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 .
DETAILED ACTION
Status of Claims
Note: The amendment of February 24th 2026 has been considered.
Claims 1, 39 and 40 have been amended.
Claims 4-6, 10, 15, 16, 18, 19, 21-26, 28, 29, 31-34 and 41-48 cancelled.
Claims 1-3, 7-9, 11, 14, 17, 20, 27, 30, 35-40 and 49 are pending and examined in the current application.
Any rejections not recited below have been withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 23rd 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1: The limitation “200µm or finer” in line 9 is not disclosed in the original application. Although the original application discloses uniform particle size of less than 5000µm (see specification paragraph [0095]), although the original application does not disclose particle size of 200µm or finer. Thus, the added limitation recited in claim 1 lacks support in the original disclosure and is considered new matter. Clarification and/or correction is/are required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35 of the U.S. Code not included in this action can be found in a prior Office action.
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 1-3, 7-9, 11, 14, 17, 20, 27, 30, 35-38, 40 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Ghorbani et al. (USPatPub. 2018/0055070 A1). As evidenced by NPL West “The Importance of Particle Size & Distribution in Food Powders” (from https://apdynamics.com/particle-size-distribution-in-food-powders/).
Regarding claim 1: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose at least 30% of the proteins comprise aldehydes, amides, triazenes, carboxylic acids and/or alkanes; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed at least 30% of the protein comprising aldehydes, amides, triazenes, carboxylic acids and/or alkanes is inherently present in the fish protein powder in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
As to the particle size recite in claim 1: Ghorbani discloses the recovered fish protein meal is further milled to powder (see Ghorbani paragraphs [0018], [0056], [0081] and [0082]). Given the fact food powders are known to have particle size ranging from 50µm to 1000µm (see West page 1), the powder in Ghorbani meets the claimed particle size recited in claim 1.
As to the osmolality and Protein Digestibility-Corrected Amino Acid Score of the protein population recited in claim 1: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the osmolality of the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 1; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 49 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claims 2 and 3: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the protein weight distributions of the composition (i.e., the fish protein powder) as recited in claims 2-4; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed protein weight distributions of the composition recited in claims 2-4 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 7: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the water solubility of the composition (i.e., protein powder) recited in claim 7; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed water solubility of the composition recited in claim 7 is inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 8: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the composition (i.e., protein powder) comprises non-hygroscopic protein as recited in claim 8; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed non-hygroscopic protein recited in claim 8 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 9: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the composition (i.e., protein powder) comprises non-hydrolyzed protein as recited in claim 9; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed non-hydrolyzed protein recited in claim 9 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 11: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder) comprises one or more proteins with an aldehyde group as recited in claim 11; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed one or more proteins with an aldehyde group recited in claim 11 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 14: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder comprises one or more proteins with a triazene group as recited in claim 14; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed one or more proteins with a triazene group recited in claim 14 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 17: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder comprises one or more proteins with a carboxylic acid group as recited in claim 17; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed one or more proteins with a carboxylic acid group recited in claim 17 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 20: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder comprises one or more proteins with an alkene group as recited in claim 20; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed one or more proteins with an alkene group recited in claim 20 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 27: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder comprises one or more proteins with an alkane group as recited in claim 27; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed one or more proteins with an alkane group recited in claim 27 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 30: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the fish protein powder wherein at least 10% of the protein are bioactive proteins as recited in claim 30; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed protein population wherein at least 10% of the protein are bioactive proteins in claim 30 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 35: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the composition (i.e., protein powder) is an ace-inhibitor (i.e., angiotensin-converting-enzyme inhibitor) as recited in claim 35; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position that the claimed protein population is an ace-inhibitor as recited in claim 35 is inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claims 36-38: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the relative amino acid contents of the composition (i.e., protein powder) recited in claims 36-38; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed relative amino acid contents of the composition recited in claims 36-38 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Regarding claim 49: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the osmolality of the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 49; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 49 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Ghorbani as applied to claims 1-3, 7-9, 11, 14, 17, 20, 27, 30, 35-38, 40 and 49 above, and further in view of NPL “CBD for Pets” (‘Innovetpet’) (from https://www.innovetpet.com/collections/hemp-cbd-products-for-pets).
Regarding claim 39: Ghorbani discloses the fish protein recovered can be used in pet food (see Ghorbani paragraph [0005]), but fails to disclose the cannabinoids recited in claim 39; However, Innovetpet discloses CBD when administered with the pet food is known to reduce stress symptoms in the pet (see Innovetpet page 1). Therefore, it would have been obvious to a skilled artisan at the time the application was filed to have modified Ghobani and to have added CBD to the protein composition when used as pet food, in order to provide the pet with reduced stress symptoms, and thus arrive at the claimed limitations.
Moreover, Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose at least 30% of the proteins comprise aldehydes, amides, triazenes, carboxylic acids and/or alkanes; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in modified Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the claimed at least 30% of the protein comprising aldehydes, amides, triazenes, carboxylic acids and/or alkanes is inherently present in the fish protein powder in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
As to the osmolality and Protein Digestibility-Corrected Amino Acid Score of the protein population recited in claim 39: Ghorbani discloses a method of recovering an animal protein powder from animal tissue (i.e., fish) by mixing minced animal tissue with organic solvent (i.e., isopropyl alcohol) and ozone, heating the mixture to 45°C-75°C followed by removal of the solvent by repeated filtering and drying to provide a protein powder meal that is further milled to attain the animal protein powder (see Ghorbani abstract; paragraphs [0012], [0017], [0018], [0029], [0030], [0034]-[0044] and [0047]-[0076]), but fails to disclose the osmolality of the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 39; However, given the fact applicant contemplates attaining the claimed composition (i.e., protein powder) from the same source through the same process as disclosed in modified Ghorbani (see current specification paragraphs [0088]-[0104]), it is examiner’s position the protein population and the Protein Digestibility-Corrected Amino Acid Score recited in claim 39 are inherently present in Ghorbani. As set forth in MPEP §2112.01, "where...the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 USC 102, on "prima facie obviousness" under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531,173 USPQ 685 (1972)." In re Best, Bolton and Shaw 195 USPQ 430 (CCPA 1977).
Response to Arguments
Applicant's arguments filed in February 24th 2026 have been fully considered but they are not persuasive.
Despite the fact Ghorbani et al. discloses the same animal protein product as the claimed product, as the animal protein product in Ghorbani is prepared by the same reactants processed through the same process as contemplated by Applicant, Applicant argues the prior art references fail to render the claimed invention obvious, because the Examiner failed to provide evidence that the animal protein product has the same utility and properties as discovered and recited in the claims. The examiner respectfully disagrees.
Given the fact Ghorbani et al. discloses the same protein product recited in the claims, as the protein product in Ghorbani is formed by the same reactants processed through the same process as contemplated by Applicant, the protein product in Ghorbani inherently has the same utility and properties as the claimed product. The fact that Applicant discovered new utility for the protein product in Ghorbani, and further tested the properties of the protein product in Ghorbani does not render the claimed protein product patentable over the protein product in Ghorbani.
Conclusion
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/ASSAF ZILBERING/Examiner, Art Unit 1792
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