DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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 negated by the manner in which the invention was made.
The factual inquiries 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.
Claims 35,36,38-40,42,44,46-50 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Linden et al. (US 20050061737 A1) in view of El-Shafie (US 20120122164 A1).
For claim 35, Linden et al. teach a system for soil enrichment comprising:
one or more bioreactors,
an ozone generator (para. 0053,0054,0093,1180,160,0161),
a nutrient feed supply (para. 0055,0095,0096,0098,0099,0150,0161)
a carbon dioxide source (para. 0092,0107,0152,0154,0155,0175);
wherein the carbon dioxide source is configured to supply carbon dioxide to a lower part of each of the one or more bioreactors (para. 0093,0094,0096,0097,0099, 0100,0132,0141,0142,0149,0151,0163, the CO2 is in the whole bioreactor, thus, any part is considered a lower part from the top most part of the bioreactor);
wherein the system is configured to receive water from an on-site water source of a farm (functional recitation to which the system of Linden can and does perform the intended function because it is an aquaculture system, which is considered a farm to raise aquatic plants and animals; also, the on-site water source can be from valve 12b).
However, although Linden et al. teach algae in the system in para. 0068,0071,0155, it is unclear if Linden et al. teach the system is configured to provide live microalgae cells to an effluent of the one or more bioreactors; and wherein the effluent is configured to feed the live microalgae cells to a water flow of an irrigation system.
El-Shafie teaches a system for soil enrichment comprising live microalgae cells (para. 0070) to an effluent of the one or more bioreactors (para. 0175,0180); and wherein the effluent is configured to feed the live microalgae cells to a water flow of an irrigation system (para. 0074,0150,0153,0154,0156). It would have been obvious to one having ordinary skill in the art at the time the invention was made to configure the system of Linden et al. to provide live microalgae cells to an effluent of the one or more bioreactors, and wherein the effluent is configured to feed the live microalgae cells to a water flow of an irrigation system as taught by El-Shafie in order to harvest live microalgae and at the same time use the water from the effluent of the bioreactor to nourish the plants, for the effluent contains valuable nutrients for enhancing plant growth.
For claim 36, Linden et al. as modified by El-Shafie teach the system of claim 35, and further comprising one or more monitoring devices (para. 0163 of Linden).
For claim 38, Linden et al. as modified by El-Shafie teach the system of claim 36, wherein the one or more monitoring devices are configured to measure nutrient content in the effluent (para. 0163 of Linden, functional recitation to which the sensor of Linden can be configured to measure nutrient or other parameters as desired, for that is what a sensor does). In the event that applicant disagrees with the examiner’s interpretation of the claimed limitation and Linden’s teaching, El-Shafie also teaches a sensor to measure nutrient content in the effluent (para. 0091,0175,0203,0238). Thus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the one or more monitoring devices of Linden et al. as modified by El-Shafie be configured to measure nutrient content in the effluent as further taught by El-Shafie in order to measure nutrient in the system.
For claim 39, Linden et al. as modified by El-Shafie teach the system of claim 35, but are silent about wherein the system is configured to support a flow-through capacity of about 0.35-0.7 gallons per minute. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie be configured to support a flow-through capacity of about 0.35-0.7 gallons per minute, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 40, Linden et al. as modified by El-Shafie teach the system of claim 39, but are silent about wherein the system is configured to support a field in a range of 200-1000 acres. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie be configured to support a field in a range of 200-1000 acres, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 42, Linden et al. as modified by El-Shafie teach the system of claim 35, wherein the system is placed within an enclosure (para. 0072,0093 of Linden, “The system may be built indoors, in industrial production units, warehouses or in greenhouses or placed in the open land terrain, in freshwater-, river-, estuarine or marine systems, according to temperature, humidity and climatologic restrictions and the industrial production units or specific requirements by the species in agri- or aquaculture.”).
For claim 44, Linden et al. as modified by El-Shafie teach the system of claim 36, but are silent about wherein the system includes eight bioreactors. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have eight bioreactors in the system of Linden et al. as modified by El-Shafie, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it is has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
For claim 45, Linden et al. as modified by El-Shafie teach the system of claim 36, further including the ozone generator (Linden et al. teach the ozone generator as stated in the above for claim 35).
For claim 46, Linden et al. as modified by El-Shafie teach the system of claim 44, further including a pressurized air supply (para. 0152 of Linden).
For claim 47, Linden et al. as modified by El-Shafie teach the system of claim 46, but are silent about further including an ultra-violet light system. In addition to the above, El-Shafie teaches his system further including an ultra-violet light system (para. 0087, 0088,0111,0220, etc.). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include an ultra-violet light system as further taught by El-Shafie in the system of Linden et al. as modified by El-Shafie in order to sterilize the system.
For claim 48, Linden et al. as modified by El-Shafie teach the system of claim 47, further comprising a water tank (can be refs. 10,12, in Linden); and where in the water tank is configured to receive the water from the on-site water source of the farm (from valve 12b in Linden).
For claim 49, Linden et al. as modified by El-Shafie teach the system of claim 48, but are silent about wherein the system is configured to provide about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie be configured to provide about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 50, Linden et al. as modified by El-Shafie teach the system of claim 49, but are silent about further comprising a mechanical agitator. In addition to the above, El-Shafie further teaches a mechanical agitator (para. 0088,0111,0176). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a mechanical agitator as further taught by El-Shafie in the system of Linden et al. as modified by El-Shafie in order to stir the solution to prevent stagnation and to decompose the chlorine dioxide as stated in El-Shafie.
Claim 37 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Linden et al. as modified by El-Shafie as applied to claims 35,36 above, and further in view of Gyure (US 20090130704 A1).
For claim 37, Linden et al. as modified by El-Shafie teach the system of claim 36, but are silent about wherein the one or more monitoring devices are configured to measure a microalgae titer in the effluent.
Gyure teaches a bioreactor comprising one or more monitoring devices are configured to measure a microalgae titer in the effluent (para 0212,0227,0235). It would have been obvious to one having ordinary skill in the art at the time the invention was made to configure the one or more monitoring devices of Linden et al. as modified by El-Shafie to measure a microalgae titer in the effluent as taught by Gyure in order to provide monitored data for reaching a target measurement of the microalgae in the system.
Claims 41,43 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Linden et al. as modified by El-Shafie as applied to claim 35 above, and further in view of Ericsson (US 8569050 B1).
For claim 41, Linden et al. as modified by El-Shafie teach the system of claim 35, but are silent about further comprising a flow-imaging device configured to generate images of the live microalgae cells.
Ericsson teaches a bioreactor comprising a flow-imaging device configured to generate images of the live microalgae cells (col. 21, lines 19-25). It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a flow-imaging device configured to generate images of the live microalgae cells as taught by Ericsson in the system of Linden et al. as modified by El-Shafie in order to monitor the microalgae health and growth rates as stated in Ericsson.
For claim 43, Linden et al. as modified by El-Shafie teach the system of claim 35, but are silent about wherein the one or more bioreactors comprise light-permeable walls.
In addition to the above, Ericsson teaches the bioreactors comprise light-permeable walls (col. 9, lines 59-65, col. 12, lines 41-50, col. 17, lines 33-40, etc.). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the one or more bioreactors of Linden et al. as modified by El-Shafie be comprised of light-permeable walls as taught by Ericsson in order to allow light to enter the bioreactor so as to enhance microalgae growth.
Claims 51-55 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Linden et al. (as above) in view of El-Shafie (as above) and Roth (US 5833857 A).
For claim 51, Linden et al. as modified by El-Shafie teach the system for soil enrichment as described above, thus, please see above. Not described is a trailer, wherein the one or more bioreactors, the ozone generator, the nutrient feed supply, and
the carbon dioxide source are each mounted on the trailer.
Roth teaches a mobile bioreactor wherein all the equipment can be mounted on a trailer (60) for mobility. It would have been obvious to one having ordinary skill in the art at the time the invention was made to include a trailer as taught by Roth, wherein the one or more bioreactors, the ozone generator, the nutrient feed supply, and
the carbon dioxide source of Linden et al. as modified by El-Shafie are each mounted on the trailer in order to allow transport of the system to a desire location and to provide a mobile system.
For claim 52, Linden et al. as modified by El-Shafie and Roth teach the system of claim 51, but are silent about wherein the system is configured to support a field in a range of 200-1000 acres. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie and Roth be configured to support a field in a range of 200-1000 acres, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 53, Linden et al. as modified by El-Shafie and Roth teach the system of claim 52, but are silent about wherein the system is configured to support a flow-through capacity of about 0.35-0.7 gallons per minute. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie and Roth be configured to support a flow-through capacity of about 0.35-0.7 gallons per minute, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 54, Linden et al. as modified by El-Shafie and Roth teach the system of claim 53, but are silent about wherein the system is configured to provide about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the system of Linden et al. as modified by El-Shafie and Roth be configured to provide about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors, depending on the user’s preference to have a mass production system or larger scale system or smaller scale system, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claim 55, the limitations have been explained in the above, thus, please see above teaching of Linden et al. as modified by El-Shafie and Roth.
Response to Arguments
Applicant's arguments filed 5/5/2026 have been fully considered but they are not persuasive. Applicant argued the following:
Applicant respectfully submits there is no mention of ozone in Linden, paragraph 0087.
The examiner made an inadvertent error in typing the paragraph because para. 0087 is actually El-Shafie, and the examiner inadvertently typed that paragraph instead of Linden’s paragraphs 0053,0054,0093,1180,160,0161. It is clear from Linden that there are multiple excerpts where he teaches ozone. With today’s technology, a text search on the word “ozone” in Linden would have guided applicant to these paragraphs; thus, should not hinder applicant’s response to the rejection.
In addition, although the examiner recites certain excerpts from the prior art, MPEP 2141.02 VI states “Prior art must be considered in its entirety, including disclosures that teach away from the claims”. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Furthermore, Linden was relied on in the parent case 15/647005 & 16/207528, which the examiner did have the correct paragraphs for teaching ozone; thus, again, applicant could have referred to these parent cases for a teaching of ozone in Linden.
Paragraph 0055 mentions a fermentation reactor; paragraphs 0071 and 0122 do not disclose anything about nutrients; and there is no paragraph 0238. Accordingly, a nutrient feed supply is not taught by the art as cited.
Para. 0055 stated fermentation reactor which includes particulate organic material, and as para. 0104 stated, the organic material can be used for soil improvement or compost, which clearly are nutrients. One skill in the art would know that organic material from fermentation has nutrients for plants, animals, and soil improvement. As stated in the above, although the examiner recites certain excerpts from the prior art, MPEP 2141.02 VI states “Prior art must be considered in its entirety, including disclosures that teach away from the claims”.
Para. 0071,0122,0238 are inadvertent errors that are taught in El-Shafie and not Linden. However, as stated in the above, although the examiner recites certain excerpts from the prior art, MPEP 2141.02 VI states “Prior art must be considered in its entirety, including disclosures that teach away from the claims”. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Furthermore, Linden was relied on in the parent case 15/647005 & 16/207528, which the examiner did have the correct paragraphs for teaching nutrient feed supply; thus, again, applicant could have referred to these parent cases for a teaching of nutrient feed supply in Linden.
Moreover, a text search on the word “nutrient” in Linden would have guided applicant to these paragraphs; thus, should not hinder applicant’s response to the rejection.
Respectfully, Linden discloses a closed-loop system that delivers "drinking water" to the environment. Modifying Linden to produce algae would render the reference unusable for its intended purpose. Similarly, paragraphs 0074, 0150, 0153, 0154, and 0156 all teach that El-Shafie's system only outputs purified water, there is no disclosure of feeding algae to an irrigation system… The Office has cited two systems that only output purified water and asserted that the reengineering both to provide live microalgae cells to an effluent of the one or more bioreactors would somehow be obvious without citing any teachings in the two references that support the Office's position. The only reference supporting such a motivation statement is Applicant's own disclosure, which is indicative of impermissible hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Linden teaches in para. 0068 that the water can be used for plants or algae; and para. 0162 stated that, although the system produces drinking water, the water can also be used for aquaculture system or expelled back into the environment. Thus, it is clear that Linden’s system is NOT only for drinking water. El-Shafie teaches a system for soil enrichment comprising live microalgae cells (para. 0070) and the resultant or effluent can be use as irrigation as pointed out in the paragraphs above. Thus, it is not hindsighting into applicant’s own disclosure because the references teach the claimed limitation. It would have been obvious to one having ordinary skill in the art at the time the invention was made to configure the system of Linden et al. to provide live microalgae cells to an effluent of the one or more bioreactors, and wherein the effluent is configured to feed the live microalgae cells to a water flow of an irrigation system as taught by El-Shafie in order to harvest live microalgae and at the same time use the water from the effluent of the bioreactor to nourish the plants, for the effluent contains valuable nutrients for enhancing plant growth.
Regarding the rejection of claim 38, Linden paragraph 0163 only mentions bypasses and is irrelevant to the limitations of the claim. None of EI-Shafie paragraphs 0091, 0175, 0203, 0238 mention monitoring nutrient content. Furthermore, the Office has not identified a nutrient supply in the primary reference.
Applicant only select the word “bypasses” in para. 0163 to argue but the rest of the paragraph clearly stated “pumps, electrical monitoring devices with sensors, UV-units, fermentation units, culturing tanks, sedimentation and screening units are applied for all units in the processing of water.” Thus, it is clear that Linden teaches one or more monitoring devices. El-Shafie was relied on just in case applicant disagrees with the examiner’s interpretation of Linden. Regardless, if applicant disagrees with Linden teaching monitoring device, El-Shafie at least teaches monitoring device. Thus, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the one or more monitoring devices of Linden et al. as modified by El-Shafie be configured to measure nutrient content in the effluent as further taught by El-Shafie in order to measure nutrient in the system.
As for the nutrient supply argument, please see above comments.
Regarding the rejection of claim 39, Linden par. 0170 gives a flowrate of 500 m/\3/day which is 91.7 gal/min: the claimed range of 0.35-0.7 range would render Linden unsuitable for its intended purpose. The Office alleges that it would be obvious to reduce the flowrate of Linden by over 90% to make a smaller scale plant that can now both purify water and deliver algae. However, this does not follow logically, as the systems needed to purify the water are large and expensive and there is no evidence reducing the size to such an extent would even allow the system to function as designed, much less as reengineered by the Office.
It is not clear as to why applicant does not believe that it is logical to reduce the size of the system if the user wishes to have a smaller scale production? If one does not have enough revenue to have a large-scale system, why not consider a smaller scale system? It would appear to be logical to do such configuration if one does not have enough revenue to operate a large-scale operation.
In addition, the claimed limitation states “the system is configured to support a flow-through capacity of about 0.35-0.7 gallons per minute.”, which a large-scale system as applicant stated for Linden should be able to support a smaller capacity of about 0.35-0.7 gallons per minute because it can handle larger capacity so why not smaller capacity?
Furthermore, under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, where 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. In re Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136. Applicant has not proven the capacity ranges as claimed is critical and that Linden’s system cannot be configured to perform such function.
Regarding the rejection of claims 40 and 52, the Office reduces the primary reference's output by 90%, and now asserts that the modified "smaller scale system" for producing algae filled drinking water could support 200-1000 acres. No teaching in any reference supports the Office's position.
Same comments as above for the capacity, it is not clear as to why applicant does not believe that it is logical to reduce the size of the system if the user wishes to have a smaller scale production? If one does not have enough revenue to have a large-scale system, why not consider a smaller scale system? It would appear to be logical to do such configuration if one does not have enough revenue to operate a large-scale operation.
In addition, the claimed limitation states “the system is configured to support a field in a range of 200-1000 acres.”, which a large-scale system as applicant stated for Linden should be able to support a smaller capacity of about 0.35-0.7 gallons per minute because it can handle larger capacity so why not smaller capacity?
Furthermore, under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, where 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. In re Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136. Applicant has not proven the field in a range of 200-1000 acres as claimed is critical and that Linden’s system cannot be configured to perform such function.
Regarding the rejection of claim 49, Linden is not designed to provide a flowrate of microalgae cells at all, much less at the cited range. Doing so would remove the algae performing the purification and contaminate the output of "drinking water" thereby destroying the reference.
Same comments as above for the capacity, it is not clear as to why applicant does not believe that it is logical to reduce the size of the system if the user wishes to have a smaller scale production? If one does not have enough revenue to have a large-scale system, why not consider a smaller scale system? It would appear to be logical to do such configuration if one does not have enough revenue to operate a large-scale operation.
In addition, the claimed limitation states “the system is configured to provide about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors”, which a large-scale system as applicant stated for Linden should be able to support a smaller scale of about 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors because it can handle larger capacity so why not smaller capacity?
Furthermore, under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 CCPA (Patents) 830, 73 F.2d 931, 24 USPQ 52; In re Waite et al., 35 CCPA (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 CCPA (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 CCPA (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 CCPA (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 CCPA (Patents) 1248, 150 F.2d 627, 66 USPQ 308; In re Irmscher, 32 CCPA (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, where 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. In re Swain et al., 33 CCPA (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D.C. 324, 135 F.2d 11, 57 USPQ 136. Applicant has not proven the 800,000 live microalgae cells per second at a water flowrate of about 0.35 gallons per minute to the effluent of the one or more bioreactors as claimed is critical and that Linden’s system cannot be configured to perform such function.
Regarding the rejection of claim 37, nothing in Gyure paragraphs 0212, 0227 and 0235 mentions a monitoring device. It is also unclear what in the primary reference is being modified as there is no clear element-to-element mapping for this (or any other) rejection. As there is no teaching in Linden or El-Shafie of "microalgae titer in the effluent" the Office's modification does not follow logically.
Para. 0212 stated that a target biomass titer is needed to be reach, thus, it is implied that there is a monitoring device is there to indicate when the target value is reached. Otherwise, how would the user know unless there is some sort of monitoring device to indicate a target value?
Para. 0227 stated “When the photosynthetic culture has reached both the desired cell titer”, which implied that there has to be some sort of monitoring device in order to know when a desired cell titer is reached. Otherwise, how would the system know this without a monitoring device?
Para. 0235 stated “When the photosynthetic culture has reached the desired cell titer in a batch process”, which implied that there has to be some sort of monitoring device in order to know when a desired cell titer is reached. Otherwise, how would the system know this without a monitoring device?
Thus, it is clear that it would have been obvious to one having ordinary skill in the art at the time the invention was made to configure the one or more monitoring devices of Linden et al. as modified by El-Shafie to measure a microalgae titer in the effluent as taught by Gyure in order to provide monitored data for reaching a target measurement of the microalgae in the system.
As for the comment of “It is also unclear what in the primary reference is being modified as there is no clear element-to-element mapping for this (or any other) rejection. As there is no teaching in Linden or El-Shafie of "microalgae titer in the effluent" the Office's modification does not follow logically.”, of course there is no teaching in Linden as modified by El-Shafie about microalgae titer in the effluent, which is why Gyure is relied thereon for such teaching.
In addition, the limitation does not even claim microalgae titer in the effluent because all that is being claimed is one or more monitoring devices functionally can measure microalgae titer in the effluent. As stated, Gyure teaches both the monitoring device for microalgae titer in the effluent and the microalgae titer in the effluent. Thus, It would have been obvious to one having ordinary skill in the art at the time the invention was made to configure the one or more monitoring devices of Linden et al. as modified by El-Shafie to measure a microalgae titer in the effluent as taught by Gyure in order to provide monitored data for reaching a target measurement of the microalgae in the system.
Regarding the rejection of claim 51, the Office has miniaturized a high flowrate water purification facility, modified it to add algae to drinking water, and now asserts it would be obvious to put such a system on a trailer for transport. Respectfully, nothing in any cited reference renders such a modification obvious.
Roth teaches a mobile bioreactor wherein all the equipment can be mounted on a trailer (60) for mobility. Thus, one skill in the art would include a trailer as taught by Roth, wherein the one or more bioreactors, the ozone generator, the nutrient feed supply, and the carbon dioxide source of Linden et al. as modified by El-Shafie are each mounted on the trailer in order to allow transport of the system to a desire location and to provide a mobile system.
In addition, high flowrate water purification facility has nothing to do with mounting the equipment on a trailer for mobility purposes. One can turn down the flowrate, for example, in the pump and does not have to have it on high.
Furthermore, all equipment can be down size and not manufacture as large-scale. This is old and well known in any industry, especially if the user wishes to transport the equipment, which is what Roth teaches. Thus, the modification with Roth to the combination of Linden as modified by El-Shafie is proper and logical.
Conclusion
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/Son T Nguyen/Primary Examiner, Art Unit 3643
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