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
Claims 1-20 are pending. Claims 18-20 are withdrawn. Claims 1-18 are under examination on their merits.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/18/2026 has been entered.
Response to Arguments
Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive.
Applicant argues against the rejection of claims under 35 U.S.C. 112(b) on the grounds that the statutory category of claim 1 is clear because the preamble merely serves to define what the claimed method produces (Arguments, paragraph 2 on page 12). Applicant argues that the method steps (1)-(4) result in the production of dried lyophilized immobilized bacteria, so the activating solution and cementing agent must necessarily be provided as separate, independently packaged components to be mixed at the time of use (Arguments, points 1-2 on page 12).
In response, these arguments are unpersuasive because claim 1 does not recite any steps of either producing, providing, or packaging the cementing solution or the reactivating solution. The cementing solution and the reactivating solution are only recited in the method preamble. Thus, there is a disconnect between the claim preamble, which appears to be drawn to a product comprising a cementing solution and a reactivating solution, and the rest of the claim, which recites method steps that do not require either a cementing solution or a reactivating solution.
Applicant argues further against the rejection of claims under 35 U.S.C. 112(b) on the grounds that “having been activated” describes the transition of the bacterial strains from a dormant, preserved state (e.g., as a freeze-dried powder or a refrigerated
stock culture) into a viable, metabolically active state, whereas the activating solution describes the function of a medium (Arguments, bottom paragraph on page 13 through point 2 on page 14). Thus, Applicant concludes, there is no conflict or ambiguity because step (1) takes already-active bacteria and inoculates them into a growth-supporting medium (the activating solution) to produce a fermentation solution (Arguments, point 3 on page 14).
This argument is unpersuasive because the method does not require that the bacteria are provided as a freeze-dried powder or refrigerated stock culture, nor does the claim require that the activating solution is a growth-supporting medium. Thus, Applicant’s interpretation is narrower than the broadest reasonable interpretation of the claim, which is indefinite.
Applicant argues further against the rejection of claims under 35 U.S.C. 112(b) on the grounds that the conflict between lyophilization and the presence of activating solution/cementing agent in the final product is resolved by Applicant’s amendment to claim 1 to distinguish between the activating solution used in the preparation method and the reactivating solution provided in the final kit (Arguments, paragraph 3 on page 13).
However, claim 1 does not recite any step of providing a reactivating solution or any kit. Thus, the method preamble, which requires a reactivating solution and a cementing solution, is not integrated into the claimed method steps.
Claim Objections
Claims 2, 5-6, and 12-14 are objected to because of the following informalities:
In claims 2 and 13-14, the phrase “finally prepared” in “the immobilized mining microbial accelerator finally prepared” is superfluous since the claim is drawn to a method of preparation of the immobilized mining microbial accelerator (there is no intermediate accelerator, only the finally prepared accelerator).
In claim 5, “between 1:99 to 1:105” and “between 1:99 to 1:105” should be replaced with “between 1:99 and 1:105” and “between 1:99 and 1:105” for correct grammatical usage of “between” with a range.
In claim 6, “stirring rotating speed” is redundant and should be replaced with “stirring speed.”
In claim 12, line 8, Sporosarcina-pasteurii has an unnecessary hyphen between the Latin names.
Appropriate correction is required.
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 1-18 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 1 recites the method preamble “A method for preparing an immobilized mining microbial accelerator based on a biosurfactant-producing bacterium, the immobilized mining microbial accelerator comprising an immobilized biosurfactant-producing bacterium, an immobilized mineralization-capable bacterium, a reactivating solution, and a cementing agent, wherein the reactivating solution and the cementing agent are independently packaged before use.” Since the method preamble is drawn to a method of preparation but the limitation refers to an unspecified use, it is unclear whether the method further comprises use of the immobilized microbial accelerator and what the active method step is for the use. It is further unclear whether the steps of packaging the reactivating solution and cementing agent are part of the claimed method.
Claim 1 recites preparing each of the immobilized biosurfactant-producing bacterium and the immobilized mineralization-capable bacterium independently, by “the following operations.” Claim 1 then recites steps (1)-(4), followed by the limitation wherein the method further comprises preparing the immobilizing material by S1-S3. Thus, it is unclear whether the independent preparation of the immobilized biosurfactant-producing bacterium and the immobilized mineralization-capable bacterium also includes the preparation of the immobilizing material or whether the immobilizing material is prepared once and then divided into two separate portions for each of the biosurfactant-producing bacterium and the mineralization-capable bacterium.
Regarding step (1) of claim 1, the phrase “having been activated” further renders the claim indefinite because it is unclear how the immobilized bacteria are activated and whether this step is part of the claim scope. The claim recites inoculating the bacteria into an activating solution but requires within the same limitation that the bacteria have already been activated, so it is unclear whether inoculating the bacteria into the activating solution is a step of activating the bacteria, or whether the bacteria are activated in some other way and then inoculated into the activating solution.
In step (3) of claim 1, the claim recites “adding each of the biosurfactant-producing bacterium suspension to a first portion of the sterilized immobilizing material.” The combination of “each” (implies every individual within a group) with “the biosurfactant-producing bacterium suspension” (singular) leads to indefiniteness because it is unclear whether there is a single biosurfactant-producing bacterium suspension or multiple biosurfactant-producing bacterium suspension.
Claim 1 is further indefinite because the required components of the accelerator do not appear to result from performing the claimed method steps. For example, the accelerator comprises cementing solution and reactivating solution. However, step (4) of the claimed method requires lyophilizing, which necessarily removes liquids. Furthermore, step (1) recites an “activating solution” rather than a “reactivating solution.” The cementing solution is never recited in any of the active method steps.
Claim 2 is indefinite because the claim requires a specific volume of the reactivating solution in the immobilized mining microbial accelerator. However, the reactivating solution is never recited in any of the method steps. Furthermore, step (4) of claim 1 recites lyophilizing (freeze-drying) the solutions, so it is unclear how any solution is present in the prepared accelerator. Likewise, the claim requires “a volume of the cementing agent is 5 mL to 10 mL,” but none of the method steps require the cementing agent.
Claims 13-14 recite “the reactivating solution in the immobilized mining microbial accelerator finally prepared.” However, none of the method steps require a reactivating solution. Thus, it is unclear how the reactivating solution is part of the claimed method.
In claims 15-18, it is unclear how the cementing agent and its components are part of the claimed method since the cementing agent is not recited in any of the method steps.
Claims 2-18 are rejected for depending from a rejected base claim and not rectifying the sources of indefiniteness discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CANDICE LEE SWIFT whose telephone number is (571)272-0177. The examiner can normally be reached M-F 8:00 AM-4:30 PM (Eastern).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at (571)272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/CANDICE LEE SWIFT/Examiner, Art Unit 1657
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