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 .
Applicant's arguments filed 07/28/2026 regarding rejection of claims 1 and 3 under 35 U.S.C. § 102(a)(1)/(a)(2) over Suzuki (US2016/0111737) and rejections, under 35 U.S.C. § 103, of claims 2 and 7 over Suzuki, Logan (US2019/0326604), and Eckelberry (US2011/0308962), claim 4 over Suzuki and Varanasi (Publication Entitled "Biohydrogen production using Microbial Electrolysis Cell: Recent Advances and Future Prospects"), claims 5 and 6 over Suzuki, Eckelberry, and Varanasi, and claims 8 and 10 over Suzuki, Logan, Eckelberry, and Varanasi have all been fully considered but they are not persuasive.
It is argued and applicant contends that Suzuki in FIG. 8 and paragraph [0096] of teaches electrode cell sections 30 which include an gap (air pocket) 31, and include positive electrodes 5 which are exposed to the gas phase (gap 31) while negative electrodes 6 are in contact with the liquid. Thus, Applicant contends that, in Suzuki, the opposing flows of the liquid are separated by a complex structure consisting of "an electrode + an air gap + an electrode," not by each plate-shaped electrode itself. Therefore, Applicant contends that Suzuki does not anticipate amended claim 1.
It is submitted that claim 1 is open-ended and does not preclude the recited plate-shaped electrodes being components of more-complex structures which include features such as air gaps or include assemblies of plural electrodes, as disclosed in Suzuki.
It is submitted that the instant claims are apparatus claims and do not preclude additional unclaimed functionality or structure being associated with the claimed electrodes, such as the electrodes being a part of a complex structure consisting of "an electrode + an air gap + an electrode, or "functions of the Suzuki electrodes to efficiently supply oxygen and improve power generation.
Independent apparatus claim 1, recites the structural limitation of plate-shaped electrodes followed by the manner to operate said limitations with corresponding functional language, or language regarding intended use, specifically including recitation of each of the electrodes serving as partition walls interposed therebetween.
It is noted that neither the manner of operating an apparatus worded as a disclosed device (or “system”), nor material or article worked upon, by either the instant claims or by the prior art, further limit or distinguish an apparatus claim from the prior art. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.”
Applicant also contends that Suzuki explicitly states that exposing the gas diffusion electrode to the gas phase (air pocket) is essential to efficiently supply oxygen and improve power generation (see Suzuki, paragraphs [0005]-[0007]). Applicant contends that filling the air gap 31 with liquid to make the liquid contact both sides of the electrode would completely destroy the intended purpose and the principle of operation of Suzuki's fuel cell system. Therefore, Applicant contends that a person of ordinary skill in the art would have no motivation to modify Suzuki to arrive at the claimed structure.
It is submitted that the instant claims are apparatus claims and do not preclude additional unclaimed functionality of claim 1, such as functions of the Suzuki electrodes to efficiently supply oxygen and improve power generation.
Applicant’s arguments, filed 07/28/2026, with respect to rejection of claims 2, 3, and 6-10 under 35 U.S.C. § 112(b) have been fully considered and are persuasive. This 112 (b) rejection has been withdrawn in view of claim amendments submitted on 07/28/2026 which overcome the rejection.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
Such claim limitation is “dissolving means for further dissolving carbon dioxide in the anaerobic groundwater” in claim 6. Such limitation is interpreted in view of the Specification at paragraph [0032], [0039] and [0042] as any structure or methodology for adding carbon dioxide to anaerobic water already containing a given amount of carbon dioxide, so as to further concentrate an amount of dissolved carbon dioxide in the water.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Suzuki et al PGPUBS Document US 2016/0111737 (Suzuki). Referenced paragraph numbers of the applied PGPUBS Document are identified by “[ ]” symbols.
For independent claim 1, Suzuki literally discloses: a bioreactor [0025, 0053 and 0127 concerning a fuel cell system for water or wastewater containing a substance to be treated utilizing anaerobic microorganisms for oxidative degradation of organic matter or another metabolic mechanism of microorganisms (i.e. “bioreactor”) comprising: a container 3 having an inlet 11A and an outlet 13A for a fluid (figures 8c and 8d and see [0111]); and
a plurality of plate-shaped electrodes disposed in the container (positive electrodes 5 and negative electrodes 6 which may each comprise a sheet of electrically conductive metal, or carbon [0052 and 0054], forming a part of electrode cell sections 30(1)-30(4) (shown in figures 8b, c and d and described in [0104 and 0111] wherein
a flow path in one direction from the inlet to the outlet is formed inside the container (figures 8c and d and described in [0028 and 0039 and
the flow path is formed such that opposing flows are adjacent to each other with each of the plate-shaped electrodes serving as partition walls interposed therebetween (see flowpath arrows in figures 8c and 8d and description of [0038 and 0111 re a flowpath that meanders in a horizontal plane]).
Independent apparatus claim 1, recites the structural limitation of plate-shaped electrodes followed by the manner to operate said limitations with corresponding functional language, or language regarding intended use, specifically including recitation of each of the electrodes serving as partition walls interposed therebetween.
It is submitted that the instant claims are apparatus claims and do not preclude additional unclaimed functionality of claim 1, such as functions of the Suzuki electrodes to efficiently supply oxygen and improve power generation.
It is noted that neither the manner of operating an apparatus worded as a disclosed device (or “system”), nor material or article worked upon, by either the instant claims or by the prior art, further limit or distinguish an apparatus claim from the prior art. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App & Inter. 1987) that states a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim.”
For claim 3, Suzuki further discloses wherein an anode electrode and a cathode electrode are alternately arranged in a flow path direction as the plurality of plate-shaped electrodes (figures 8B, 8C and 8D and [0104, 0105 and 0111 regarding flow path 8 meandering past and around sequential, alternating positive and negative, i.e. anode and cathode electrodes]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al PGPUBS Document US 2016/0111737 (Suzuki) in view of Logan et al PGPUBS Document US 2019/0326604 (Logan) and Eckelberry et al PGPUBS Document US 2011/0308962 (Eckelberry). Referenced paragraph numbers of the applied PGPUBS Documents are identified by “[ ]” symbols.
Claim 2 differs from Suzuki by requiring wherein a distance between adjacent plate-shaped electrodes is 2 cm or less.
Logan teaches such electrode spacing in a bioreactor [0025 , 0028, 0150] using adjacent plate-shaped electrodes [0168 re spacing between adjacent electrodes of 0.5 cm, the electrodes comprising flat cathodes]. Logan teaches in [0128] to minimize space between anode and cathode to improve system performance and in [0129-0130], teaches to make the system of anodes and cathodes compact to reduce manufacturing costs.
Eckelberry teaches an electrolytic system utilizing at least one cathode and at least one anode for treating biomass to break down decomposition products including hydrogen and oxygen [0033 and 0034]. Eckelberry also teaches a further embodiment wherein a plurality of alternating cathode and anode parallel plate electrodes are employed with a spacing between successive electrode plates on the order of ranges of about 0.05 to 1.0 cm or about 1.0 to 2.0 cm, thus teaches a distance between adjacent plate-shaped electrodes of 2 cm or less [0102-0103].
Eckelberry teaches that such electrode spacing together with selected electrode thickness is tailored to optimize system capacity, desired fluid residence time and processing capacity in [0103].
It would have been obvious to one of ordinary skill in the art of bioreactors which concern use of electrodes, to have modified or provided the disclosed electrodes of Suzuki with a spacing distance between adjacent plate-shaped electrodes is 2 cm or less, as cumulatively taught by Logan and Eckelberry, in order to improve system performance and make the system of anodes and cathodes compact to reduce manufacturing costs, as well as to optimize system capacity, desired fluid residence time and processing capacity.
For claim 7, Suzuki further discloses wherein an anode electrode and a cathode electrode are alternately arranged in a flow path direction as the plurality of plate-shaped electrodes (figures 8B, 8C and 8D and [0104, 0105 and 0111 regarding flow path 8 meandering past and around sequential, alternating positive and negative, i.e. anode and cathode electrodes]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al PGPUBS Document US 2016/0111737 (Suzuki) in view of the Varanasi et al Publication Entitled “Biohydrogen production using Microbial Electrolysis Cell: Recent Advances and Future Prospects (Varanasi). Referenced paragraph numbers of the applied PGPUBS Document are identified by “[ ]” symbols.
Claims 4 and 9 respectfully differ from Suzuki by requiring the bioreactor to further comprise a voltage application device connected to the plurality of plate-shaped electrodes.
Varanasi teaches such voltage application device in a bioreactor (page 844, 1st full paragraph concerning a bio-electrochemically assisted microbial reactor) using adjacent plate-shaped electrodes (figures 5.7.1 (A) and (B) and 5.7.3 illustrating plate electrodes or alternating anodes and cathodes, and (figure 5.7.4 and description of the figure on page 852 concerning a voltage application device in the form of a power supply with Section 5.7.6 spanning pages 859-860 reciting various types of power supply which may be provided). On page 852, Varanasi suggests a compact arrangement of electrodes and power supply or voltage application device has the advantages of a reduction in voltage potential losses, production of higher current densities and gas product and reduced effect of pH gradient).
It would have been thus obvious to one of ordinary skill in the art of providing bioreactors which concern use of electrodes, to have modified or provided the bioreactor of Suzuki, by incorporating such voltage application device in the form of a power supply, as taught by Varanasi, in order to achieve system advantages of a reduction in voltage potential losses, production of higher current densities and gas product and reduced effect of pH gradient.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al PGPUBS Document US 2016/0111737 (Suzuki) in view of Eckelberry et al PGPUBS Document US 2011/0308962 (Eckelberry) and the Varanasi et al Publication Entitled “Biohydrogen production using Microbial Electrolysis Cell: Recent Advances and Future Prospects (Varanasi). Referenced paragraph numbers of the applied PGPUBS Documents are identified by “[ ]” symbols.
Claim 5 and claim 6 dependent therefrom differ from Suzuki by requiring the bioreactor as described by claim 1, as also being comprised in a carbon dioxide recycling system comprising:
a storage unit storing anaerobic groundwater;
a reaction unit converting carbon dioxide contained in the anaerobic groundwater into a resource substance by an electrochemical reaction by a microorganism; and
a transfer unit transferring the anaerobic groundwater from the storage unit to the reaction unit, wherein
the reaction unit has the bioreactor according to claim 1.
Varanasi teaches such a carbon dioxide recycling system (see Figures 5.7.1 (A) and (B) on page 844 regarding handling of carbon dioxide) comprising:
a reaction unit converting carbon dioxide contained in anaerobic groundwater into a resource substance by an electrochemical reaction by a microorganism (pages 844-845 regarding handling wastewater with anaerobic, biodegradable organic matter in a microbial electrolysis cell (MEC), and page 845, Section 5.7.2 regarding conversion of the biomass into a hydrogen gas product, i.e. hydrogen production , produced in anaerobic conditions) ; and
Suzuki discloses or teaches wherein a biochemical reaction unit has the bioreactor according to claim 1 (see preceding detailed discussion of the limitations of claim 1, above).
Thus, in summary, it would have been also obvious for one of ordinary skill in the art of providing bioreactors which concern use of electrodes, to have incorporated the bioreactor of Suzuki, into a carbon dioxide recycling system, having a reaction unit converting carbon dioxide contained in the anaerobic groundwater into a resource substance by an electrochemical reaction by a microorganism, as taught or suggested by Varanasi, in order to produce a commercially valuable hydrogen gas product.
Suzuki also teaches in Section 5.7.7.6 on page 863 to integrate the microbial electrolysis cell and reaction unit with an upstream “anaerobic digestion process” inherently requiring one or more structural units where biomass in water or wastewater is anaerobically digested during a residence time of the water or wastewater being treated in such structural unit(s). Suzuki also teaches in Section 5.7.7.7 on page 864 integrated processes including integrated wastewater treatment where other byproducts such as phosphine are produced.
Recitation of the water treated being “groundwater” is of little patentable weight since characterization of the type of water or wastewater being treated in the bioreactor or system does not correspond to any structural bioreactor or system feature.
In addition, Eckelberry teaches an electrolytic system utilizing at least one cathode and at least one anode for treating biomass to break down decomposition products including hydrogen and oxygen [0033 and 0034]. Eckelberry also teaches a further embodiment wherein a plurality of alternating cathode and anode parallel plate electrodes are employed with a spacing between successive electrode plates on the order of ranges of about 0.05 to 1.0 cm or about 1.0 to 2.0 cm, thus teaches a distance between adjacent plate-shaped electrodes of 2 cm or less [0102-0103].
Eckelberry also teaches a storage unit of reservoir upstream of a bioreactor having one or more anodes and cathodes in the embodiment of figure 6 at [0087 concerning a body of water, mixing tank or other vessel “that serves to hold liquids” (i.e. “serving as a storage unit”), and
accompanied by a transfer unit transferring the water from the storage unit to the reaction unit [0087 concerning a conveyance including a transferring pipe or series of conduits 32, 33].
Again, recitation of the water being treated, being “groundwater” is of little patentable weight since characterization of the type of water or wastewater being treated in the bioreactor or system does not correspond to any structural bioreactor or system feature.
Thus, it would have also been obvious to the skilled artisan to have also incorporated such storage and transfer units with the bioreactor of Suzuki, as cumulatively taught by Varanasi and Eckelberry, inherently so as to enable bioreactor treatment of larger quantities of biomass-containing water or wastewater on a continuous basis, while optionally providing integrated wastewater treatment where other byproducts such as phosphine are produced.
For claim 6, Eckelberry further teaches wherein the transfer unit has a dissolving means for further dissolving carbon dioxide in the anaerobic groundwater (figure 6 and [0087 suggesting a conveyance or transfer system (i.e. “unit”) which includes a “grow tank”, i.e. a tank for growing biomass foliage which inherently generates additional carbon dioxide that is dissolved into water passing through conduits 32 and 33.
Inherently, such grow tank thus functions as a “dissolving means” for adding or “further dissolving” carbon dioxide into the water being treated, to thus produce additional amounts of hydrogen and oxygen product.
It would have accordingly been further obvious to the skilled artisan to have further modified the Suzuki system, to include the dissolving means taught by Eckelberry, so as to produce additional amounts of hydrogen and oxygen product.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al PGPUBS Document US 2016/0111737 (Suzuki) in view of Logan et al PGPUBS Document US 2019/0326604 (Logan) and Eckelberry et al PGPUBS Document US 2011/0308962 (Eckelberry), as applied to claims 1, 2 and 7 above, and further in view of Varanasi et al Publication Entitled “Biohydrogen production using Microbial Electrolysis Cell: Recent Advances and Future Prospects (Varanasi).
Claims 8 and 10 respectfully further differ from Suzuki by requiring the bioreactor to further comprise a voltage application device connected to the plurality of plate-shaped electrodes.
Varanasi teaches such voltage application device in a bioreactor (page 844, 1st full paragraph concerning a bio-electrochemically assisted microbial reactor) using adjacent plate-shaped electrodes (figures 5.7.1 (A) and (B) and 5.7.3 illustrating plate electrodes or alternating anodes and cathodes, and (figure 5.7.4 and description of the figure on page 852 concerning a voltage application device in the form of a power supply with Section 5.7.6 spanning pages 859-860 reciting various types of power supply which may be provided). On page 852, Varanasi suggests a compact arrangement of electrodes and power supply or voltage application device has the advantages of a reduction in voltage potential losses, production of higher current densities and gas product and reduced effect of pH gradient).
It would have been thus obvious to one of ordinary skill in the art of providing bioreactors which concern use of electrodes, to have modified or provided the bioreactor of Suzuki, by incorporating such voltage application device in the form of a power supply, as taught by Varanasi, in order to achieve system advantages of a reduction in voltage potential losses, production of higher current densities and gas product and reduced effect of pH gradient.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection or clarifications of previous 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 Primary Examiner Joseph Drodge at his direct government formal facsimile phone number telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
If attempts to reach the examiner are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
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 encourage to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
The telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
09/10/2026
/JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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