the preferential production of hydrogen over methane.
Copending claim 2 recites the process according to claim 1, wherein the non-native hydrogen producing microorganism is: a. a microorganism not naturally present in the hydrocarbon-rich deposit; and/or b. of a strain of microorganisms not naturally present in the hydrocarbon-rich deposit; and/or c. of a species of microorganisms not naturally present in the hydrocarbon-rich deposit; and/or d. of a genus of microorganisms not naturally present in the hydrocarbon-rich deposit; and/or e. a microorganism naturally present in the hydrocarbon-rich deposit but genetically modified to increase (relative to the naturally present microorganism) its propensity for hydrogen production by the metabolization by that microorganism of one or more hydrocarbons contained within the deposit.
Copending claim 3 recites the process according to claim, wherein the at least one non-native hydrogen producing microorganism is one of a plurality of different non- native hydrogen producing microorganisms, strains of microorganisms, species of microorganisms, genera of microorganisms and/or naturally occurring but genetically modified organisms introduced into the deposit.
Copending claim 4 recites the process according to claim 3, wherein the plurality is greater than two.
Copending claim 5 recites the process according to claim 1 wherein the non-native hydrogen producing microorganism has a propensity to metabolize one or more hydrocarbons contained within the deposit to molecular hydrogen in preference to methane such that the yield of production of molecular hydrogen from the metabolization is higher than the yield of production of methane by at least 1%.
Copending claim 6 recites the process according to claim 1 wherein the non-native hydrogen producing microorganism is introduced into the deposit and accompanied during, after or upon its introduction by at least one nutrient selected to promote the growth of said microorganism and introduced into the deposit for that purpose.
Copending claim 9 recites the process according to claim 1 wherein the hydrogen producing microorganism is introduced into the deposit and accompanied during, after or upon its introduction by at least one pH regulator selected to regulate the pH environment in which the microorganism resides in the deposit and introduced into the deposit for that purpose.
The copending claims lack: the at least one hydrogen producing microorganism is selected by means of continuous flow methodology (relevant to instant claim 1); wherein the continuous flow methodology is core flood and/or sandpack methodology (relevant to instant claim 2); wherein the continuous flow methodology comprises extracting a material sample from the site of hydrocarbonaceous deposit or selecting a material sample representative of a material from the site of hydrocarbonaceous deposit and subjecting the sample to analysis determinative of its response to microbiological conditions (relevant to instant claim 3); wherein the material sample comprises a geological, mineralogical and/or a hydrocarbonaceous sample (relevant to instant claim 4); wherein sample is extracted from the site of the hydrocarbonaceous deposit or otherwise selected to be representative, in at least one of its geochemical or geomineralogical characteristics, of on-site material (relevant to instant claim 5); wherein the material sample is subjected to determinative analysis on the site of the hydrocarbonaceous deposit (relevant to instant claim 6); wherein the determinative analysis comprises maintaining the sample under desirable conditions of temperature, pressure and/or chemical environment that replicate the temperature, pressure and/or chemical environment conditions of the site of the hydrocarbonaceous deposit from which the material sample was extracted; and determining a response of the sample to one or more microbiological conditions (relevant to instant claim 7); wherein the desirable conditions comprise a pressure up to 10,000 psi (relevant to instant claim 9); wherein the material sample extraction or material sample selection is conducted under anaerobic conditions (relevant to instant claim 10); wherein the extracted material sample is maintained under anaerobic conditions in any interim period between sample extraction or selection and its subjection to core flood and/or sandpack methodology (relevant to instant claim 11); wherein the core flood and/or sandpack methodology takes place under anaerobic conditions (relevant to instant claim 12) a hydrogen producing microorganism selected by means of core flood and/or sandpack methodology (relevant to instant claim 13); wherein the hydrocarbonaceous deposit is a liquid hydrocarbonaceous deposit (relevant to instant claim 32); wherein the material sample is subjected to determinative analysis off the site of the hydrocarbonaceous deposit (relevant to instant claim 33).
However, Stephen teaches selecting physical parameters of a core flooding experiment to simulate in situ, anaerobic reservoir conditions. See p. 22780 section 2.1 first two sentences (relevant to instant claims 1-2). Stephen teaches collecting coal samples from a mine. See p. 22781 section 2.2 first sentence. Stephen teaches analyzing effluent samples from a coal pack for metabolites. See p. 22782 section 2.4 third paragraph (relevant to instant claim 3-5). Scott teaches subbituminous-rank coal containing gasses based on isotopic analysis of gas samples and low gas contents. Scott discloses that monitoring wells would be indicative of metane and carbon dioxide being generated from the coal beds [i.e. on-site]. See [0060] (relevant to instant claim 6). Stephen teaches a pressure of 500 psig and 250 psig to investigate the effect of pressure on methanogenesis. See p. 22783 right column section 3.2 first two sentences. Furthermore, Stephen teaches simulating reservoir conditions, i.e. replicating. See p. 22780 right column section 2.1 (relevant to instant claims 7 and 9). Stephen teaches simulate anaerobic reservoir conditions. See p. 22780 right column section 2.1 second sentence (relevant to instant claim 10). Stephen teaches transferring the inoculum inside U-PA-2 under anaerobic conditions. See the sentence spanning pages S1-S2 (relevant to instant claim 11). Stephen teaches maintaining the core flooding system under anaerobic conditions. See p. 22780 section 2.1.1 first sentence (relevant to instant claim 12). Scott teaches that a combination of naturally occurring bacterial consortia and commercial bacterial consortia may be injected into organic sediments if the process maximizes methane or hydrogen production. See [0032] (relevant to instant claim 13). Scott teaches liquid hydrocarbon fuels. See [0008] (relevant to instant claim 32). Stephen teaches collecting effluent samples from the core flooding experiment and analyzing each sample for gas production and composition as well as for the presence of metabolites. See p. 22782 section 2.4 third paragraph. Stephen indicates that the effluent analysis is off site because Stephen teaches setting up the experiment with the collected coal packed inside a holder. See p. 22782 section 2.4 first sentence (relevant to instant claim 33).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to modify the process recited in the copending claims by applying the core flooding of Stephen, and by further substituting Scott’s liquid hydrocarbonaceous deposit for the hydrocarbon-rich deposit recited in the copending claims in order to produce hydrogen.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered, but they are not persuasive.
Double Patenting Rejections
Applicant argues that the provisional double patenting rejections should be withdrawn for the reasons discussed with respect to the 103 rejection regarding Stephen and Scott. See the remarks p. 13 para. 3. Applicant argues that Stephen fails to disclose at least one hydrogen producing microorganism that comprises a non-native microorganism that preferentially produces hydrogen over methane. See the remarks p. 12 para 2. Applicant asserts that Scott fails to overcome the deficiencies of Stephen. See the remarks p. 12 para. 5. Furthermore, Scott relates to a method for conversion of organic compounds into methane. See the remarks p. 12 para. 6.
This argument is unpersuasive because the provisional double patenting rejections rely on the teachings recited in the copending claims as well as Stephen and Scott. Copending claim 2 of Application No. 18/619,150 recites at least one hydrogen producing microorganism comprises a non-native microorganism. Copending claim 8 of Application No. 18/619,150 recites the hydrogen producing microorganism contained in the transportable microbiological incubator is selected for the preferential production of hydrogen over methane. Furthermore, copending claim 1 of Application No. 18/694,972 recites a process for the microbiological production of hydrogen from a hydrocarbon-rich deposit, said process comprising the step of modifying the composition of the deposit by the introduction into the deposit of at least one non-native hydrogen producing microorganism selected positively to diversify the microbiological abundance of hydrogen-producing microorganisms in the deposit and for the preferential production of hydrogen over methane.
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 KIMBERLY C BREEN whose telephone number is (571)272-0980. The examiner can normally be reached M-Th 7:30-4:30, F 8:30-1:30 (EDT/EST).
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/K.C.B./Examiner, Art Unit 1657
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