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 .
Status of Claims
Claims 1-20 are pending in this application. Claims 13-18 are under examination. Claims 1-12 and 19-20 are withdrawn.
Election/Restrictions
Applicant’s election of Group III, claims 13-18 in the reply filed on 08/19/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-12 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claim Objections
Claim 13 is objected to because of the following informalities:
Claim 13 recites the following, “(b) feeding the fish feed to the fish such that a ectoparasite infection is treated.” The phrase, “a ectoparasite” should be change to “an ectoparasite.” Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites the limitation "the microbial biomass.” There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the claim will be interpreted as if it depends from claim 15, which does recite “a microbial biomass” and therefore, provides proper antecedent basis.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13-14 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kajie et al., JP 2000281568.
Please note the rejection below is based off of paragraph numbers from the Espacenet English Translation of Kajie.
Regarding claim 13, Kajie teaches a method of preventing and/or treating ectoparasite infections in fish (applying a preventing and curing agent to an aquatic animal for preventing and curing parasitic diseases; Abstract).
Kajie teaches (a) mixing a capsaicin containing product with at least one fish feed ingredient, producing a fish feed (capsaicin containing composition is added to a useful aquatic animal nontoxic carrier or an appropriate stabilizer or suitable carrier such as feed to prepare a mixed animal feed for aquatic animals; [0019-0021], Claims 6-7).
Kajie teaches (b) feeding the fish feed to the fish such that an ectoparasite infection is treated, reduced or prevented in the fish (administering the capsaicin containing composition that is added to the feed to prevent and treat parasitic disease; [0019], [0034], Claim 8).
Regarding claim 14, Kajie teaches the method further comprises mixing a glucosamine containing product with the fish feed (mixing with a non-toxic carrier for aquatic animals, such as yeast; [0022], Claim 2). Regarding yeast as a glucosamine containing product, the instant specification recognizes yeast as a glucosamine containing product [0049]. Thus, yeast from Kajie is considered to meet the claim limitation as a glucosamine containing product.
Regarding claim 16, by meeting claim 13 with capsaicin, claim 16 is also considered to be met.
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.
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 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kajie et al., JP 2000281568.
Regarding claims 15 and 17, Kajie teaches the glucosamine containing product comprises yeast, as described above in claim 14. Kajie does not specify the specific genus of the yeast (Abstract, [0022], Claim 2), where the yeast is of Pichia origin as required by claims 15 and 17. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kajie to use any genus of yeast, including Pichia, with the method as taught by Kajie. See MPEP 2144.08.
Regarding claim 18 Kajie teaches feeding the fish feed to the fish for a period of 30 days or more [0034]. This encompasses the claimed range of feeding the fish feed to the fish for a period of at least six weeks. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE GERLA whose telephone number is (571)270-0904. The examiner can normally be reached Mon.-Wed. and Fri. 7-12 pm; Th. 7-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791