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
This Office Action is in response to the Applicant’s reply received 11/10/25. Claims 80-90 are considered on the merits.
Election/Restriction Requirement
Applicant’s election without traverse of Group I, claims 80-90 in the reply filed on 11/10/25 is acknowledged. Claims 91-99 are withdrawn
Claim Rejections - 35 USC § 112
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 80-90 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.
Claim 80 has the limitation “cultivating…cells by gas bioprocessing to produce a biomass”. The Specification does not define the term “gas bioprocessing”. The Specification does have a single use of “syngas bioprocessing”. However it is unclear what limitations are imparted with “bioprocessing”. For example, this could mean the cells are producing syngas or are consuming syngas. These are two mutually exclusive scenarios that blur the metes and bounds of the claim.
The preamble of claim 80 state “producing a microbial nutrition product”. The steps of the method do not indicate when this nutrition product is created. Step d, limits “homogenizing the biomass under high pressure” but it is unclear if this is the final step that produces the nutrition product. This issue is not remedied in claim 85. This claim state “wherein homogenizing the biomass, at least in part,
creates the microbial nutritional product”. Claim 85 only seems to recite an intended result of the active steps, and not add an active step to the method. MPEP 2111.04 I states “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed”. Since claims 85 and 95 appear to lack an active step to ‘create’ it is unclear how these further limit the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 83 and 85 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 83, 85, 94 and 95 have the limitation “microbial nutritional product” [emphasis added] which differs from “microbial nutrition product” in their parent claims. It is unclear if these two limitations are synonyms or different compositions. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 80-90 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In the instant case, the Specification does not disclose the method steps in a cohesive manner to indicate they had possession of the invention for the following reasons:
Claims 80-90 were not presented in any parent application. Their 1st appearance was a preliminary amendment when this Applicant was filed on 3/25/25.
The Specification does not use the term “microbial nutrition product” or “microbial nutritional product”. The two instances of “nutritional product” are in [432-433]. These paragraphs do not detail the steps a)-d) of claim 80 so there is no link between the nutritional product and the claimed steps.
Steps a)-d) are not found together in the Specification attached to any method. The Specification does not disclose any embodiment nor any alternative embodiments where the sequences of steps a)-d) are executed.
The concept of “cultivating Xanthobacter bacterial cells by gas bioprocessing to produce a biomass” is not disclosed in the Specification. This phrase is not found in the Specification. Also the terms “bioprocessing” and “Xanthobacter” are not found in the same vicinity of the Specification. The only instance of bioprocessing is for syngas, a much narrower term, than simply gas.
“heating the biomass to a temperature of at least 30°C for at least 10 minutes” was not found near cultivating Xanthobacter biomass. The closest guidance in the Specification was [395] which is for acid or alkali hydrolysis of the microbial cells. It is not in direct reference to Xanthobacter, and does not provide any guidance on how this hydrolysis is integrated into the other steps.
The Specification does not disclose concentrating the biomass from steps a) and b) by separating it from the culture medium nor the subsequent step of homogenization of the biomass in step c). The closest teaching found was [413] which discloses the step, but not how it is integrated into the method.
The step of homogenizing the biomass under high pressure is not linked to the other steps, nor to the goal of producing a microbial nutrition product.
The limitation of “at least 60% water by weight” in claim 83 was not found in the Specification nor was it attributed to a nutrition product; and
The limitation of “at least 40% dry matter by weight” was not found in the Specification nor was it attributed to a microbial nutrition product.
In summary, while the Specification does disclosed some of the steps of the claims, these are not collected into a single embodiment, or listed as alternative embodiments. The Specification does not appear to link these steps to a common goal of producing a microbial nutritional product from Xanthobacter cultured from gas bioprocessing. One of ordinary skill in the art would not immediately envision the method of claim 80 from the totality of the Specification, but would require some inspiration to assemble the disembodied steps into an invention resembling claim 80.
Free of the Art
The closest prior art is WO 2017/165244 with priority to March 19th, 2016. However this prior art cannot be applied since it falls under a 102(b)(2)(A) exception because John Reed, Jil Geller, and Sonali Hande are common inventors. Other close prior art is WO 01/60974 which produces a single cell bacteria protein by fermenting Methylococcus capsulatus with natural gas (WO’974 pg 6, lines 25-30 and pg 8 lines 5-10). However they only disclose using methanotrophic bacteria, which does not include Xanthobacter.
In response to this office action the applicant should specifically point out the support for any amendments made to the disclosure, including the claims (MPEP 714.02 and 2163.06).
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THANE E UNDERDAHL whose telephone number is (303) 297-4299. The examiner can normally be reached Monday through Thursday, M-F 8-5 MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at (571) 272-3311.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THANE UNDERDAHL/Primary Examiner, Art Unit 1699