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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,478,007. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 12,478,007 anticipates claim 8 of the instant application. Claim 1 of the instant invention and claim 12 of U.S. Patent No. 12,478,007 are mapped and compared below.
Claim 12 of U.S. Patent No. 12,478,007 recites:
[An algal growth system comprising: a. a flexible sheet material to facilitate growth of a biofilm; b. a liquid reservoir configured to retain a contacting liquid in contact with the flexible sheet material][1]; [c. a mechanism to rotate the flexible sheet material through the contacting liquid; d. an enclosure housing the flexible sheet material and the liquid reservoir; and e. a resource reclamation device associated with the enclosure, wherein the resource reclamation device is configured to collect and provide a resource for reuse][3], [and wherein the resource reclamation device is selected from the group consisting of a condenser, a heat exchanger, an air-conditioning compressor, a direct air capture device, or a chiller][5], [the liquid source is wastewater][2], [wherein the algal growth system will produce water that is collected by the resource reclamation device, and wherein the collected water is cleaner than the wastewater][4].
While claim 1 of the instant invention recites:
[An algal growth system comprising: a. a flexible sheet material to facilitate growth of a biofilm; b. a liquid reservoir configured to retain a contacting liquid in contact with the flexible sheet material][1], [wherein the contacting liquid is wastewater][2]; [c. a mechanism to rotate the flexible sheet material through the contacting liquid; d. an enclosure housing the flexible sheet material and the liquid reservoir; and e. a resource reclamation device associated with the enclosure, wherein the resource reclamation device is configured to collect and provide a resource for reuse][3], [wherein the resource reclamation device is a condenser][5], [wherein the collected resource is water, and wherein the collected water is cleaner than the wastewater contacting liquid][4].
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 17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the relationship between the flexible sheet of material and the frame of the invention. Without structural relationships between the flexible sheet and frame or other elements of the device it is unclear how a height is determined.
Response to Arguments
Applicant’s arguments with respect to newly amended claims rejected under the prior art of record as discussed in the previous office action have been fully considered and are persuasive. The rejection of the claims under prior art has been withdrawn.
Applicant’s amendment of the claims has overcome the Non-Statutory Double Patenting rejection of claims 1-18 over at least claim 1 of US Patent No 12,108,713.
The double patenting rejection of the claims under U.S. Patent No. 12,478007 is maintained and elaborated above. It is unclear which part of the rejection the applicant needs clarification on. Claim 12 depends from and includes all limitations of claim 1 of U.S. Patent No. 12,478007 and cannot be considered in a void. Claim 12 when read in its entirety anticipates claim 1 of the instant invention.
Applicant's arguments filed with respect to claim 1 rejected under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection to claim 1 is withdrawn.
Applicant's arguments filed with respect to claim 17 rejected under 35 U.S.C. 112(b) have been fully considered but they are not persuasive.
Focusing on the current application, claim 17 includes a limitation to the height of flexible sheet material. A limitation referring to the height of an element of a device implies a vertical alignment or thickness of that element. Given the instant specification, the height of the flexible sheet material is considered the “distance between the uppermost point of the supporting material 12 while being utilized within the photobioreactor 10, and the lowermost point of the supporting material while being utilized within the photobioreactor 10” (emphasis added). The height of the flexible sheet material is only considered when it is actively being used by the photobioreactor, meaning the photobioreactor would need to be present within the claim for the flexible sheet material to have height. (Instant invention, ¶0059).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN C HAYES whose telephone number is (571)272-7881. The examiner can normally be reached M-F 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michener Joshua can be reached at 571.272.1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTEN C HAYES/Primary Examiner, Art Unit 3642
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