DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicants’ election without traverse of the invention of Group I, claims 1-6, in the reply filed on 08/03/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/02/2026.
Claim Rejections - 35 USC § 112
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 1-6 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The test of enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the specification coupled with information known in the art without undue experimentation (United States v. Telectronics., 8 USPQ2d 1217 (Fed. Cir. 1988)). Whether undue experimentation is needed is not based upon a single factor but rather is a conclusion reached by weighing many factors. These factors were outlined in Ex parte Forman, 230 USPQ 546 (Bd. Pat. App. & Inter. 1986) and again in In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988), and the most relevant factors are indicated below:
Nature of the invention. A method of conducting an acetogenic fermentation in which gaseous substrate and methanol are converted to hydrocarbons through fermentation and all CO2 is consumed.
Breadth of the claims. The claims are of moderate breadth. Tied to a specific type of fermentation, but not limited to specific bacteria, strains or conditions.
State of the art. The state of the art is represented by the instant application as well as, Kim (“Methanol supply speeds up synthesis gas fermentation by methylotrophic-acetogenic bacterium Eubacterium limosum KIST612”, Bioresource Technology 321 (2021), 124521, 2020/IDS submitted) as well as Senaratne (EP2898078). Kim teaches that the rate acetogenic fermentation and their growth can be enhanced by supplying methanol to the fermentation (Abstract, Figure 1, 2, and 4). Senaratne teaches that in the fermentation of gaseous substrate that carbon dioxide emissions can be reduced via control of the ratio of gases used (Abstract, [0005]-[0006], [0041]-[0043], [0016]-[0040]).
Number of working examples and Guidance provided by applicant. Applicants provide no working examples of a fermentation resulting in carbon dioxide free waste gas, or wherein all of the carbon dioxide present inside the bioreactor is consumed or converted. The guidance provided by applicant is that methanol as well as ratio of gases and fermentation conditions can help control reaction, however all reactions performed have Carbon dioxide remaining. The only cases in which it is “free” are models (Page 31-32).
Unpredictability of the art and Amount of experimentation required. The unpredictability in the art is moderate. Fermentation conditions and ratios can be determined by routine experimentation but need to be done for different strains and species of bacteria. The level of skill in the art is high; however, it is not capable of achieving something that has not been achieved by applicant or the art. It is uncertain with an infinite amount of experimentation if the claimed results can be obtained. Further the nature of chemical equilibria make it unlikely that all carbon dioxide in the bioreactor can be fixed. Numerous conditions are tested by applicants, and all of these conditions and experiments show carbon dioxide remaining.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES Z CONSTANTINE whose telephone number is (571)270-5533. The examiner can normally be reached Mon-Fri 9-5.
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/CHARLES Z CONSTANTINE/Examiner, Art Unit 1657
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