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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 December 2025 has been entered.
Status
Applicant’s response dated 15 December 2025 to the previous Office action dated 14 July 2025 is acknowledged. Pursuant to amendments therein, claims 15-17, 19, 21-25, 29-30, and 33-38 are pending in the application.
The rejections under 35 U.S.C. 112 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but new rejections under 35 U.S.C. 112 are made herein in view of applicant’s claim amendments.
The rejections under 35 U.S.C. 103 made in the previous Office action is/are withdrawn in view of applicant’s claim amendments, but new (modified) rejection(s) under 35 U.S.C. 103 is/are made herein in view of applicant’s claim amendments.
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 35 and 38 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.
Claims 35 and 38 recite the limitation "the nanoparticle" in line 1. There is insufficient antecedent basis for this limitation in the claim, given that parent claim 30 recites three differently-composed nanoparticles and thus it is confusing as to which nanoparticle is being referenced. See MPEP 2173.05(e).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 35 and 38 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 35 and 38 fail to include all the limitations of claim 30 upon which they depend in that claim 30 requires three differently-composed nanoparticles whereas claims 35 and 38 allow for singly-composed nanoparticles (e.g., nanoparticle comprises/consists of starch and betaine).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claim(s) 15-17, 19, 21-25, 29, and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harel (WO 2004/043140 A2; published 27 May 2004; of record) in view of Jimenez-Fernandez et al. (Aquaculture, vol. 432, 2014, pages 426-433; of record).
Harel discloses a delivery vehicle for bioactive agents to aquatic animals (abstract) wherein a particle comprises starch (claims 29, 33) and bioactive agent(s) (claim 28) such as vitamins, antibiotics, hormones, minerals, peptides, and proteins (claim 30) and tetracycline (claim 36) wherein a particle size is from about 1-5000 µm (claim 61) wherein a particle is used for aquatic animals (claim 69) such as rotifers and Artemia (claim 70) wherein feed comprising microparticles is for aquatic animals (claim 53) wherein a bioattractant for aquatic animals such as betaine stimulates a target animal to more readily consume a material (paragraph [047]) wherein the composition may be dry powder (Example 11) and feeding may be daily (Examples 7, 9-10, 16) wherein a microparticle may comprise a digestible or non-digestible polymer such as starch and an emulsifier (paragraphs [020]-[021]; claim 13) wherein an emulsifier may be a fatty acid (paragraph [051]).
Harel does not disclose the particles as nanoparticles as claimed.
Jimenez-Fernandez et al. discloses nanoparticles as a delivery system for vitamin C administration in aquaculture (title) wherein rotifers ingested nanoparticles of size 37-83 nm and nanoparticles are a good tool to determine bioavailability and nutrient requirements in small aquatic organisms (pages 431-432).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Harel and Jimenez-Fernandez et al. by daily feeding (i.e., application to) rotifers (i.e., a zooplankton) particles comprising starch and emulsifier such as fatty acid and bioactive agents such as vitamins and/or tetracycline (i.e., antibiotic) and optionally betaine bioattractant to stimulate the rotifers to more readily consume the particles as suggested by Harel, wherein the particles are nanoparticles of size 37-83 nm and vitamins include vitamin C as suggested by Jimenez-Fernandez et al., wherein the result is the predictable feeding of the rotifers and delivering thereto of vitamins such as vitamin C, tetracycline antibiotic, and betaine attractant (i.e., active molecules of interest), with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to combine such teachings because Harel teaches feeding rotifers particles and Jimenez-Fernandez et al. teaches that nanoparticles are suitable size particles to feed to rotifers, and thus providing rotifers nanoparticle feed would have predictably resulted in successful consumption of the feed nanoparticles by the rotifers. A person of ordinary skill in the art before the effective filing date of the claimed invention would also have been motivated to combine such teachings to include vitamin C in the particles because Harel teaches inclusion of vitamins in the particles, and Jimenez-Fernandez et al. teaches that vitamin C is a suitable vitamin to feed to small aquatic organisms such as rotifers.
Regarding the claimed recitation of average size of 40-200 nm, such claimed size range overlaps the prior art size range of 37-83 nm as discussed above, and a prima facie case of obviousness exists where prior art and claimed ranges overlap per MPEP 2144.05(I).
Regarding claim 16, the method and composition therein of Harel and Jimenez-Fernandez et al. as discussed above is at least substantially identical to the claimed method, and thus the results/properties recited in claim 16 are presumed to be inherent in the method and composition of Harel and Jimenez-Fernandez et al. as discussed above per MPEP 2112(V) as they are the natural results of the combination of prior art elements as discussed above, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II) and therefore feeding such composition to rotifers as in the method of Harel and Jimenez-Fernandez et al. as discussed above must produce the same results as feeding the claimed composition to rotifers as claimed.
Regarding claim 19, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize health of the rotifers by varying the concentrations of vitamins such as vitamin C, tetracycline antibiotic, and/or betaine attractant in the particles of the method and composition of Harel in view of Jimenez-Fernandez et al. as discussed above through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success.
Regarding claim 23, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to follow the suggestions of Harel as discussed above and to make the nanoparticles in the method and composition of Harel in view of Jimenez-Fernandez et al. as discussed above in powder form, with a reasonable expectation of success.
Regarding claim 24, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to optimize health of the rotifers by varying the concentration of nanoparticle feed in the method and composition of Harel in view of Jimenez-Fernandez et al. as discussed above through routine experimentation per MPEP 2144.05(II), with a reasonable expectation of success.
Regarding claim 29, the method and composition therein of Harel and Jimenez-Fernandez et al. as discussed above is at least substantially identical to the claimed method, and thus enriching the nutritive value of zooplankton as recited in claim 29 is presumed to be inherent in the method and composition of Harel and Jimenez-Fernandez et al. as discussed above per MPEP 2112(V) as such is the natural result of the combination of prior art elements as discussed above, given that compositions that are physically the same must have the same properties per MPEP 2112.01(II) and therefore feeding such composition to rotifers as in the method of Harel and Jimenez-Fernandez et al. as discussed above must produce the same results as feeding the claimed composition to rotifers as claimed.
Claim(s) 15-17, 19, 21-25, 29-30, and 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harel in view of Jimenez-Fernandez et al. as applied to claims 15-17, 19, 21-25, 29, and 37 above, and further in view of Otero Casal et al. (US 2017/0306364 A1; published 26 October 2017; of record).
Harel and Jimenez-Fernandez et al. are relied upon as discussed above.
Harel and Jimenez-Fernandez et al. do not disclose vitamin B12 as in claims 30, 36, and 38.
Otero Casal et al. discloses enrichment of microalgae biomass (title) wherein microalgae is used to feed rotifers wherein vitamin B12 is essential to the growth of rotifers and is added to rotifer culture medium/feed (paragraphs [0001]-[0005]).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Harel, Jimenez-Fernandez et al., and Otero Casal et al. by using the vitamin B12 of Otero Casal et al. as a vitamin in the method and composition of Harel in view of Jimenez-Fernandez et al. as discussed above, with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to promote growth of the rotifers as suggested by Otero Casal et al. given that Harel suggests adding vitamins to the nanoparticles.
Response to Arguments
Applicant's arguments regarding obviousness filed 15 December 2025 have been fully considered but they are not persuasive.
Applicant argues that it is unclear why one would have looked to Jimenez-Fernandez et al. absent the teachings and claims of the instant application (remarks page 6). In response, a person of ordinary skill in the art would have looked to Jimenez-Fernandez et al. because Harel teaches feeding rotifers particles and Jimenez-Fernandez et al. teaches that nanoparticles are suitable size particles to feed to rotifers, and thus providing rotifers nanoparticle feed would have predictably resulted in successful consumption of the feed nanoparticles by the rotifers. A person of ordinary skill in the art before the effective filing date of the claimed invention would also have been motivated to combine such teachings to include vitamin C in the particles because Harel teaches inclusion of vitamins in the particles, and Jimenez-Fernandez et al. teaches that vitamin C is a suitable vitamin to feed to small aquatic organisms such as rotifers.
Applicant argues that Examples 3 and 12-14 provide data showing unexpected results of increased numbers and hatching rates using nutrient loaded versus unloaded starch nanoparticles (remarks page 7). In response, it is not clear how such results are unexpected given that increased nutrients would be expected to increase numbers and hatching rates, and it is also unclear what the exact compositions tested are (e.g., all constituents, concentrations of constituents, particle sizes, etc.) such that it can be determined whether the results are commensurate in scope with the claimed invention. Applicant is reminded that the burden is on applicant to establish that results are in fact unexpected and unobvious and of both statistical and practical significance, per MPEP 716.02(b). Such evidence of unexpected results must be commensurate in scope with the claimed invention per MPEP 716.02(d), and must compare the claimed subject matter with the closest prior art (or closer) per MPEP 716.02(e).
Allowable Subject Matter
Claims 33-34 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: although Harel discloses a delivery vehicle for bioactive agents to aquatic animals (abstract) wherein a particle comprises starch (claims 29, 33) and bioactive agent(s) (claim 28) such as vitamins, antibiotics, hormones, minerals, peptides, and proteins (claim 30) wherein a particle is used for aquatic animals (claim 69) such as rotifers and Artemia (claim 70) wherein feed comprising microparticles is for aquatic animals (claim 53), Harel requires alginate in the particles (abstract; claims 1, 17, 42, 61, 85-86) which is excluded in claims 33-34.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached on (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617