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 .
The amendment filed September 24, 2025 is acknowledged. Claims 13 and 19-23 are pending in the application. Claims 1-12 and 14-18 have been cancelled.
Claim Objections
Claim 13 is objected to because of the following informalities:
In claim 13, the amendment at line 4 (“water”) in the claim set submitted September 24, 2025 is not reflective of the previous version of claim 13 at line 4 (“water”) in the claim set filed April 15, 2025 which is considered as the immediate prior version of the claim.
Applicant is reminded that amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered). All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended,” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” See MPEP 714.
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.
Claim 22 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 22 recites “the smolt window” at lines 1-2, and this claim depends upon claim 13. This recitation in claim 22 lacks antecedent basis as there is no mention of a smolt window in claim 13. Therefore, the scope of claim 22 is indefinite. For the purpose of the examination, the recitation of “the smolt window” (emphasis added) at lines 1-2 of claim 22 is interpreted as “a smolt window” (emphasis added).
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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13 and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Sweeney US 3916832 (hereinafter “Sweeney”) in view of Aksnes US 20120004157 (hereinafter “Aksnes”) and Harris, Jr. et al. US 20050028742 (hereinafter “Harris”).
With respect to claim 13, Sweeny teaches a method of rearing salmon and harvesting them (C3, L19-21; and C11, L62-C12, L1).
Regarding the recitation of “for smoltification and harvesting of Salmonidae” in the preamble of the claim, it is noted that this recitation is a statement of intended use or field of use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, then the preamble is not considered a limitation and is of no significance to the claim construction. See MPEP 2111.02.
Regarding the recitation of comprising: a) providing a fish feed comprising protein, fat, carbohydrates, vitamins, minerals and water in claim 13, Sweeny teaches providing a fish feed comprising protein, fat, vitamins, minerals, and water (C21, L37-52).
However, Sweeney does not expressly disclose the fish feed comprises carbohydrates.
Aksnes teaches fish farming and feeding salmonoids a fish feed. The fish feed comprises protein, fat, carbohydrates, vitamins, minerals, and water (paragraphs [0039], [0040], [0041], [0044], [0047], [0059], [0060], and [0219]-[0221]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Aksnes, to select carbohydrates in the feed of Sweeney based in its suitability for its intended purpose with the expectation of success. One of ordinary skill in the art would have been motivated to do so because Aksnes and Sweeney similarly teach fish feeds for salmon comprising similar ingredients, Sweeney teaches food for rearing salmon is well known in the art (C21, L37-39 and 50-52), Aksnes teaches carbohydrates are sources of energy for fish diets, dietary nutrients are essential for the construction of living tissues, and balanced diets promote optimal fish growth and health (paragraphs [0042], [0044], and [0060]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein the fish feed comprises Na+ (sodium) from 3.934-39.340 g/kg by weight, Mg2+ (magnesium) from 0.026-25.530 g/kg by weight, Ca2+ (calcium) from 0.036-36.110 g/kg by weight, and Cl- (chloride) from 6.202-199.020 g/kg in claim 13, Sweeney teaches the fish food comprises minerals (C21, L37-39 and 49).
However, Sweeney does not expressly disclose the food includes Na+, Mg2+, Ca2+, and Cl-.
Aksnes teaches fish farming and feeding salmonoids a fish feed (paragraphs [0039], [0040], [0041], [0044], [0047], and [0219]-[0221]). The fish feed comprises minerals (paragraphs [0065] and [0066]) such as sodium in the range of 1-50 g/kg (0.1 to 5%, paragraph [0179]), magnesium in the range of 0.1-5 g/kg (0.01 to 0.5 %, paragraph [0177]), calcium in the range of 1-40 g/kg (0.1 to 4%, paragraph [0175]), and chloride in the range of 1-200 g/kg (0.1 to 20%, paragraph [0180]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Aksnes, to select sodium, magnesium, calcium, and chloride and their respective quantities in the method of Sweeney based in their suitability for their intended purpose with the expectation of success. One of ordinary skill in the art would have been motivated to do so because Aksnes and Sweeney similarly teach fish feeds for salmon comprising similar ingredients including minerals, Sweeney teaches food for rearing salmon is well known in the art (C21, L37-39 and 50-52), Aksnes teaches minerals are necessary in the diet for normal body function, dietary nutrients are essential for the construction of living tissues, and balanced diets promote optimal fish growth and health (paragraphs [0042], [0044], and [0065]-[0066]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of wherein the feed comprises a polyvalent cation receptor (PVCR) modulator in the form of free amino acid of at least one of tryptophan from 1-10 g/kg by weight, tyrosine from 1-10 g/kg by weight, phenylalanine from 1-10 g/kg by weight, serine from 1-10 g/kg by weight, alanine from 1-10 g/kg by weight, arginine from 1-10 g/kg by weight, histidine from 1-10 g/kg by weight, leucine from 1-10 g/kg by weight, isoleucine from 1-10 g/kg by weight, aspartic acid from 1-10 g/kg by weight, glutamic acid from 1-10 g/kg by weight, glycine from 1-10 g/kg by weight, lysine from 1-10 g/kg by weight, methionine from 1-10 g/kg by weight, proline from 1-10 g/kg by weight, glutamine from 1-10 g/kg by weight, asparagine from 1-10 g/kg by weight, threonine from 1-10 g/kg by weight, valine from 1-10 g/kg by weight, or cysteine from 1- 10 g/kg by weight in claim 13, Sweeney teaches the fish food comprises amino acids (C21, L37-40).
However, Sweeney does not expressly disclose the amino acids are at least one of the listed amino acids as recited in claim 13.
Harris teaches a method of inducing smoltification in anadromous fish (e.g., salmon, char, and trout). Fish feed containing at least one PVCR modulator is provided to the fish for consumption. The PVCR modulators can include amino acids such as tryptophan, tyrosine, phenylalanine, alanine, serine, arginine, histidine, leucine, isoleucine, and cysteine, and the amino acids are present at concentrations of between about 1 to about 10 g/kg of feed (paragraphs [0005], [0009], [0043], [0048], and [0049]).
Aksnes teaches fish farming and feeding salmonoids a fish feed. The feed is supplemented with appropriate amounts of amino acids such as methionine, arginine, threonine, tryptophan, histidine, isoleucine, lysine, leucine, valine, phenylalanine, tyrosine, serine, alanine, aspartic acid, glutamic acid, glycine, proline, and cysteine (paragraphs [0039], [0040], [0041], [0044], [0047], [0050], [0053], [0106]-[0125], [0196], and [0219]-[0221]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Aksnes and Harris, to select the specific amino acids and their respective quantities as the amino acids in the method of Sweeney based in their suitability for their intended purpose with the expectation of success. One of ordinary skill in the art would have been motivated to do so because Aksnes, Harris, and Sweeney similarly teach fish feeds for salmon comprising similar ingredients including amino acids, Sweeney teaches food for rearing salmon is well known in the art (C21, L37-39 and 50-52), Aksnes teaches amino acids are nutritionally appropriate for growing fish, dietary nutrients are essential for the construction of living tissues, and balanced diets promote optimal fish growth and health (paragraphs [0042], [0044], and [0053]), Harris teaches the feed improves the raising of the fish, increases or improves food consumption, and increases growth (paragraphs [0005], [0007], [0041], and [0060]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Regarding the recitation of b) administering the fish feed of a) in fresh water or brackish water to a population of parr or desmoltified fish or a combination thereof, until the fish achieve a status of smoltification in claim 13, modified Sweeney teaches this limitation since Sweeney teaches salmon 0-6 months of age (fry and parr) in freshwater are fed the fish feed and the fish develop into smolts (C8, L16-19; C20, L61-62; C21, L3-8, 15-26, and 50-52), and Sweeney as modified by Aksnes and Harris is relied upon for the teaching of the claimed fish feed as addressed above.
Regarding the recitation of c) after smoltification, maintaining the fish in fresh water or brackish water on a diet of the fish feed from a) until the fish achieve harvesting weight; wherein the fish are not transferred to seawater prior to achieving harvesting weight in claim 13, modified Sweeney teaches this limitation since Sweeney teaches the smolts are fed the fish feed in brackish water until they reach optimum marketable weight (C4, L64-C5, L2; C11, L62-63; C21, L3-8, 15-26, and 50-52), Sweeney is silent with respect to transferring the smolt to seawater prior to achieving harvesting weight, and Sweeney as modified by Aksnes and Harris is relied upon for the teaching of the claimed fish feed as addressed above.
Regarding the recitation of d) harvesting the fish after they achieve harvesting weight in claim 13, modified Sweeney teaches this limitation since Sweeney teaches harvesting the fish after optimum marketable weight is achieved (C11, L62-63; C12, L1; and C20, L50-56).
With respect to claim 20, modified Sweeney is relied upon for the teaching of the method of claim 13 as addressed above.
Regarding the recitation of wherein the fish feed is administered to the fish in the absence of adding additional ions to the freshwater or brackish water, said ions consisting of Mg2+ and Ca2+, and further provided that the population of fish is not subjected to winter signals, said addition of ions and winter signal being sufficient to induce smoltification in claim 20, it is noted that the recitation that an element is “sufficient” to perform a given function is not a positive limitation but only requires he ability to so perform. It does not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138. Modified Sweeney teaches the limitation of claim 20 since Sweeney is silent with respect to the addition of Mg2+ and Ca2+ to the freshwater or brackish water as well as subjecting the fish to winter signals (C3, L19-21; C8, L16-19; C11, L62-C12, L1; C20, L50-56 and 61-62; C21, L3-8, 15-26, and 37-52).
With respect to claim 21, modified Sweeney is relied upon for the teaching of the method of claim 13 as addressed above.
Regarding the recitation of wherein the fish feed alone is used to smoltify the fish in claim 21, modified Sweeney teaches this limitation since Sweeney teaches feeding fish the fish feed and smoltification of the fish as addressed above in claim 13, and Sweeney as modified by Aksnes and Harris is relied upon for the teaching of the fish feed as addressed above in claim 13.
With respect to claim 22, modified Sweeney is relied upon for the teaching of the method of claim 13 as addressed above.
Regarding the recitation of wherein the fish are kept within a smolt window until harvest in claim 22, modified Sweeney teaches this limitation since Sweeney teaches feeding the smolts the fish feed until they reach optimum marketable weight and harvesting the fish after optimum marketable weight is achieved as addressed above in claim 13 (C4, L64-C5, L2; C11, L62-63; C12, L1; C20, L50-56; C21, L3-8, 15-26, and 50-52).
With respect to claim 23, modified Sweeney is relied upon for the teaching of the method of claim 13 as addressed above.
Regarding the recitation of wherein the polyvalent cation receptor (PVCR) modulator comprises the free amino acid of tryptophan from 1-10 g/kg by weight, and optionally an additional PVCR modulator selected from tyrosine from 1-10 g/kg by weight, phenylalanine from 1-10 g/kg by weight, serine from 1-10 g/kg by weight, alanine from 1-10 g/kg by weight, arginine from 1-10 g/kg by weight, histidine from 1-10 g/kg by weight, leucine from 1-10 g/kg by weight, isoleucine from 1-10 g/kg by weight, aspartic acid from 1-10 g/kg by weight, glutamic acid from 1-10 g/kg by weight, glycine from 1-10 g/kg by weight, lysine from 1-10 g/kg by weight, methionine from 1-10 g/kg by weight, proline from 1-10 g/kg by weight, glutamine from 1-10 g/kg by weight, asparagine from 1-10 g/kg by weight, threonine from 1-10 g/kg by weight, valine from 1-10 g/kg by weight, cysteine from 1-10 g/kg by weight, and combinations thereof in claim 23, Sweeney as modified by Aksnes and Harris teaches this limitation since Sweeney teaches the fish food comprises amino acids (C21, L37-40) and Aksnes and Harris are relied upon for the teaching of at least one PVCR modulator, including 1-10 g/kg by weight of tryptophan, as addressed above in claim 13.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Sweeney US 3916832 (hereinafter “Sweeney”) in view of Aksnes US 20120004157 (hereinafter “Aksnes”) and Harris, Jr. et al. US 20050028742 (hereinafter “Harris”) as applied to claim 13 above, and in further view of Vandenberg et al. US 20080095888 (hereinafter “Vandenberg”).
With respect to claim 19, modified Sweeney is relied upon for the teaching of the method of claim 13 as addressed above.
Regarding the limitation of wherein the fish feed comprises sodium salts from 10 -100 g/kg by weight, magnesium salts from 0.1-100 g/kg by weight, and calcium salts from 0.1-100 g/kg by weight as recited in claim 19, modified Sweeney does not expressly disclose the claimed quantities of sodium salts, magnesium salts, and calcium salts.
Harris teaches a method of inducing smoltification in anadromous fish (e.g., salmon, char, and trout). Fish feed containing about 10-100 g/kg (about 10,000-100,000 mg/kg) NaCl is provided to the fish for consumption (paragraphs [0005], [0009], [0043], [0048], [0049], [0051], and [0063]).
Vandenberg teaches one or more nutritional ingredient which may be formulated into a food composition, such as fish feeds, and can be administered orally to animals (fish). The mineral nutrients include calcium salts and magnesium salts, and the nutritional ingredient comprises at least 1% of the food composition (at least 10 g/kg) (paragraphs [0016], [0018], [0026], and [0056]; and P8, claim 25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Harris and Vandenberg, to select any portions of the disclosed ranges of sodium salts, magnesium salts, and calcium salts, including the instantly claimed ranges, from the ranges disclosed in the prior art with the expectation of successfully preparing a functional product. One of ordinary skill in the art would have been motivated to do so because Sweeney, Harris, and Vandenberg similarly teach fish feed compositions comprising minerals that are administered to fish, Vandenberg teaches providing nutritional ingredients which can improve the growth of the fish (paragraphs [0016], [0018], and [0055]), and Harris teaches the feed improves the raising of the fish, increases or improves food consumption, and increases growth (paragraphs [0005], [0007], [0041], and [0060]). There would have been a reasonable expectation of success. "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages " In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Response to Arguments
Applicant’s remarks filed September 24, 2025 are acknowledged.
Due to the amendments to the claims, the claim objections as well as the 35 USC 112 rejection in the previous Office Action have been withdrawn (P4). However, the claim objections and the 35 USC 112 rejection above are necessitated by the amendments made to the claims.
Applicant’s arguments have been fully considered, but they are unpersuasive (P5-P9).
Applicant argues Sweeney is completely silent as to whether the smolts in the primary body of brackish water maintain their smolt status until harvesting. Sweeney does not address how the smolt status of the fish influences their growth performance or overall health. The brackish water conditions described in Sweeney are likely to trigger desmoltification. A person skilled in the field would have had no clear reason to look for a method to smoltify such fish-especially fish that were already considered smoltified, like those transferred to brackish water as smolts. As a result, using the fish feed disclosed in Harris together with added ions in the rearing water would not have made practical sense. Aksnes does not specify whether methionine should be added as a free amino acid or in the form of peptides or methionine-rich proteins. A skilled person would have no clear motivation to use the feed disclosed in Aksnes with a reasonable expectation of success in smoltifying fish and maintaining them within the smolt window to prevent desmoltification. Applicant recognized not only that a fish feed composition provides for smoltifying fish and maintaining them within the smolt window to prevent desmoltification prior to harvest, but that this approach also effectively eliminates the issue of sea lice as sea lice cannot survive in freshwater. The cited references do not recognize this problem nor do they fairly teach or suggest the claimed solution.
Examiner disagrees. The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine Sweeney, Aksnes, and Harris is found within the references themselves as well as in the knowledge generally available to one of ordinary skill in the art.
Modified Sweeney teaches the presently claimed method. As previously addressed, Sweeny teaches providing a fish feed comprising protein, fat, vitamins, minerals, amino acids, and water (C21, L37-52). While Sweeney does not expressly disclose the fish feed comprises carbohydrates, Na+, Mg2+, Ca2+, and Cl- , and the amino acids are at least one of the listed amino acids in claim 13, Aksnes and Harris are relied upon for these teachings.
One of ordinary skill in the art would have been motivated to select carbohydrates, sodium, magnesium, calcium, and chloride and their respective quantities, and the specific amino acids and their respective quantities as the amino acids in the feed of Sweeney based in their suitability for their intended purpose with the expectation of success because Aksnes, Harris, and Sweeney similarly teach fish feeds for salmon comprising similar ingredients, Sweeney teaches food for rearing salmon is well known in the art (C21, L37-39 and 50-52), Aksnes teaches carbohydrates are sources of energy for fish diets, minerals are necessary in the diet for normal body function, amino acids are nutritionally appropriate for growing fish, dietary nutrients are essential for the construction of living tissues, and balanced diets promote optimal fish growth and health (paragraphs [0042], [0044], [0053], [0060], and [0065]-[0066]), Harris teaches the feed improves the raising of the fish, increases or improves food consumption, and increases growth (paragraphs [0005], [0007], [0041], and [0060]), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected results. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
Additionally, modified Sweeney teaches the fish are kept within a smolt window until harvest since Sweeney as modified by Aksnes and Harris is relied upon for the teaching of the claimed fish feed and Sweeney teaches feeding the smolts the fish feed until they reach optimum marketable weight and harvesting the fish after optimum marketable weight is achieved as addressed above in claim 13 (C4, L64-C5, L2; C11, L62-63; C12, L1; C20, L50-56; C21, L3-8, 15-26, and 50-52).
Further, it is also noted that mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) (Claims were directed to grooved carbon disc brakes wherein the grooves were provided to vent steam or vapor during a braking action. A prior art reference taught noncarbon disc brakes which were grooved for the purpose of cooling the faces of the braking members and eliminating dust. The court held the prior art references when combined would overcome the problems of dust and overheating solved by the prior art and would inherently overcome the steam or vapor cause of the problem relied upon for patentability by applicants. Granting a patent on the discovery of an unknown but inherent function (here venting steam or vapor) "would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art." 596 F.2d at 1022, 201 USPQ at 661.); In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991) (Appellant argued that the presence of DEHP as the plasticizer in a blood collection bag unexpectedly suppressed hemolysis and therefore rebutted any prima facie showing of obviousness, however the closest prior art utilizing a DEHP plasticized blood collection bag inherently achieved same result, although this fact was unknown in the prior art.).
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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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