UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/453,376
`
`03/08/2017
`
`Yuya SUZUKI
`
`MIYAPOIOIWOUSA
`
`5378
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`SALTEK AARON J
`
`ART UNIT
`1724
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/04/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/453,376
`Examiner
`AARON J SALTER
`
`Applicant(s)
`SUZUKI et al.
`Art Unit
`1724
`
`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 5/10/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`6,9,11 and 13—15 is/are pending in the application.
`
`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
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`is/are allowed.
`
`Claim(s) 6,9,11 and 13—15 is/are rejected.
`
`[:1 Claim(s)
`
`is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12):] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)D All
`
`b)I:I Some**
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`c)CI None of the:
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`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date M.
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190522
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 2
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`15/45DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`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
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`finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's
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`submission filed on 5/10/19 has been entered.
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`Information Disclosure Statement
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`3.
`
`The information disclosure statement (IDS) submitted on 4/3/19 was filed after the mailing date
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`of the Final Office Action on 2/13/19. The submission is in compliance with the provisions of 37
`
`CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
`
`set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, if the differences between the claimed invention
`and the prior art are such that the claimed invention as a whole would have been obvious before the
`effective filing date of the claimed invention to a person having ordinary skill in the art to which the
`claimed invention pertains. Patentability shall not be negated by the manner in which the invention
`was made.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
`
`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 3
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
`
`4.
`
`Claims 6, 9, 11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tabata
`
`(JP 2015072820 A) (utilizing the 10/3/13 filing date) (see English machine translation attached) in further
`
`in view of Huang et al. "Electricity generation from a floating microbial fuel cell".
`
`5.
`
`Regarding claims 6 and 9, Tabata discloses a microbial fuel cell (Translation; [0001]) comprising:
`
`a liquid comprising organic matter (Translation; [0017]); an anode (50) (Fig. 12) placed in the liquid
`
`comprising the organic matter; an air cathode (60) having an air intake portion (the portion of the cavity
`
`of the hollow fiber membrane 40 above the liquid level; see annotated Fig. 12 below) for taking air into
`
`the air cathode (Translation; [0029]); and an oxygen-blocking portion (70) for blocking oxygen from
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`dissolving in the liquid comprising the organic matter through the surface of the liquid comprising the
`
`organic matter (the oxygen-blocking portion is hovering over the surface of the liquid and is thus
`
`capable of blocking oxygen; see annotated Fig. 12 reproduced below), the air intake portion passing
`
`through the oxygen- blocking portion (see annotated Fig. 12 reproduced below), the air cathode further
`
`having cathodes (as per Fig. 10(b) and [0082] of the translation, ”the plurality of cross-sections” are
`
`being interpreted as multiple cathodes; see annotated Fig. 12 reproduced below) and an air chamber
`
`(the portion of the cavity of the hollow fiber membrane 40 below the liquid level; see annotated Fig. 12
`
`reproduced below) between the cathodes, the cathodes being in contact with the air chamber (see
`
`annotated Fig. 12 reproduced below), the cathodes and the air chamber being placed in the liquid (see
`
`annotated Fig. 12 reproduced below), the air cathode being an air cathode in which air is capable of
`
`being passed through the air intake portion and being taken into the air chamber and air taken into the
`
`air chamber is capable of being in contact with the air cathode (see annotated Fig. 12 reproduced
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 4
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`below), wherein the oxygen-blocking portion is coupled to the air cathode and the anode (Tabata; via
`
`the hollow fiber membrane 40; see annotated Fig. 12 reproduced below).
`
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`6.
`
`Tabata further discloses that the oxygen-blocking portion supports an upper end portion of the
`
`anode and the air cathode and allows the microbial fuel cell to change positions relative to the liquid
`
`(Translation; [0026]).
`
`7.
`
`Tabata also discloses wherein the anode comes in contact with organic substances in organic
`
`waste water and electricity-producing bacteria and electrons are released from the bacterial cell to
`
`anode (Translation; [0004], [0032]).
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 5
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`8.
`
`Tabata also appears to be open to modifications of the oxygen-blocking portion as long as it
`
`retains the function of supporting a membrane between the air cathode and anode (Translation;
`
`[0044]).
`
`9.
`
`Tabata does not disclose wherein the oxygen-blocking portion having floating properties for the
`
`liquid comprising the organic matter, the oxygen-blocking portion being so placed that the oxygen-
`
`blocking portion is capable of fluctuating following a fluctuation of a position of the liquid surface, the
`
`entirety of the oxygen-blocking portion being placed above the anode in a direction transverse to the
`
`surface of the liquid, and wherein the oxygen blocking portion floats on the surface of the liquid
`
`comprising the organic matter.
`
`10.
`
`Huang teaches a microbial fuel cell (Abstract) comprising: a liquid comprising organic matter
`
`(sea water; Fig. 1); an oxygen-blocking portion (rubber stopper; Fig. 1) for blocking oxygen from
`
`dissolving in the liquid comprising the organic matter through the surface of the liquid comprising the
`
`organic matter (”preventing excessive oxygen flux into the anode chamber”; P3092C1), the oxygen-
`
`blocking portion having floating properties for the liquid comprising the organic matter (rubber stopper
`
`can float; Fig. 1), the oxygen blocking portion being so placed that the oxygen-blocking portion is
`
`capable of fluctuating following a fluctuation of a position of the liquid surface (the floating property of
`
`the rubber stopper allows the rubber stopper to fluctuate with the sea water level; Fig. 1), the entirety
`
`of the oxygen-blocking portion being placed above the anode (anode; Fig. 1) in a direction transverse to
`
`the surface of the liquid (Fig. 1) maximizing the amount of anode that can be embedded in the marine
`
`sediment (P312:C1) and thus increasing the power output of the fuel cell (P311:C2), and wherein the
`
`oxygen-blocking portion floats on the surface of the liquid comprising the organic matter (Fig. 1) t_o
`
`overcome the limitation due to water depth (P308:C2).
`
`11.
`
`It would have been obvious to one of ordinary skill in the art at the time the application was
`
`filed to utilize the oxygen-blocking portion of Huang for the oxygen-blocking portion of Tabata to
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 6
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`overcome the limitation due to water depth and the skilled artisan would have a reasonable expectation
`
`of success in doing so thus reading on the claim language ”wherein the oxygen-blocking portion having
`
`floating properties for the liquid comprising the organic matter, and the oxygen-blocking portion being
`
`so placed that the oxygen-blocking portion is capable of fluctuating following a fluctuation of a position
`
`of the liquid surface”.
`
`12.
`
`It would have been obvious to one of ordinary skill in the art at the time the application was
`
`filed to locate the oxygen-blocking portion of modified Tabata such that the entirety of the oxygen-
`
`blocking portion is placed above the anode as taught in Huang maximizing the amount of anode that can
`
`be embedded in the marine sediment and thus increasing the power output of the fuel cell and the
`
`skilled artisan would have a reasonable expectation of success in doing so.
`
`13.
`
`Regarding claims 4 and 7, modified Tabata discloses all the limitations of the microbial fuel cell
`
`above and further discloses wherein the oxygen-blocking portion is in contact with the air cathode
`
`(Tabata; through the hollow fiber membrane 40; Fig. 12).
`
`14.
`
`Regarding claims 5 and 8, modified Tabata discloses all the limitations of the microbial fuel cell
`
`above and further discloses wherein the oxygen-blocking portion is coupled to the air cathode (Tabata;
`
`via the hollow fiber membrane 40; Fig. 12).
`
`15.
`
`Regarding claims 11 and 13, modified Tabata discloses all the limitations of the microbial fuel
`
`cell above and further discloses that by having multiple microbial fuel cells, it is possible to increase the
`
`power generation and the water throughput (Translation; Tabata; [0073]).
`
`16.
`
`Thus modified Tabata discloses wherein the air cathode is one of a plurality of air cathodes
`
`having an air intake portion for taking air into the air cathode, each of the plurality of air cathodes
`
`comprising a cathode, and the anode is located between the respective cathodes of the plurality of air
`
`cathodes (Tabata; see modified Fig. 12 reproduced below).
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 7
`
`
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`17.
`
`It would have been obvious to one of ordinary skill in the art at the time the application was
`
`filed to structure the plurality of air cathodes of modified Tabata as claimed because it would make it
`
`possible to increase the power generation and the water throughput and the skilled artisan would have
`
`a reasonable expectation of success in doing so.
`
`18.
`
`Regarding claims 14 and 15, modified Tabata discloses all the limitations of the microbial fuel
`
`cell above and further discloses that the oxygen-blocking portion holds a plurality of microbial fuel cells
`
`(Tabata; Fig.8). Furthermore, modified Tabata discloses that by increasing the number of microbial fuel
`
`cells, the power generation and the water throughput increases (Translation; Tabata; [0073]). Therefore
`
`by increasing the contact area of the oxygen-blocking portion in 100% of the total surface area of the
`
`liquid surface, the number of sites for the placement of microbial fuel cells increases which thus will
`
`necessarily increase the power generation and the water throughput.
`
`19.
`
`Thus, in an effort to maximize the power generation and the water throughput, the skilled
`
`artisan would have found it obvious to maximize the contact area of the oxygen-blocking portion in
`
`100% of the total surface area of the liquid surface such that the contact area is within the claimed
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 8
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`range of 50% in order to maximize the number of microbial fuel cells allowing for an increase in power
`
`generation and the water throughput.
`
`20.
`
`It would have been obvious to one of ordinary skill in the art at the time the application was
`
`filed to increase the contact area of the oxygen-blocking portion of modified Tabata to within the
`
`claimed range in order to increase the number of microbial fuel cells to in-turn increase the power
`
`generation and the water throughput and the skilled artisan would have a reasonable expectation of
`
`success of doing so.
`
`Response to Arguments
`
`21.
`
`Applicant’s arguments with respect to claims 6 and 9 have been considered but are moot
`
`because the arguments do not apply to any of the combination of references being used in the current
`
`rejection.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to AARON J SALTER whose telephone number is (469)295-9103. The examiner can
`
`normally be reached on M-F 9:00-6:00.
`
`Examiner interviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
`
`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Miriam Stagg can be reached on (571) 270-5256. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
`
`

`

`Application/Control Number: 15/453,376
`Art Unit: 1724
`
`Page 9
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`CANADA) or 571-272-1000.
`
`/AARON J SALTER/
`Examiner, Art Unit 1724
`
`/JONATHAN G LEONG/
`
`Primary Examiner, Art Unit 1725
`5/30/2019
`
`