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 .
Applicant canceled claims 54 and 54, which were previously rejected both under 35 U.S.C. 112(d) and 35 U.S.C. 112(b).
Applicant amended claims 25 and 32 such that they now represent the best mode of their invention, and the data shown in Tables 4 and 5 of present specification successfully demonstrates unexpected results of having the amount of the first (coating) layer, amount of the second (coating) layer, and the respective weight percentages of the hydrogenated vegetable oil and stearic acid in each of the first and the second (coating) layers in the claimed ranges (see Comp. nos. 2L-16, 2L-17, 2L-18, 2L-19 and 2L-20 (all representing present invention of the amended claims 25 and 32), which show significantly better results with respect to the post-ruminally released urea and post-ruminally released nitrogen) compared to other compositions). Thus, in view of such showing of unexpected superior results, previous 103 rejections over Astra-Ewos (GB 1 493 425) in view of Wright et al (US 2010/0272852 A1) are hereby withdrawn.
Since applicant have not filed a terminal disclaimer yet, instant double patenting rejection over co-pending application 16/651,062 (now U.S. Pat. No. US 12,226,531 B2) still stands.
THIS ACTION IS MADE FINAL. 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.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 25, 27, 31, 32, 34-47 and 55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Pat. No.12, 226,531 B2 (previously, co-pending Application No. 16/651,062). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Claims 1-3 of Pat. No.’531 teach the following:
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Claim 4 of Pat.’531 also teaches a feed, feed material, premix or feed additive comprising the composition of claim 1.
Since claim 1 of Pat.’531 teaches that its composition is for feeding a ruminant, it would have been obvious to one skilled in the art to feed (administer) the composition of claim 1 (or a feed, feed material, premix or feed additive comprising the composition of claim 1 as claimed in claim 4 of Pat.’531) to a ruminant with a reasonable expectation of success, and such feeding would naturally improve nitrogen utilization of a non-protein nitrogen compound in a ruminant as instantly recited in claim 25.
Claims 1-2 of Pat.’531 teach instant range 60 ± 10 wt.% for the amount of hydrogenated vegetable oil and instant range 40 ± 10 wt.% for the amount of stearic acid in the first (coating) layer as well as instant range 75 – 90 ±5 wt.% for the amount of hydrogenated vegetable oil and instant range 10-25 ±5 wt.% for the amount of stearic acid in the second (coating) layer. Furthermore, since claim 5 of Pat.’531 teaches that the composition consists of 6-15 wt.% of the first (coating) layer and 1-6 wt.% of the second (coating) layer, one skilled in the art would be able to envisage using 6 wt.% of the first (coating) layer and 1 wt.% of the second(coating) layer, both of which amounts teach instant range (5-10 wt.%) for the amount of the first (coating) layer and instant range (1-5 wt.%) for the amount of the second (coating) layer, respectively. Also, when using 6 wt.% of the first (coating) layer and 1 wt.% of the second (coating) layer, it teaches instant limitation “the first layer is present in the total composition in a higher wt.% than the second layer.”
Thus, claims 1-5 of Pat.’531 render obvious instant claims 25, 27, 31, 32, 34-47 and 55 (since claims 1-5 of Pat.’531 teach instant composition of claims 25 and 32 and render obvious instant method of claims 25 and 32, when one feeds (administers) the composition taught in claims in Pat.’531 to a ruminant, such administration would naturally bring the results as recited in claims 35-43; As to instant claim 34, claim 4 of Pat.’531 teaches that the composition of claim 1 can be comprised in a feed material, and it is a well-known fact that such feed material typically contains forages and grains; It is the Examiner’s position that instant feeding regimen of claims 44 and 45 would have been obvious because determining feeding regimen that would give the optimum result would be well within the realm of one of ordinary skill in the art).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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.
/SIN J LEE/Primary Examiner, Art Unit 1613 May 30, 2026
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