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
The preliminary amendment filed 07/01/2024 is acknowledged. Claims 21-31 are canceled. Claims 1-20 are pending and under consideration in this action.
Priority
The instant claims are entitled to an effective filing date of 03/28/2023.
Nucleotide and/or Amino Acid Sequence Disclosures
REQUIREMENTS FOR PATENT APPLICATIONS CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCE DISCLOSURES
Items 1) and 2) provide general guidance related to requirements for sequence disclosures.
37 CFR 1.821(c) requires that patent applications which contain disclosures of nucleotide and/or amino acid sequences that fall within the definitions of 37 CFR 1.821(a) must contain a "Sequence Listing," as a separate part of the disclosure, which presents the nucleotide and/or amino acid sequences and associated information using the symbols and format in accordance with the requirements of 37 CFR 1.821 - 1.825. This "Sequence Listing" part of the disclosure may be submitted:
In accordance with 37 CFR 1.821(c)(1) via the USPTO patent electronic filing system (see Section I.1 of the Legal Framework for Patent Electronic System (https://www.uspto.gov/PatentLegalFramework), hereinafter "Legal Framework") as an ASCII text file, together with an incorporation-by-reference of the material in the ASCII text file in a separate paragraph of the specification as required by 37 CFR 1.823(b)(1) identifying:
the name of the ASCII text file;
ii) the date of creation; and
iii) the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(1) on read-only optical disc(s) as permitted by 37 CFR 1.52(e)(1)(ii), labeled according to 37 CFR 1.52(e)(5), with an incorporation-by-reference of the material in the ASCII text file according to 37 CFR 1.52(e)(8) and 37 CFR 1.823(b)(1) in a separate paragraph of the specification identifying:
the name of the ASCII text file;
the date of creation; and
the size of the ASCII text file in bytes;
In accordance with 37 CFR 1.821(c)(2) via the USPTO patent electronic filing system as a PDF file (not recommended); or
In accordance with 37 CFR 1.821(c)(3) on physical sheets of paper (not recommended).
When a “Sequence Listing” has been submitted as a PDF file as in 1(c) above (37 CFR 1.821(c)(2)) or on physical sheets of paper as in 1(d) above (37 CFR 1.821(c)(3)), 37 CFR 1.821(e)(1) requires a computer readable form (CRF) of the “Sequence Listing” in accordance with the requirements of 37 CFR 1.824.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed via the USPTO patent electronic filing system as a PDF, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the PDF copy and the CRF copy (the ASCII text file copy) are identical.
If the "Sequence Listing" required by 37 CFR 1.821(c) is filed on paper or read-only optical disc, then 37 CFR 1.821(e)(1)(ii) or 1.821(e)(2)(ii) requires submission of a statement that the "Sequence Listing" content of the paper or read-only optical disc copy and the CRF are identical.
Specific deficiencies and the required response to this Office Action are as follows:
Specific deficiency - This application fails to comply with the requirements of 37 CFR 1.821 - 1.825 because it does not contain a "Sequence Listing" as a separate part of the disclosure or a CRF of the “Sequence Listing.”.
Paragraphs [0101] and [0103] reference gene sequences, but there is no sequence listing of record, and no incorporation by reference statement or paper CRF of record.
Required response - Applicant must provide:
A "Sequence Listing" part of the disclosure; together with
An amendment specifically directing its entry into the application in accordance with 37 CFR 1.825(a)(2);
A statement that the "Sequence Listing" includes no new matter as required by 37 CFR 1.821(a)(4); and
A statement that indicates support for the amendment in the application, as filed, as required by 37 CFR 1.825(a)(3).
If the "Sequence Listing" part of the disclosure is submitted according to item 1) a) or b) above, Applicant must also provide:
A substitute specification in compliance with 37 CFR 1.52, 1.121(b)(3) and 1.125 inserting the required incorporation-by-reference paragraph, consisting of:
A copy of the previously-submitted specification, with deletions shown with strikethrough or brackets and insertions shown with underlining (marked-up version);
A copy of the amended specification without markings (clean version); and
A statement that the substitute specification contains no new matter.
If the "Sequence Listing" part of the disclosure is submitted according to item 1) c) or d) above, applicant must also provide:
A CRF in accordance with 37 CFR 1.821(e)(1) or 1.821(e)(2) as required by 1.825(a)(5); and
A statement according to item 2) a) or b) above.
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 03/27/2024 states “The invention concerns process and plant”, which includes both the implied phrase, “The invention concerns”, and 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.
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.
Paragraph [0013] of includes https://doi.org/10.1016/j.ijhydene.2021.11.118.
Claim Objections
Claims 2, 5, 7, 9, 11-12, 15, and 16-19 are objected to because of the following informalities:
Claim 2 recites “process for according” in line 1, which should be replaced with “process according” because the “for” is extraneous.
Claim 5 recites “- in at least one of its geochemical or geomineralogical characteristics -” in lines 2-3, in which the hyphens should be replaced with commas: “, in at least one of its geochemical or geomineralogical characteristics,” because commas are a more appropriate punctuation.
Claim 7 recites “the those” in line 2, which is redundant and should be replaced with either “the” or “those”.
Claim 9 recites “The process according to claim 7, The process of Claim 7”, which is redundant can be amended to “The processes according to claim 7” or something to that effect.
Claims 11 and 12 recite “and/or sandpack” in the last line, which includes an additional space that should be deleted.
Claim 15 includes an enumeration with periods, e.g. a., and the periods should be replaced with parentheses, e.g. a) or (a), because MPEP 608.01(m) states that periods may not be used elsewhere in the claims except for abbreviations. There are multiple “and/or” conjunctions in line 3, 5, and 7 that are extraneous.
Claim 16 is missing a comma after “genera of microorganisms” in line 4.
Claim 17 is missing a comma after “greater than five” in line 2.
Claim 18 recites “is are” in the last line, which should be amended to “are”.
Claim 19 has an extra space in front of “sandpack” in line 2.
Appropriate correction is required.
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 1-20 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 “the site of hydrocarbonaceous deposit” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It is unclear which hydrocaronaceous deposit is being referenced because there is no earlier recitation of a hydrocarbonaceous deposit in the claim. To obviate this, “the site” in line 1 can be amended to recite “a site”. Claim 1 further recites “the deposit” in lines 3 and 4, which renders the claim indefinite because in one interpretation “the deposit” in lines 3 and/or 4 refer to the same hydrocarbonaceous deposit recited; and under an alternative interpretation “the deposit” in line 4 is a separate deposit because the claim recites “the deposit of at least one hydrogen producing microorganism”. Furthermore phrase “into the vicinity of” in line 3 is a relative phrase that is not defined in the specification or by the claim. Therefore, the scope encompassed by the phrase is unclear. In line 6, the term “thriving” is a relative term not defined by the claim or in the specification, so it is unclear which conditions can be considered conducive to thriving. Line 6 further recites “the microorganism”, which is indefinite because it is unclear whether the microorganism is referring to some or all of the at least one hydrogen producing microorganisms, or any microorganism. Claim 1 recites “is selected, or its selection is aided, 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.
Claims 2-20 depend from claim 1 and are rejected for the reasons set forth above.
Claim 2 recites “A process for according to claim 1”, and claims 4-5, 17 and 19 recite “A process according to claim [13, 4, 16 or 18 respectively]” in line 1. Such recitations render the claims indefinite because it is unclear whether the claims require all or some of the process steps of the claims from which they depend. To obviate this rejection, “A process” can be amended to “The process according to claim”, so that the claims clearly require all of the process steps according to the claims from which they depend.
Claim 3 depends from claim 1 and recites “wherein the core flood and/or sandpack methodology” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Since claim 1 does not require a core flood and/or sandpack methodology, it is unclear which methodologies are being referenced in claim 3. To obviate this rejection, claim 3 can be amended to depend from claim 2. Claim 3 further recites “the site” in line 3, which renders the claim indefinite because it is unclear whether the claim is referencing the hydrocarbonaceous deposit site before or after the modification step recited in claim 1 lines 3-4. Claim 3 recites “the sample” in line 4, which is indefinite because it is unclear whether the sample is referring to the extracted material sample, the selected sample, or a separate sample.
Claims 4-11 depend from claim 3 and are rejected for the reasons set forth above.
Claim 5 recites “wherein sample” in line 1, which is indefinite because it is unclear whether the claim is referencing the material sample of claim 4 or a separate sample. To obviate this rejection, claim 5 can be amended to recite “wherein the extracted or selected material sample is representative of the hydrocarbonaceous deposit’s geochemical and/or geomineralogical characteristics”.
Claim 7 recites “the sample” in lines 2 and 3, which renders the claim indefinite because it is unclear whether the sample refers to the extracted material sample, and/or the selected material sample of claim 3. Claim 7 further recites “desirable conditions”, which is indefinite because the way in which the conditions are required to be desirable is unclear. For example, in one interpretation, the conditions are desirable for microbial growth and under an alternative definition the conditions are desirable for microbial inhibition. Furthermore, the way in which the “desirable conditions” differs from the “one or more microbial conditions” in line 4 is unclear.
Claims 8-9 depend from claim 7 and are rejected for the reason set forth above.
Claim 8 recites “at least to some extent replicate one or more of the those conditions (of temperature, pressure and/or chemical environment) of the site location from which the sample is extracted”, which is indefinite for three reasons. First, the scope of the replication is unclear, because one of ordinary skill in the art cannot ascertain the metes and bounds encompassed by conditions that are “at least to some extent” a replication of a site location. Second, it is unclear whether the parenthetical phrase “(of temperature, pressure and/or chemical environment)” is required or exemplary. Third, claim 8 recites “the site location”, which is indefinite because claim 8 depends from claim 7, which in turn depends upon claim 3 and the site required in claim 3 is indefinite.
Claim 9 recites the term “about”, which is a term of approximation. The specification does not define the term. Therefore, the amount of permissible variation is unclear. For example, it is unclear whether the “up to about 10,000 psi” requires the upper limit to be 10,000 psi, 11,000 psi, etc. because the upper limits are not clearly defined for the range.
Claim 13 and 14 recite “the hydrogen producing microorganism”, which is indefinite because it is unclear whether the claims intend to reference the at least one hydrogen producing microorganism(s) as recited in claim 1.
Claim 15 recites the parenthetical phrase “(relative to the naturally present microorganism)”, which renders the claim indefinite because it is unclear whether the limitation in the parentheses is required. Furthermore, 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, 10 and 11, “a strain of microorganisms” in line 4, “a species of microorganisms” in line 6, “a genus of microorganisms” in line 8, and “that microorganism” in lines 13-14, and the claim also recites “at least one hydrogen producing microorganism” 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.
Claim 16 recites “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”, which is indefinite for three reasons. First, the claim appears incomplete because there is no conjugation at the end of the list. Second, “one of a plurality” is indefinite because it is unclear whether this recitation is referring to one microorganism from a plurality, or one group of microorganisms. Third, “genera of microorganisms and/or naturally occurring” is indefinite because it is unclear how the recitation “and/or naturally occurring” modifies the “genera of microorganisms”, which already encompasses natural and unnatural microorganisms.
Claim 17 depends from claim 16 and is rejected for the reasons set forth above. Furthermore, claim 17 recites “the plurality” in line 1, which renders the claim indefinite because it is unclear whether claim 17 is requiring there to be at least two hydrogen producing microorganisms, or whether the claim is requiring the at least one hydrogen producing microorganism to be selected of a plurality of at least two microorganisms.
Claim 18 recites “the deposit” in line 2, which renders the claim indefinite because it is unclear whether the deposit is the hydrocarbonaceous deposit or a separate deposit. Claim 18 further recites “said microorganism”, which is indefinite because it is unclear whether this is in reference to some or all of the at least one hydrogen producing microorganism, or a separate microorganism.
Claim 19 recites “characteristics of the at least one nutrient are determined at least in part by core flood and/or sandpack methodology”, which is indefinite because it is unclear how claim 19 confers a structural, material, or manipulative difference on the scope of the claimed process.
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 6 and 15-17 are 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 6 does not further limit claim 3 from which it depends. Claim 3 recites “subjecting the sample to analysis determinative of its response to microbiological conditions” in lines 4-5. Claim 6 recites “wherein the material sample is subjected to determinative analysis on or off the site of the hydrocarbonaceous deposit”. On or off the site of the hydrocarbonaceous deposit encompasses anywhere. Therefore, the claim does not further limit the determinative analysis of claim 3.
Claim 15 does not further limit the at least one hydrogen producing microorganism. Claim 15 requires the at least one hydrogen producing microorganism to be a microorganism not naturally present in the hydrocarbonaceous deposit and/or a microorganism that is naturally present in the hydrocarbonaceous deposit. As such, claim 15 reasonably encompasses any hydrogen producing microorganism.
Claim 16 broadens the scope of the at least one hydrogen producing microorganism to “strains of microorganisms, species of microorganisms, genera of microorganisms and/or naturally occurring, optionally genetically modified, organisms introduced into the deposit”. As such, claim 16 encompasses any microorganism or organism and is rejected for failing to include all the limitations of the claim upon which it depends. Claim 17 depends from claim 16 and is rejected for the same reason.
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.
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 1-20 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 requires “the at least one hydrogen producing microorganism or at least one microbiological condition conducive to the thriving of the microorganism is selected, or its selection is aided, by means of continuous flow methodology”. Under the broadest reasonable interpretation, this step entails mentally selecting at least one hydrogen producing microorganism or at least one microbiological condition based on or aided by 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 or into the vicinity of the deposit of at least one hydrogen producing microorganism. This step is recited at a high level of generality such that the step reasonably encompasses the introduction of any hydrogen producing microorganism into or near a hydrocarbon source. At best this additional active method step of claim 1 constitutes as an insignificant pre-solution activity, because the step is merely a data gathering step for the purpose of performing 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 core flood and/or sandpack methodology to comprise extracting a material sample from the site or selecting a representative sample 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 or off the site of the hydrocarbonaceous deposit. Claim 7 requires the determinative analysis to comprise maintaining the sample under desirable conditions of temperature, pressure and/or chemical environment and determining a response of the 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 8 requires desirable conditions to, at least to some extent, replicate one or more conditions of the site location from which the sample is extracted. Claim 9 requires the desirable conditions to be a pressure up to about 10,000 psi. The limitations of claims 8-9 are recited with a high level of generality because the site location and extent of the replication are not particularly limited. As such, claims 8-9 fail to meaningfully limit the judicial exception.
Claim 10 requires the sample extraction or 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 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 13-14 limit the means by which the hydrogen producing microorganism is selected. However, claims 13-14 do 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. Furthermore, the limitations of claims 15-17 are attempts to limit the at least one hydrogen producing microorganism, however the claims are recited with such a high level of generality that the claims encompass any hydrogen producing microorganism.
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 microorganism. This is an insignificant post-solution activity, because the step is merely applying abstract idea. Claim 19 requires the characteristics of the at least one nutrient to be determined at least in part by core flood and/or sandpack methodology. This limitation is itself an abstract idea because such determination can be performed mentally. 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 selection, which is the abstract idea.
Accordingly, claims 1-20 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 1-20 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 1-20 are not patent eligible.
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 1-12 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Stephen (Rsc Advances, 2014, 4(43), 22779-22791).
Interpretation: instant claim 1 requires modifying the composition of a hydrocarbonaceous deposit by introducing at least one hydrogen producing microorganism. The selection of the at least one hydrogen producing microorganism or the selection of at least one microbial condition conducive to the thriving of the microorganism is aided by means of continuous flow methodology. Based on instant claims 2-3, core flooding is a type of continuous flow methodology. According to the instant specification, the at least one hydrogen producing microorganism may have a genus of Clostridium. See [0100].
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 at the core includes Clostridium (i.e. hydrogen producing). 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.
Although Stephen does 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 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).
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.
Regarding claim 8, Stephen teaches selecting experimental physical parameters designed to simulate in situ, 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 14, Stephen teaches inoculating the coal pack with a microbial culture enriched from coal. See the abstract. Stephen discloses that the core pack includes Clostridiales. See figure S6. Clostridia are typically fermentative anaerobic bacteria. See p. S9 first passage, second to last sentence. Fermentative anaerobes produce H2. See p. 29 section 13 second sentence.
Although Stephen does not explicitly teach selecting by means of core flood and/or sandpack methodology for the preferential production of hydrogen over methane; however, Stephen teaches selecting a microbial culture that includes Clostridium, which produces hydrogen and is not disclosed as producing methane.
Regarding claim 15, Stephen teaches inoculating the coal pack with a methanogenic microbial culture enriched from coal (i.e. naturally present). See the abstract.
Regarding claim 16-17, Stephen teaches genera in the Clostridiales order including Clostridium, Acidaminobacter, Anaerobacter, Desulfosporosinus, and Peptococcaceae. See figure S6.
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.
Regarding claim 19, Stephen discloses that nutrients with high nitrogen content and amino acids have been shown to stimulate methane generation compared to other nutrients. See p. 22781 last passage. Furthermore, Stephen suggests that core flooding experiment can be characterized as a system having a more natural ‘quantity’ of coal, with less direct surface contact of coal with microbes, and less contact with enriched nutrient solution, i.e., lower bioavailability. See p. 22785 right column first paragraph second to last sentence.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Stephen (Rsc Advances, 2014, 4(43), 22779-22791), as applied to claims 1-12 and 14-20 above, and further in view of Scott (US 2004/0033557).
Regarding claim 13, Stephen teaches a methanogenic culture enriched from coal cuttings without any additional strains. See p. 22782 first passage.
Stephen does not teach a hydrogen producing microorganism that is selected by means of core flood and/or sandpack methodology positively to diversify the microbial abundance of hydrogen-producing microorganisms in the deposit when charged thereto.
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]. Scott teaches that hydrogen gases are produced from coal beds suggesting that fermentative hydrogen producers are present in some coal beds. Fermentative hydrogen producers such as these can be collected and added to the bacterial consortia injected into the subsurface to increase hydrogen production. See [0039].
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 diversify the enriched methanogenic culture of Stephen as suggested by Scott. One would be motivated to do so because Scott suggests that naturally occurring bacteria can be combined with additional bacteria to maximize methane or hydrogen production. There would have been a reasonable expectation of success because Stephen demonstrates selecting an enriched methanogenic culture that includes fermentative Clostridiales (see figure s6).
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 1-20 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 or at least one microbial condition conducive to the thriving of the microorganism is selected, or its selection is aided, 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 core flood and/or sandpack methodology comprises extracting a material sample from the site or selecting a material sample representative of a material from the site 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 or off 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 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 about 10,000 psi (relevant to instant claim 9); wherein the sample extraction or sample selection is conducted under anaerobic conditions (relevant to instant claim 10); wherein the extracted 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 hydrogen producing microorganism is selected by means of core flood and/or sandpack methodology for the preferential production of hydrogen over methane (relevant to instant claim 14); characteristics of the at least one nutrient are determined at least in part by core flood and/or sandpack methodology (relevant to instant claim 19).
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 3-6). 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 (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 8 and 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). Stephen suggests that core flooding experiment can be characterized as a system having a more natural ‘quantity’ of coal, with less direct surface contact of coal with microbes, and less contact with enriched nutrient solution. See p. 22785 right column first paragraph second to last sentence (relevant to instant claim 19).
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 diversifying the microorganisms in view of Scott in order to produce hydrogen.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 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 12wherein 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 32wherein 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 or at least one microbial condition conducive to the thriving of the microorganism is selected, or its selection is aided, 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 core flood and/or sandpack methodology comprises extracting a material sample from the site or selecting a material sample representative of a material from the site 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 or off 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 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 about 10,000 psi (relevant to instant claim 9); wherein the sample extraction or sample selection is conducted under anaerobic conditions (relevant to instant claim 10); wherein the extracted 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 hydrogen producing microorganism is selected by means of core flood and/or sandpack methodology for the preferential production of hydrogen over methane (relevant to instant claim 14); characteristics of the at least one nutrient are determined at least in part by core flood and/or sandpack methodology (relevant to instant claim 19).
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 3-6). 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 (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 8 and 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). Stephen suggests that core flooding experiment can be characterized as a system having a more natural ‘quantity’ of coal, with less direct surface contact of coal with microbes, and less contact with enriched nutrient solution. See p. 22785 right column first paragraph second to last sentence (relevant to instant claim 19).
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 diversifying the microorganisms in view of Scott in order to produce hydrogen.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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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