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 .
Claim Objections
Claim 1 is objected to because of the following informalities: the grammar of the initial portion of the claim does not appear correct, it appears as though the “of” following the second instance of “comprising” should be removed; the claim should read: A process to convert carbon dioxide to methane by contacting an aqueous solution comprising dissolved carbon dioxide with an electron charged pack bed comprising a carrier… Appropriate correction is required.
Claim 12 is objected to because of the following informalities: there is a forward slash (/) missing from “and or” at the end of the claim. Appropriate correction is required.
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 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for methanogenic bacterium that produce biofilms, does not reasonably provide enablement for all bacterial species that produce biofilms. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to perform the invention commensurate in scope with these claims. The claims provide for a method of converting carbon dioxide to methane by providing an aqueous solution of dissolved carbon dioxide, with salts, and an electron-charge carrier that includes a biofilm with microorganisms. However, there is no evidence to suggest that any biofilm can be used to convert the carbon dioxide to methane.
Based upon the instant specification, it appears as though some form of methanogenic bacterial species must be used to perform the method, without a methane producing bacterial strain, there does not appear to be a manner in which the claimed gas to form. When looking at the instant specification, several possible methanogenic species are listed, but none are explicitly used in the applied example. When looking at the applied examples, the biocathode is inoculated with sludge, which would be expected to contain some methanogenic bacterium. Therefore, unless the cathode is specifically inoculated with a methanogenic bacterium, or with sludge that would be expected to include these bacterial strains, there would be no reasonable expectation that methane would form.
Dependent claims 2-16 are also rejected insofar as they do not narrow the claimed scope to include methanogenic bacterium, or sludge that would be expected to include these bacterial strains.
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 1-16 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.
Claims 1-3 provide for an option of “between [X] and [Y] M sodium cations or between [X] and [Y] M sodium and potassium cations.” This limitation is indefinite because it is unclear the second option is referring to the total aggregate number of Na+K ions, or if each of sodium and potassium are provided at the claimed range. For the sake of examining the claims on their merit, the former option will be assumed.
Claim 6 is indefinite because it is unclear what “a certain time” is supposed to mean. The limitation appears to provide for a specific timing, but does not provide for any such timing. There is nothing in the claims or specification to suggest that it would be clear to the ordinary artisan how long this “certain time” would last.
Claim 7 is indefinite because it is unclear how to interpret “at one moment in time.” This limitation is unclear because it does not delineate any specific moments in time.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,624,371. Although the claims at issue are not identical, they are not patentably distinct from each other because both the patent and the instant claim-set provide for methods with overlapping limitations and scope.
The patent is drawn to a method of converting carbon dioxide to methane by creating a “charged pack bed” with biofilm, under aerobic conditions, while utilizing a specifically claimed salt concentration and dissolved carbon dioxide concentration.
Similar to the patent, the instant claims provide for a method of converting carbon dioxide to methane by creating a “charged pack bed” with biofilm, under aerobic conditions, while utilizing a specifically claimed salt concentration, pH range, and phosphate level. In addition to the general method steps, which are identical, the patent and the instant claim-set provide for identical cation concentrations. The main difference between the claim-sets is that the patent clearly defines how the dissolved carbon dioxide is received, whereas the instant claim-set does not describe this value; additionally, the instant independent claim provides for a specific pH, which is described in a dependent claim in the patent (claims 14 and 19).
When looking at the limitations provided in the patent, the patent’s claim-set is broader than the instant claim-set. However, all of the limitations found in the instant claim-set would necessarily fall within the scope provided in the patent. The only major unclaimed difference between the patent and the instant claim-set is that the instant claim-set provides for a lower-limit for the phosphate concentration. When considering this limitation against the patent, it is noted that the applied example specifically utilizes a phosphate buffer saline with 50 mM phosphate, which would include the claimed range. Since the claims of the patent anticipate the claims of the instant claim-set, and the cited differences do not appear to provide for any unexpected improvements, the instant claim-set is considered non-statutory double patenting with the cited patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mets (WO 2011/003081A1); Cheng, et al (Environmental Science and Technology, 43, 3953-3958, 2009); Chen, et al (Environmental Science and Pollution Research, 23, 9540-9548, 2016).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID W BERKE-SCHLESSEL/Primary Examiner, Art Unit 1651
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