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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/14/2025 has been entered.
DETAILED ACTION
Applicant filed a claim amendment on 14 August 2025. Claims 15, 21, and 28 are amended and claims 26-27 are canceled. Claims 1-8, 13, 15-25 and 28 are pending. Claims 1-8,13 and 23-24 are withdrawn. Claims 15-22, 25, and 28 are under examination.
Response to Amendment
The claim amendment filed on 14 August 2025 does not comply with the requirements of 37 CFR 1.121(c)(4) because canceled claims 26-27 are labeled as (canceled), but the text is merely crossed out, not completely removed. 37 CFR 1.121(c)(4) states:
(c) Claims. 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of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application.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by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
(4) When claim text shall not be presented; canceling a claim.
(i) No claim text shall be presented for any claim in the claim listing with the status of “canceled” or “not entered.”
(ii) Cancellation of a claim shall be effected by an instruction to cancel a particular claim number. Identifying the status of a claim in the claim listing as “canceled” will constitute an instruction to cancel the claim.
Claim Objections
Claim 21 is objected to because of the following informalities: the extraneous word “at” in the phrase “a dry solids (DS) content of at between 20-80 wt.%” should be removed. 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.
Claims 15-22, 25, and 28 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.
It is noted that the values for dried solids content (DS) and moisture level content (ML) are inversely related. The specification states that “dried solids” is the difference between the total weight of a sample containing solids and the weight of the moisture or water content in the sample (specification [0071]). Thus: DS wt.% = 100 wt.% - ML wt.%, and inversely: ML wt.% = 100 wt.% - DS wt.%. For example, a biomass with a DS content of 90 wt.% would have a ML content of 10 wt.%.
Regarding claim 15, the range of dried solid contents of the “biomass containing seaweed and water” recited in step a includes any dried solids content (DS) of 5 wt.% or greater, up to 100 wt.%. Consistent with the specifications’ definition of dry solids (specification [0071]), a DS of 100 wt.% means that 100% of the biomass’ weight is solids, and no water is present in that biomass. Therefore, it is unclear how a biomass can contain both seaweed and water, and yet also have a DS of 100 wt.%. Furthermore, step b recites that the exudation process extracts between 5-50 wt.% of the water present inside the seaweed. It is unclear if step b could be performed when the “biomass containing seaweed and water” from step a has a DS of 100 wt.% because there is no water present in the biomass that the exudation process of step b could extract.
Further regarding claim 15, step c recites drying the exuded biomass from step b to a moisture level (ML) of 5-40 wt.% ML. However, the exudation process of step b can result in an exuded biomass with <5 wt.% ML. For example, when the “biomass containing seaweed and water” from step a is 95 wt.% DS (equivalent to 5 wt.% ML), performing step b would exude out between 5-50 wt.% of the water inside the seaweed; thus, the resultant exuded biomass would have >95 wt.% DS, which equates to <5 wt.% ML. Therefore, it is unclear how the resultant dried biomass from step c can have at least 5 wt.% ML if the initial exuded biomass from step b, before drying, is already <5 wt.% ML. In other words, it is unclear how the drying process of step c, which should remove water from the exuded biomass by drying, could result in a dried biomass that contains more water than the initial exuded biomass.
Claims 16-22, 25, and 28 are dependent on claim 15, so are indefinite for the same reasons.
Regarding claim 21, the claim recites rehydrating the dried biomass from claim 15’s step c before the cooking step of claim 15’s step d to obtain a rehydrated biomass with 20-80 wt.% DS. However, the dried biomass from claim 15’s step c comprises 5-40 wt.% ML, which equates to 60-95 wt.% DS. Thus, there is an overlap of 60-80 wt.% DS contents between the claim 15’s dried biomass and claim 21’s rehydrated biomass. The overlap in DS contents between the dried and rehydrated biomasses means that a biomass with a DS content between 60-80 wt.% would be considered both dried and rehydrated. Therefore, it is unclear how a dried biomass from claim 15’s step c can also be a rehydrated biomass. It is also unclear if the rehydrating step of claim 21 is performed when a dried biomass from claim 15’s step c comprises between 20-40 wt.% ML (60-80 wt.% DS) because such a dried biomass would already meet the rehydrated biomass’ 20-80 wt.% DS condition as required by claim 21 even before a rehydration is performed.
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.
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.
Claims 15-17, 22, 25, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (The Effects of Salinity upon Cellular Volume of the Marine Red Alga Porphyra purpurea (Roth) C.Ag., Journal of Experimental Botany, Vol. 31, No. 125, pp. 1521-1537, December 1980) in view of Bono et al. (Production of Fresh Seaweed Powder using Spray Drying Technique, Journal of Applied Sciences 11 (13): 2340-2345, 2011), Neoh et al. (Comparative study of drying methods on chemical constituents of Malaysian red seaweed, Drying Technology, 2016, vol. 34, no. 14, 1745–1751), Pina et al. (An evaluation of edible red seaweed (Chondrus crispus) components and their modification during the cooking process, LWT - Food Science and Technology 56 (2014) 175-180), Kumar et al. (Salinity and Desiccation Induced Oxidative Stress Acclimation in Seaweeds, Sea plants, First Edition, 2014, 91-123), and Colorado State (The health benefits of antioxidants, https://source.colostate.edu/health-benefits-antioxidants, 01 September 2015).
The limitation “…the seaweed powder having a storage modulus (G’) of at least 30 Pa as determined on a solution of reconstituted skimmed milk containing 0.3 wt% of said powder relative to the total weight of said solution, wherein the skimmed milk was reconstituted by dissolving powdered skimmed milk at 10% w/w in ultrapure water having 18.2 Ω.cm resistivity…" recited in claim 15 is interpreted as physical properties measured in an unrelated assay that is not part of any method step in the claimed invention, but does not recite any required method steps or structural limitations for the claimed method of producing a seaweed powder. Thus, where the art teaches each and every method step of producing a seaweed powder as recited in claim 15, these properties measured in a solution of reconstituted skimmed milk are considered necessarily present in the produced seaweed powder.
Regarding claims 15-17 and 22, Reed teaches providing a biomass of Rhodophyta algae Porphyra purpurea (such as that recited in instant claims 16-17) and subjecting the algae to a hypersaline environment, which significantly decreases tissue water content of the algae to about 70-82 wt.% as compared to fresh algae by exuding out water due to osmotic stress (Reed Fig. 2). This means that 18-30 wt.% water was exuded from the algal tissue due to the osmotic stress of the hypersaline environment the algae were subjected to, which falls within the range of 5-50 wt.% recited in step b of claim 15. Reed also teaches that the dry weight of the biomass was calculated in order to determine the changes in tissue water content, and includes the method with which the dry weight was measured (Reed Pg. 1524 para. 1 and Pg. 1524 sec. Results para. 1).
Although Reed does not explicitly teach that the biomass of Porphyra purpurea contained at least 5 wt% dry solids, determining the ranges of amounts of dry solids in the algal biomass to be subjected to the exudation process of Reed would be a matter of routine optimization for one of ordinary skill in the art. MPEP §2144.05(II)(B) states “[i]n order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). As an initial point, the art recognized definition of the terms “dry solids” or “dry weight” is “the amount (or weight) of solids that have had water removed”, and the definition provided in the instant specification appears to agree with this definition (specification [0071]). The algal biomass of Reed necessarily contains a certain amount of dry solids because it comprises red algae, with the solid matter of the red algae making up the dry solids portion of the total biomass. However, Reed does not report the actual values of dry weight that were calculated. One of skill in the art would have recognized that some minimum amount of red algae must be present in the provided biomass of Reed for appreciable exudation to have been measured by Reed, and further that it would be beneficial to determine that minimum amount in order to predictably perform the exudation process. One of ordinary skill in the art would have had the relevant knowledge and skills to determine what range of amounts of red algae dry solids in the provided biomass could be subjected to the water exudation process of Reed, and furthermore would have had reasonable expectations of success in doing so due to Reed’s teachings on how to determine and measure dry weight of the red algae biomass (Reed Pg. 1524 para. 1 and Pg. 1524 sec. Results para. 1). It therefore stands to reason that one of ordinary skill in the art would have had all the necessary teachings and reasonable expectations of success in determining the optimum range of dry solids in the provided biomass.
Reed does not teach drying the exuded biomass, cooking the dried exuded biomass, or transforming a cooked biomass into a seaweed powder.
Bono teaches drying seaweeds, and an advantage of drying seaweeds is to preserve them from decaying, making the product more compact for storage and transportation, and allowing for greater storage/shelf life (Bono introduction para. 2). Bono also teaches a spray drying technique applied to Rhodophyta red algae Kappaphycus alvarezii (now named Eucheuma cottonii) with the objective of turning the red algae into a powder with controllable particle size (Bono Fig. 1).
Bono does not teach drying the seaweed biomass to a moisture level of 5-40 wt%, or cooking the dried exuded biomass.
Neoh teaches drying a red algae Kappaphycus alvarezii to < 40wt% moisture content (Neoh Table 1), and also teaches that the antioxidant content of the dried seaweeds was still very high and/or was preserved (Neoh Table 3).
Neoh does not teach cooking the dried exuded biomass.
Pina teaches that cooking (such as boiling or steaming) Rhodophyta red algae Chondrus crispus significantly increases antioxidant activity (Pina Table 2). However, Pina does not teach cooking the exuded biomass in a brine solution. Kumar teaches a hypersaline solution’s effect on inducing reactive oxygen species (ROS) generation and subsequent cellular antioxidant upregulation and production to counter the increased ROS in Rhodophyta red algae seaweeds such as Gracilaria changii and Chondrus crispus (both species of red algae recited in instant claim 17) (Kumar Table 4.2 and Table 4.3). Thus, when Pina and Kumar are taken together, it would have been obvious to one of skill in the art that combining cooking and hypersalinity exposure (such as cooking the red algae in a hypersaline brine solution) to red algae can significantly increase antioxidant concentration in said red algae.
Pina and Kumar do not teach any advantages of increasing the content of antioxidants in the red algae.
Colorado State teaches that antioxidants have many health benefits, including fighting free radicals found in the body, preventing damage to cells and DNA, preventing oxidative stress on cardiovascular system, and improve brain and nervous system health (Colorado para. 1).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to provide a biomass comprising several species of Rhodophyta red algae and water having at least 5 wt% of dry solids, and then subjecting the biomass to a hypersaline environment to induce an osmotic force to exude out 5-50wt% water present inside the seaweed, dry the exudated seaweed to a moisture level of 5-40 wt%, cooking the dried exudated seaweed in a brine solution, and transforming the cooked biomass into a seaweed powder.
One of skill in the art would have been motivated to do so because it was known that subjecting an algal biomass to hypersaline environments increases the concentration of antioxidants in the seaweed, which would therefore increase the resultant exuded biomass’ beneficial health properties. One of ordinary skill in the art would have had a reasonable expectation of success because Kumar teaches that subjecting red algae to hypersalinity leads to an increase in antioxidant concentrations, and Colorado State teaches that antioxidants have many beneficial health properties. Thus, one of skill in the art would conclude that by subjecting red algae to a hypersaline exudation process, not only will water be exuded from the algae’s tissues, but also antioxidant concentrations are increased, which are known to be beneficial to human health.
One of skill in the art would have been motivated to dry the exuded biomass to at most 40 wt% moisture content because doing so would preserve the exuded biomass from decaying, make it more compact for storage and transportation, and increase its storage/shelf life. One of skill in the art would have had a reasonable expectation of success because 1) Bono teaches that dried red seaweeds would preserve the seaweed from decaying, make the product more compact for storage and transportation, and increase storage/shelf life, and 2) Neoh teaches that even when the moisture content of a dried seaweed was kept <40wt% the antioxidant levels were still high or maintained as compared to the non-dried seaweed. Therefore, dried exuded seaweed with a <40wt% moisture content would be reasonably expected by one of skill in the art to successfully maintain its concentration of antioxidants but still be dried into a more convenient and shelf stable form for transport and/or storage for later use.
One of ordinary skill in the art would have been motivated to cook the resultant dried exuded biomass in a brine solution in order to further increase the health benefits of the resultant cooked biomass by further increasing the antioxidant concentration in it. One of ordinary skill in the art would have had reasonable expectations of success in this endeavor because 1) Colorado State teaches that antioxidants have many beneficial health properties and 2) Pina and Kumar teach that cooking and hypersaline exposure, respectively, can significantly increase antioxidant concentration in red algae, and thus combining both methods into one step would be reasonably expected by one of ordinary skill in the art to further increase the concentration of antioxidants even more than either one alone.
One of skill in the art would have been motivated to transform the cooked algal biomass into a dried seaweed powder because doing so would preserve the seaweed from decaying, make the product more compact for storage and transportation, and increase storage/shelf life. One of skill in the art would have had reasonable expectations of success in this endeavor because Bono teaches that seaweeds of the phylum Rhodophyta can be spray dried to form powders with controlled particle size, and drying would preserve the seaweed from decaying, make the product more compact for storage and transportation, and increase storage/shelf life.
Regarding claim 25, the limitation "wherein the seaweed powder has a critical gelling concentration (Co) of at most 0.1 wt%" recited in claim 25 is interpreted as a functional limitation that recites functional or physical properties of the seaweed powder, but does not recite any method steps for the claimed method of producing a seaweed powder. Thus, where the art teaches the method of producing a seaweed powder as recited in parent claim 15, the functional limitations are considered necessarily met.
Regarding claim 28, Reed teaches that the 1x seawater used in the tissue water exudation experiment was 35% salinity (Reed Fig. 2 caption). Thus, the 1x seawater of Reed comprises 35 wt.% dissolved salts and 65 wt.% water (moisture), which meets the “at least 50 wt.% moisture” limitation of claim 28.
Claim 18 remains rejected under 35 U.S.C. 103 as being unpatentable over Reed, Bono, Neoh, Pina, Kumar, and Colorado State as applied to claims 15-17, 22, 25, and 28 above, and further in view of Um et al.( Review: A chance for Korea to advance algal-biodiesel technology, Journal of Industrial and Engineering Chemistry 15 (2009) 1–7).
Reed, Bono, Neoh, Pina, Kumar, and Colorado State do not teach that the exudation process is carried out in a closed environment.
Um teaches that closed environments provide little risk of contamination of algae (Um p. 4, section 6 para 2).
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to perform the exudation process taught by Reed in a closed environment because doing so would reduce the risk of contaminating the algae with airborne contaminants. One of ordinary skill in the art would have had a reasonable expectation of success because Um teaches that closed environments provide little risk of contamination of algae.
Claim 19 remains rejected under 35 U.S.C. 103 as being unpatentable over Reed, Bono, Neoh, Pina, Kumar, and Colorado State as applied to claims 15-17, 22, 25, and 28 above, and further in view of Ali et al. (Post-Harvest Handling of Eucheumatoid Seaweeds, pgs. 131- of Tropical Seaweed Farming Trends, Problems, and Opportunities, Developments of Applied Phycology 9, published 2017).
Reed, Bono, Neoh, Pina, Kumar, and Colorado State do not teach that the biomass is spread evenly to an area density of 2-50 kg/m2 during the exudation process
Ali teaches that, in the processing areas of harvested red seaweeds, there are platforms used for processing (primarily for removing water by drying) the harvested seaweed, which are typically elevated off the ground, and the harvested seaweeds are evenly scattered across the surface area of the platform (Ali Pg. 133 sec 8.2.1.2).
One of ordinary skill in the art would have optimized the areal density the seaweed must be spread during an exudation process. MPEP §2144.05(II)(B) states “[i]n order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
Examiner notes the following facts: 1) platforms exist in processing areas close to seaweed harvesting areas that are used to remove water as taught by Ali; 2) the platforms must have a finite surface area available for the harvested seaweed to be spread; 3) there must be a range of (and a limit to) amounts and/or masses of harvested seaweed which can be physically spread evenly on the platforms; and 4) one of ordinary skill in the art would recognize that by maximizing the amount of harvest seaweed being processed at a time, the amount of resultant processed seaweed to be used/stored/marketed would also be maximized. It would therefore be advantageous for one of ordinary skill in the art to determine the optimum surface areal density of the harvested seaweed that a given platform can support with the objective being to maximize the amount of harvested seaweed being processed at a time, and furthermore there is a financial incentive to do so.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to use the existing platforms as taught by Ali to scatter out an optimal areal density of harvested seaweed, as an additional step in the exudation process taught by Reed, Bono, Neoh, Pina, Kumar, and Colorado State to remove water from the harvested red seaweed tissues. There are a number of advantages in doing so: 1) it uses already existing platforms in the harvested seaweed processing areas; 2) spreading out the harvested seaweed during the exudation process would maximize the amount of surface area contact the seaweed has with the hypersaline solution responsible for the exudation; and 3) the exudation process can occur very soon after the seaweed is harvested because it is being processed on-site. One of ordinary skill in the art would have had a reasonable expectation of success in this endeavor because the platforms were already on-site and the method of exudation was already known to successfully remove water from red seaweeds.
Claim 20 remains rejected under 35 U.S.C. 103 as being unpatentable over Reed, Bono, Neoh, Pina, Kumar, and Colorado State as applied to claims 15-17, 22, 25, and 28 above, and further in view of O’Donnell (How to Measure Brine Concentration, 05/04/2016, Brine Concentration Control), and as evidenced by United States Geological Survey USGS (Water Density, June 5, 2018, https://www.usgs.gov/special-topics/water-science-school/science/water-density).
Reed, Bono, Neoh, Pina, Kumar, and Colorado State do not teach that the brine solution comprises a salt concentration of at least 3 wt.% relative to the total weight of the solution at 20°C.
O'Donnell teaches that salt concentrations in brine range from 3.5-26% (O’Donnell para. 1). Although O’Donnell does not explicitly teach that this is relative to the total weight of the solution at 20°C, one of ordinary skill in the art recognize that the density of water is ~1g/ml at 20°C, as evidenced by USGS (Pg. 2 Table), and so if the salt concentrations of O’Donnell were with respect to the total volume of the solution, the percentages would still be the same and/or so close as to not be different from those percentages with respect to the total weight of the solution due to the density of water being ~1g/ml.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to cook the dried exuded algal biomass in a brine solution comprising a salt concentration ranging from 3.5-26% because O’Donnell teaches that brines are within that range of salt concentrations. One of ordinary skill in the art would have had a reasonable expectation of success because O’Donnell teaches that brine solutions are used for food production and preservation (O’Donnell para. 1), and so one of ordinary skill in the art would have had a reasonable expectation of success in using such brines in a cooking procedure.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Reed, Bono, Neoh, Pina, Kumar, and Colorado State as applied to claims 15-17, 22, 25, and 28 above, and further in view of Bertoli (How to Use Wakame Seaweed: Barley Miso Soup, 25 July 2016, https://vibrantwellnessjournal.com/2016/07/25/how-to-use-wakame-seaweed-barley-miso-soup) and Cox et al. (Effect of different rehydration temperatures on the moisture, content of phenolic compounds, antioxidant capacity and textural properties of edible Irish brown seaweed, LWT - Food Science and Technology 47 (2012) 300-307).
Reed, Bono, Neoh, Pina, Kumar, and Colorado State do not teach rehydrating the dried exuded biomass before the cooking step to a DS content of 20-80 wt.% to obtain a rehydrated, exudated biomass.
Bertoli teaches rehydrating a dried seaweed prior to cooking until it is soft, and then cooking the rehydrated seaweed (Bertoli pg. 2 para. 2 and pg. 3 step 3).
Bertoli does not teach rehydrating the seaweed to a specific DS content.
Cox teaches rehydrating dried seaweed (Cox pg. 301 sec. 2.3), and that the moisture content of the rehydrated seaweed (measured as a rehydration ratio RR, Cox pg. 302 sec. 2.10) increases exponentially with respect to rehydration time (Cox fig. 1). Cox also teaches that the level of total phenolic content (TPC) and total flavonoid content (TFC) in the rehydrated seaweed decreases exponentially with respect to rehydration time, and DPPH scavenging activity (a measure antioxidant levels, Cox pg. 305 para. 2) increases exponentially with respect to rehydration time (Cox fig. 3). Cox also teaches that phenolic and flavonoid phytochemical compounds and antioxidants are abundant in seaweeds and are beneficial to human health (Cox pg. 300 para. 1).
MPEP §2144.05(II)(B) states “[i]n order to properly support a rejection on the basis that an invention is the result of "routine optimization", the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range. See In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017). One of ordinary skill in the art would have been motivated to determine the optimum workable ranges of moisture contents in rehydrated seaweed in order to maximize the total phenolic, flavonoid, and antioxidant content of the rehydrated seaweed, which are known to be beneficial to human health, while also optimizing the shortest amount of rehydration time.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the present invention to rehydrate the dried exuded seaweed from the method of Reed, Bono, Neoh, Pina, Kumar, and Colorado State to a dried solids content of 20-80 wt.% before performing the cooking step. One of ordinary skill in the art would have been motivated to do so with a reasonable expectation of success because Bertoli teaches that seaweed is packaged and sold in a dried form, but rehydrated before cooking. Thus, one of ordinary skill in the art would recognize the importance of rehydrating a dried seaweed prior to cooking it.
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.
Claims 15, 17-20, 22, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 17-20 of copending Application No. 16/982,368 (of which the instant application is a continuation). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims anticipate the instant claims.
Conflicting claim 15 recites a method of making a seaweed powder comprising the steps of: a) providing a biomass containing seaweed and water having a dried solids content of at least 5wt%; b) subjecting the biomass to an exudation process to exude the water present inside the seaweed and obtaining an exuded biomass containing a exuded seaweed; c) drying the exuded biomass to a moisture level of at most 40 wt.%; d) cooking the exuded biomass in a brine solution to obtain a cooked biomass; e) washing and/or drying the cooked biomass; f) transforming the cooked biomass of step d) or e) into a seaweed powder, the seaweed powder having a storage modulus (G') of at least 30 Pa as determined on a 0.3 wt% aqueous dispersion of said powder relative to the total weight of said solution and wherein said powder has a critical gelling concentration (Co) of at most 0.1 wt. The scope of conflicting claim 15 is commensurate in scope with instant claims 15, 22, and 25 and thus anticipates them.
Conflicting claim 17 recites “wherein the seaweed is chosen from the group of seaweeds consisting of Porphyra sp., Palmaria palmata, Hucheuma spinosum, Eucheuma denticulatum, Eucheuma sp., Eucheuma cottonii (also known as Kappaphycus alvarezii), Kappaphycus striatus, Kappaphycus sp., Chondrus crispus, Chondrus sp, Sarcothalia crispata, Mazzaella laminaroides, Mazzaella sp., Chondracanthus acicularis, Chondracanthus chamissoi, Chondracanthus sp., Gigartina pistilla, Gigartina mammillosa, Gigartina skottsbergii, Gigartina sp., Gracilaria sp, Gelidium sp., Mastocarpus stellatus and mixtures thereof.” The scope of conflicting claim 17 is commensurate in scope with instant claim 17 and thus anticipates it.
Conflicting claim 18 recites “wherein the exudation process is carried out in a closed environment.” The scope of conflicting claim 18 is commensurate in scope with instant claim 18 and thus anticipates it.
Conflicting claim 19 recites “wherein during the exudation process the biomass is spread evenly to an area density of between 2 and 50 kg/m2” The scope of conflicting claim 19 is commensurate in scope with instant claim 19 and thus anticipates it.
Conflicting claim 20 recites “wherein the brine solution comprises a salt concentration of at least 3 wt% relative to the total weight of the solution at 20°C.” The scope of conflicting claim 20 is commensurate in scope with instant claim 20 and thus anticipates it.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 14 August 2025 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that there is no motivation to combine the cited references because none of the art teaches a process of improving the rheological properties of seaweed powder as recited in the instant claims (Remarks pg. 8 para. 2 through pg. 12 para. 1), the claims are not directed to a process of improving or measuring the rheological properties of seaweed powder; rather the instant claims are directed to a method of producing a seaweed powder.
Regarding Applicant’s arguments that none of the cited art teaches exuding the biomass as claimed or that cooking the dried biomass as claimed would result in the rheological properties as currently claimed, and that the rheological properties of the resultant composition are not necessarily met without conducting the method steps as claimed (Remarks pg. 8 para. 2 through pg. 9 para. 3, pg. 10 paras. 2-3, and pg. 12 para. 1), the rheological properties Applicant argues the cited art does not teach are interpreted as limitations that recite functional or physical properties of the resultant seaweed powder, but do not provide any method steps for the claimed method of producing a seaweed powder. The instant method is prima facie obvious over the cited art for the reasons above. Where the prior art teaches each method step of the method of producing a seaweed powder as recited in claim 15, the rheological properties in Applicant's arguments are considered necessarily met, absent sufficient evidence to the contrary. The combined prior art teaches each of the method steps of the instant invention, thus the rheological properties would be present in the resultant composition.
Applicant’s arguments with respect to the new limitations in amended claims 15, 21, and 28 (Remarks pg. 10 para. 2, pg. 12 para. 2 through pg. 15) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in those arguments.
Regarding Applicant’s arguments that Reed merely demonstrates that water content in a cell/tissue decreases in response to increased salinity, but does not relate this to exudation of whole seaweed (Remarks pgs. 11-12 bridging para.), Reed teaches subjecting a biomass of Rhodophyta algae Porphyra purpurea (such as that recited in instant claims 16-17) to a hypersaline environment, which significantly decreases tissue water content of the algae by exuding out water due to osmotic stress, and based on that decreased tissue water content measurement, ~18-30wt% of water was exuded from the seaweed tissue due to the osmotic stress of the hypersaline environment the algae were subjected to, which falls within the range of 5-50 wt.% recited in step b of claim 15. Therefore, Reed does teach exudation of whole seaweed by osmotic stress due to exposing the seaweed to a hypersaline environment.
Conclusion
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/LOUISE W HUMPHREY/Supervisory Patent Examiner, Art Unit 1657
/Alexander M Duryee/Examiner, Art Unit 1657