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
Amended claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (dated 05/24/2024) are pending and is now under consideration for examination.
Priority
Acknowledgment is also made of applicants’ claim for foreign priority under 35 U.S.C. 119(a)-(d). This application is 371 of PCT/DK2022/050252 filed on 11/29/2022 and claims the priority date of WIPO Application PCT/DK2021/050349 filed on 11/29/2021.
Information disclosure statement
The information disclosure statement (IDS) submitted on 05/24/2024 and 05/04/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statement is considered and initialed by the examiner.
35 U.S.C. 112 Specification.
I. (e) REFERENCE IN MULTIPLE DEPENDENT FORM. — A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
MULTIPLE DEPENDENT CLAIMS/objection
I. Claim 45 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claim 45 not been further treated on the merits.
Objections to Abstract/Specification
II. The Abstract of the disclosure is objected to because, Abstract should be on a separate sheet of paper. The abstract of the disclosure is objected to because the abstract is presented as part of the first page of a WO publication. The abstract should be presented as a single sheet apart from all other bibliographic material including the information included on the first page of a WO publication. If EFS is used to submit a replacement abstract, the appropriate abstract (ABST) document code should be used for the one-page document. Correction is required. See MPEP § 608.01 (b).
Claims Objections
II. Recitation of “and/or” in claims 1, 8 and claims 2-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (depending therefrom) makes the claim indefinite, as it is not clear what limitations must be present. Correction and clarification is required. Examiner suggests amending the claim to recite “…or …”.
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.
I. Claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 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.
Regarding claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57, “A system” is a limitation that invokes 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for the claimed function. “A system” is non-structural term and the scope of the term in claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 is indefinite.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or 35 U.S.C. 112 (pre-AIA ), sixth paragraph; or
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the claimed function, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
For examination purposes claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 are interpreted to encompass a method for producing gas comprising methane… .
II. Claim 1 and claims 2-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (depending therefrom) is 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; recitation of “and/or” in claims 1 and 8 makes the claims indefinite, as it is not clear what limitations must be present. The metes and bounds of claim 1 and claims 2-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (depending therefrom) are not clear and thus, it would not be possible to one of ordinary skill in the art to define the metes and bounds of the desired patent protection. The rejection may be overcome by amending the claims to recite “… or …”. Correction and clarification is required. Examiner suggests amending the claim to recite “…or …”.
III. Claim 45 is 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 45 as being in improper form because a multiple dependent claim; it is not clear what the applicants’ intend to encompass in the rejected claims and the metes and bounds of the claims are unclear and as being indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. Correction and clarification is required.
Claim Rejections: 35 USC § 102 (AIA )
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.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claims 1-3, 6, 10, 11, 20, 22, 24-25, 32-35, 42-43 and 57 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) when given the broadest reasonable interpretation.
Regarding claims 1-3, 34-35 and 42-43, Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) disclose a thermophilic two-stage fermentation process using 10% total solids (TS) food waste and was tested at varying organic loading rates (OLRs); the system configured to produce H2 and CH4 in conjugation with the chemical oxygen demand (COD), nitrogen removal, and adjustment of the pH by returning sludge as an alkali buffer from the sludge storage tank for denitrification (see Abstract; Fig. 2-3, page S44; Table 2, page S46; Conclusion, page S47; and entire document). Lee1 et al., disclose the waste was composed mainly of grain (30–50%), vegetables (20–40%) and small amounts of meat and fish, but the constituents were highly irregular, food waste slurry (FWS) of about 10% TS was prepared by the mixing ratio of the food waste to tap-water ratio of 1:1.4 (w/w) (¶ 2.2, Feedstock, page S43); as shown in Table 1, the total CODcr in the slurry was 150 ± 5.9 g l-1, carbohydrate and protein were the major components, at 34.9 ± 2.6 g l-1 and 700 ± 40 mg l-1, respectively; the VS (volatiles solids)/TS (total solids) ratio was 0.95 ± 0.6; Lee1 et al., disclose in Table 1, page S33 the following regarding COD (150 g l-1 = 150,000 mg O2/L), nitrogen (4 g l-1), and phosphorous content and reproduced below:
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772
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Regarding claims 10, 11, 20, 22, 24-25, 32-35 and 57, Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) disclose process setup ((¶ 2.3, Process setup, col. 2, page S43), a schematic diagram of a full laboratory-scale system in parallel with a biogas generation process and a biological nitrogen removal process is shown in Fig. 1; reproduced below:
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Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S4) also disclose to establish the methanogenic culture, the seed sludge was added into the CH4 fermentation reactor without any pretreatment, after which it was supplemented with effluent discharged from the H2 fermentation reactor to the effective volume; then, the same effluent was fed into the CH4 fermentation reactor at an HRT of 30 days under the thermophilic condition of 55 0C with no pH control; the reactors were operated in a batch mode up to the activation of thermophilic fermentative bacteria, after which it was switched to the semi-continuous operation mode (¶ 2.1, Inocula, col. 1, page S43); the effluent discharged from the H2 fermentation reactor was simultaneously fed into the CH4 fermentation reactor after operation was begun (¶ 3.2, page S45).
Therefore, the reference of by Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) is deemed to anticipate claims 1-3, 6, 10, 11, 20, 22, 24-25, 32-35, 42-43 and 57 as written and when given the broadest reasonable interpretation and rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2).
Since the Office does not have the facilities for examining and comparing applicants’ method with the method of the prior art, the burden is on the applicant to show a novel or unobvious difference between the claimed method and the method of the prior art (i.e., that the method of the prior art does not possess the same material structural and functional characteristics of the method of the instant invention). See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald et al., 205 USPQ 594.
Claim Rejections: 35 USC § 103
The following is a quotation of 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.
This application currently names joint inventors. In considering patentability of the claims under 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 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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 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.
Claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) as applied to claims 1-3, 6, 10, 11, 20, 22, 24-25, 32-35, 42-43 and 57 (see 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) rejection above) and further in view of Lee2 et al., (Int. J. Hydrogen Energy., 2010, Vol. 35: 11746–11755), and Stepany et al., (US 11,168,339 B1).
The disclosure of Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) as applied to claims 1-3, 6, 10, 11, 20, 22, 24-25, 32-35, 42-43 and 57 is described above (see 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2). However, Lee1 et al., are silent regarding wherein the system further comprises a biogas upgrader for reducing the content of carbon dioxide in the biogas (as in claims 7-9); wherein the microbial electrolysis cell reactor (MECR) has a capacity of at least 5 m3; and wherein the anaerobic digestion reactor (ADR) has a capacity of at least 500 m3 (as in claims 26-27); wherein the second biomass comprises straw (as in claim 45); and wherein the system further comprises a second microbial electrolysis cell reactor configured to receive the second biomass after processing in said anaerobic digestion reactor, and to feed the second biomass to the second output after processing (as in claim 47).
Regarding claims 1-3, 6, 10, 11, 20, 22, 24-25, 26-27, 32-35, 42-43, 47 and 57, the following reference, Lee2 et al., (Int. J. Hydrogen Energy., 2010, Vol. 35: 11746–11755), provide teaching, suggestion and motivation for the choice of reactor size/volume and also disclose a pilot-scale two-phase hydrogen/methane fermentation system generated 3.9 L biogas per unit time and reactor volume from food waste, of which the fraction of H2 was approximately 60% at a hydraulic retention time (HRT) of 21 h and suggest based on our economic evaluation, two-phase hydrogen/methane fermentation has greater potential for recovering energy than methane-only fermentation (see Abstract; and entire document); Lee2 et al., teaches the hydrogen fermentation tank was composed of stainless steel and had a working volume of 500 L (H: 1200 mm and W: 800 mm), temperature sensor (¶ 2.1.1., col. 2, page 1147); methane fermentation tank a working volume of 2300 L (H, 2700 mm; W, 700 mm; and L, 1220 mm) with sensor (¶ 2.1.3., col. 2, page 1147) also see Schematic of the pilot-scale two-stage hydrogen/methane fermentation plant (Fig. 1, page 11748). Lee2 et al., provide teaching, suggestion and motivation for a skilled artisan regarding the volume of reactors, number of reactors and configuration of the production plant depending on the experimental need and suggest “The two reactions-the formation of organic acids and H2 and methane production can be separated, at least partially, in distinct bioreactors in series, wherein the first, smaller reactor produces organic acids, H2, and CO2 and the second, much larger, reactor generates CH4 and CO2. Such two-phase anaerobic digestion methods have been proposed to optimize the growth of each type of bacteria in separate reactors, specifically by growing acetogenic bacteria under acidic conditions (pH 5-6) and short hydraulic residence times (HRTs) (1-2 days) in the first stage; slow-growing methanogenic bacteria, which require a more neutral pH, are preferentially cultured in the second stage at a longer HRT (10-20 days)” (see col. 1, ¶ 3, page 11747).
Regarding claims 7-9 and 45, the following reference, analogous art Stepany et al., (US 11,168,339 B1) provides teaching, suggestion and motivation to a skilled artisan regrading wherein the system further comprises a biogas upgrader for reducing the content of carbon dioxide in the biogas, teaches integrated approach in a process and systems for anaerobic digestion of lignocellulosic feedstock (e,g., grass straw) into bio-gas such as CH4 and CO2 and co-products (see Abstract; pages 10-11; and entire document), wherein biogas upgrader enables separation of CH4 and CO2 to produce enriched stream of CH4 ( Fig. 14-17; Claims and entire document).
As such, disclosure of strategy and methods for “regarding wherein the system further comprises a biogas upgrader for reducing the content of carbon dioxide in the biogas; wherein the microbial electrolysis cell reactor (MECR) has a capacity of at least 5 m3; and wherein the anaerobic digestion reactor (ADR) has a capacity of at least 500 m3; wherein the second biomass comprises straw; as in claims 7-9, 26-27, 45 and 47 of the instant invention, such as that of references of Lee2 et al., and Stepany et al., teaching the advantages of said modifications, clearly suggests to a skilled artisan to modify the teachings of Lee1 et al., and incorporate the structural and functional elements of Lee2 et al., and Stepany et al., in the claimed method for increased production of H2 and CH4 as claimed in the instant invention. One of ordinary skill in the art would have a reasonable expectation of success, since the method of increased production of H2 and CH4 utilizing two-stage fermentation process using total solids (TS) of food waste are well known in the art.
Regarding specific choice of reactors, reactor configuration, number of reactors, sensors and biogas upgrader are also provided/suggested in the combination of references, and examiner also takes the position the following position; optimization of known variables, and the examiner finds support in: MPEP 2144.05 [R-5]: A. Optimization Within Prior Art Conditions or Through Routine Experimentation Generally, differences in reactors, reactor configuration, number of reactors, sensors and biogas upgrader etc., will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation". As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 617 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re Aller, 220 F2d 454,456,105 USPQ 233,235 (CCPA 1955). Furthermore, "it is prima facie obvious to combine two or more methods each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition or third method to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)”. Therefore, the above invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Therefore, claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lee1 et al., (Bioresour. Technol., 2010, Vol. 101, pages S42–S47) as applied to claims 1-3, 6, 10, 11, 20, 22, 24-25, 32-35, 42-43 and 57 (see 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) rejection above) and further in view of Lee2 et al., (Int. J. Hydrogen Energy., 2010, Vol. 35: 11746–11755), and Stepany et al., (US 11,168,339 B1).
Double Patenting rejection
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Amended claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (dated 05/24/2024) of the instant invention are provisionally rejected on the ground of nonstatutory double patenting over amended claims 1-2, 8, 10-11, 13, 20-21, 23, 25-26, 28, 32, 34-37, 39, 41 and 48 (dated 05/24/2024) of co-pending Application No. 18/713,600 (US 20250011819 A1). This is a provisional double patenting rejection because the patentably indistinct claims have not in fact been patented.
The subject matter claimed in the instant application is fully disclosed in the referenced co-pending application and would be covered by any patent granted on that co-pending application since the referenced co-pending application and the instant application are claiming common subject matter, the instant application claims and co-pending application claims recite “comprising” and is an open language and includes unrecited elements, and the claimed common subject-matter is as follows: The recited amended claims 1-2, 8, 10-11, 13, 20-21, 23, 25-26, 28, 32, 34-37, 39, 41 and 48 (dated 05/24/2024) of co-pending Application No. 18/713,600 (US 20250011819 A1) encompass “a method for producing product gas comprising methane, the method comprising the steps of providing a biomass (BM), subjecting the biomass (BM) to an anaerobic digestion to produce biogas and a biomass digestate, separating the biomass digestate into a liquid digestate fraction and a solid digestate fraction, subjecting the liquid digestate fraction to microbial electrolysis cell processing to produce methane and/or hydrogen gas… wherein the method further comprises upgrading the biogas by reducing the content of carbon dioxide in the biogas” and the subject-matter as claimed in amended claims 1-3, 6-11, 17, 20, 22, 24-27, 32-35, 42-43, 45, 47 and 57 (dated 05/24/2024) of the instant application, falls entirely within the scope of co-pending claims in co-pending reference application.
Allowable Subject Matter/Conclusion
None of the claims are allowable.
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/GANAPATHIRAMA RAGHU/ Primary Examiner, Art Unit 1652
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