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
1. Applicant’s election of Group I (claims 1-19), without traverse in the reply filed on 4/23/26 is acknowledged.
2. Claims withdrawn:
Claims 20-25 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
3. Priority
Receipt is acknowledged of papers (foreign priority filed 4/18/23) submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
4. Drawings
The drawings filed on 3/27/24 are acknowledged.
5. Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
6. IDS(s) filed 5/15/24, 6/19/24, 4/23/26 & 4/24/26 are acknowledged. Signed copies of the IDS(s) are provided with this Office Action.
7. Claim Objections
Claims 2-8 are objected to because of the following informalities: These claims recite “A process according to claim 1 or 4”.
These are depended claims and must therefore recite “The process according to claim 1 or 4” as applicable.
Appropriate correction is required.
8. 35 U.S.C. § 112, first paragraph (Written Description)
Claims 1-19 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 claim(s) contains 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claimed invention is directed to the following genus claims.
1. 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.
2. A process according to claim 1, wherein the at least one hydrogen producing microorganism comprises a non-native microorganism.
3. A process according to claim 1, wherein the incubator is containerized in operationally intact form.
4. A process according to claim 1, wherein the incubator is provided with means for nurturing the at least one hydrogen producing microorganism.
5. A process according to claim 4, wherein the means for nurturing comprise means for providing the at least one hydrogen producing microorganism in the incubator with one or more nutrients and/or adjuvants for encouraging or selectively encouraging the growth of the at least one hydrogen producing microorganism in the incubator.
6. A process according to claim 4, wherein the means for nurturing comprise means for maintaining conditions of temperature, pressure and/or chemical environment within the incubator conducive to the incubation of the at least one microorganism.
7. 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.
8. 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.
9. 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.
10. 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.
11. The process according to claim 10, wherein the plurality is greater than two, greater than three, greater than four, greater than five and/or greater than ten.
12. 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.
13. 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.
14. The process according to claim 13, wherein the pH regulator is selected to regulate the pH of the hydrogen producing microorganism environment in the deposit to a pH within the range of from about 5 to about 9, from about 6 to about 8 and/or from about 6 to about 7.
15. The process according to claim 13, wherein the pH regulator also serves as a nutrient.
16. 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 reducing agent.
17. The process according to claim 1, wherein the hydrocarbonaceous deposit is a liquid hydrocarbonaceous deposit.
18. The process according to claim 1, wherein the at least one hydrogen producing microorganism has a genus of Syntrophobacter, Syntrophus, Syntrophomonas, Thermoanaerobacter, Thermotoga, Pseudothermotoga, Thermoanaerobacterium, Fervidobacterium, Thermosipho, Haloanaerobium, Acetoanaerobium, Anaerobaculum, Geotoga, Petrotoga, Thermococcus, Pyrococcus, Clostridium, Enterobacter, Klebsiella, Ethanoligenens, Pantoea, Escherichia, Bacillus, Caldicellulosiruptor, Pelobacter, Caldanaerobacter, Marinitoga, Oceanotoga, Defluviitoga, Kosmotoga, Caloranaerobacter or a combination or mixture thereof.
19. 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 claims are broadly described – as a process for the production of hydrogen by any microbe from an unknown site of hydrocarbonaceous deposit, wherein hydrocarbonaceous deposit can refer to any of numerous organic compounds deposit, such as benzene and methane, that contain only carbon and hydrogen, the process comprising: modifying the composition of the deposit through the introduction into or into the vicinity of the deposit – wherein the vicinity could be any distance or depth of the deposit - of at least one undescribed hydrogen producing microorganism, wherein the at least one hydrogen producing microorganism is provided on site by means of a transportable microbiological incubator, of undescribed characteristics.
The instant specification describes - A process for the production of hydrogen by TABLE-US-00004 TABLE 4 Well 2-Exogenous microbial population: Pseudothermotoga elfii ~20% Pseudothermotoga hypogea ~20% Thermotoga petrophila ~20% Petrotoga mobilis ~20% Caldanaerobacter tengcongensis ~20%; wherein [0107] The exogenous microbes are maintained in the transportable microbiological incubator in anaerobic liquid culture and nurtured for 2 months under nitrogen (100% N2) at 150 F (65.56 deg C), with fresh media inoculated every 3-4 days. The selected culture are perhaps then used in the process claimed.
The MPEP states that the purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by him. The courts have stated:
"To fulfill the written description requirement, a patent specification must describe aninvention and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997); In re Gostelli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what isclaimed."). Thus, an applicant complies with the written description requirement "bydescribing the invention, with all its claimed limitations, not that which makes it obvious,"and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966."Regents of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
Further, for a broad generic claim, the specification must provide adequate written description to identify the genus of the claim. In Regents" of the University of California v. Eli Lilly & Co. the court stated:
"A written description of an invention involving a chemical genus, like a description of a chemical species, 'requires a precise definition, such as by structure, formula, [or] chemical name,' of the claimed subject matter sufficient to distinguish it from other materials." Fiers, 984 F.2d at 1171, 25 USPQ2d 1601; In re Smythe, 480 F.2d 1376, 1383, 178 USPQ 279, 284985 (CCPA 1973) ("In other cases, particularly but not necessarily, chemical cases, where there is unpredictability in performance of certain species or subcombinations other than those specifically enumerated, one skilled in the art may be found not to have been placed in possession of a genus ...") Regents" of the University of California v. Eli Lilly & Co., 43 USPQ2d 1398.
The MPEP further states that if a biomolecule is described only by a functional characteristic, without any disclosed correlation between function and structure of the sequence, it is "not sufficient characteristic for written description purposes, even when accompanied by a method of obtaining the claimed sequence." MPEP § 2163. The MPEP does state that for a generic claim the genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. MPEP § 2163. If the genus has a substantial variance, the disclosure must describe a sufficient variety of species to reflect the variation within that genus. See MPEP § 2163. Although the MPEP does not define what constitute a sufficient number of representative species, the courts have indicated what do not constitute a representative number of species to adequately describe a broad generic. In Gostelli, the courts determined that the disclosure of two chemical compounds within a subgenus did not describe that subgenus. In re Gostelli, 872, F.2d at 1012, 10 USPQ2d at 1618. The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. These include "level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient." MPEP § 2163. While all of the factors have been considered, a sufficient amount for a prima facie case is discussed below.
Further, to provide evidence of possession of a claimed genus, the specification must provide sufficient distinguishing identifying characteristics of the genus. The factors to be considered include: a) the scope of the invention; b) actual reduction to practice; c) disclosure of drawings or structural chemical formulas; d) relevant identifying characteristics including complete structure, partial structure, physical and/or chemical properties, and structure/function correlation; e) method of making the claimed compounds; f) level of skill and knowledge in the art; and g) predictability in the art.
Moreover, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.1991), states that "applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed" (See page 1117). The specification does not "clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed" (See Vas-Cath at page 1116). The skilled artisan cannot envision the detailed chemical structure of the encompassed genus of polypeptides, and therefore, conception is not achieved until reduction to practice has occurred, regardless of the complexity or simplicity of the method of isolation. Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. See Fiers v. Revel, 25 USPQ2d 1601 at 1606 (CAFC 1993).
Therefore, for all these reasons the specification lacks adequate written description, and one of skill in the art cannot reasonably conclude that the applicant had possession of the claimed invention at the time the instant application was filed.
9. Claim Rejections - 35 USC § 112 (second paragraph)
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 1-19 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 pre-AIA the applicant regards as the invention.
Claim 1 recite - 1. 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.
The claim is unclear about the phrase “vicinity of the deposit” as no distance or depth from the deposit is evident.
Claims 2-19 are included in the rejection for failing to correct the defect present in the base claim(s).
10. Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-5, 9, 10 & 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over WO02/34931 (GUYER & SCOTT), WO 2013/051569 A1 (UNIV SHIZUOKA NAT UNIV CORP [JP]) 11 April 2013; MJ Veshareh et al, Int J Hydrogen Energy, Vol 47, 2022, pages 5101-5110, "The light in the dark: In-situ biorefinement of crude oil to hydrogen using typical oil reservoir Thermotoga strains", and US 2009/0029879 (SONI ET AL).
Instant claims are defined above in paragraph 8.
WO02/34931 teaches a method for producing and recovering gas such as
hydrogen from coal deposits or carbonaceous shale by injecting bacterial consortia
which may be genetically modified in combination with nutrients into the deposit and for
harvesting the resulting gas. It is also mentioned that a mixture of bacterial consortia,
nutrients and water can be prepared at the well site or transported to the well using
vehicles (page 7, line 5 - page 8, line 13; claim 3; figures 4-6; example 4; page 20,
paragraph 2 - page 21, paragraph 2; page 27, paragraph 2 - page 28, paragraph 1).
WO 2013/051569 A1 discloses in figures 3 and 4 a plant comprising a microbiological incubator (140) for hydrogen production by e.g. Clostridium, Thermotoga and/or Syntrophus and means for supplying a microorganism into an underground deposit, here in form of a pump (600) and a pipe (610) to a deep groundwater zone. It is pointed out that by use of the deep groundwater, local production of energy is possible, which implies that the plant has been transported to the deposit of deep groundwater.
In contrast to the claimed subject-matter WO 2013/051569 A1 does not explicitly disclose the nature of the substrate as a hydrocarbonaceous deposit, but instead WO 2013/051569 A1 refers to the more general term "sedimentary organic matter".
Veshareh et al. also teaches using extracted bacteria such as Thermotoga strains to convert oil into hydrogen, which it suggests could be used on larger scale, by addition of these to mature reservoirs, which can include the use of conditions to promote these bacteria and/or reduce unwanted reactions producing other products.
US 2009/0029879 discloses providing a mobile field transportable laboratory apparatus
which includes a bioreactor for analysis and delivery of microbes etc. to an oil well, albeit not for the production of hydrogen. However, given the fixed nature of any hydrocarbon
producing well, it would be obvious to the skilled person to use a portable incubator system to deliver such microbes to a well, including the necessary means for incubating these microbes and introducing them into a well, in addition to collection of resulting the hydrogen gas produced.
Given the combined teachings of WO02/34931 (GUYER & SCOTT), WO 2013/051569 A1 (UNIV SHIZUOKA NAT UNIV CORP [JP]) 11 April 2013; MJ Veshareh et al, and US 2009/0029879 (SONI ET AL), it would have been obvious before the effective filing date of the claimed invention for one of ordinary skill in the art of enzymology to develop the process as claimed and do so with a reasonable expectation of success. One skilled in the art would have been motivated in view of the importance [0073] or beneficial properties of the selected microbes used in the process, wherein it is believed that the volatile fatty acids reduce the viscosity of the oil in the selected oil well, that carbon dioxide and hydrogen gases produced by the microbes in sweeping the oil from the formation; and [0004] thus aid in conventional oil production technologies.
Thus, the claimed invention was within the ordinary skill in the art to make and use at the time was made and was as a whole, prima facie obvious.
11. No claim is allowed.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to TEKCHAND SAIDHA whose telephone number is (571)272-0940. The examiner can normally be reached on M-F 8.00-5.30. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert B Mondesi can be reached on 408 918 7584. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TEKCHAND SAIDHA/
Primary Examiner, Art Unit 1652
Recombinant Enzymes, Hoteling
Telephone: (571) 272-0940
Fax: (571) 273-0940
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