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 .
It is noted that the claims filed August 24, 2025, were not properly marked to show changes. However, in view of compact prosecution, the claims are examined herein.
Specification
The substitute specification filed 8/24/2025 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because:
The specification is not properly marked to show changes. Per 37 CFR 1.21 requires that the text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. A review of the specification shows that deleted information has not been marked correctly. For example paragraph [0002] does not correctly reflect that the term “liqid” has been deleted although the term - - - lipid - - has been inserted. A review and correction of the entire specification to correctly show deleted information is required.
It is also noted that while the changes to claim 6 are proper, the same amendments are not required at page 3 of the specification. This subject matter does not have to be deleted from the specification (i.e., although genus and species names are typically italicized).
Claim Rejections - 35 USC § 102
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.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2016-117694 (FUKUMI) (see IDS of 12/29/2022).
Claim 1
FUKUMI teaches a method of feeding fish ([0009] [10]) a dried composition comprising charcoal powder (i.e., an amorphous charcoal) and wood vinegar ([0009] [1]). The composition can be fed to the fish [0030]. The administration of the compound to fish would inherently reduce geosmin and 2-methylisoborneal. This includes within muscles, lipids, or skin of the fish.
Claim 6
The fish can be carp – Order Cypriniformes [0034].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over FUKUMI.
FUKUMI is cited for the reason above.
Claims 2
FUKUMI teaches in [0037] that the product is administered/dispersed in an amount of 0.1 to 1 g per 100 g body weight. This falls within and touches on that claimed. [0051] teaches that the composition is dispersed in water.
Claim 5
FUKUMI does not teach the claimed ratio of charcoal to wood vinegar. In [0007], it is taught that the wood vinegar is mixed with charcoal to limit the strong odor of vinegar. In [0008], it is taught that combination is effective in disease control . In [0020], it is taught that a preferred ratio can be 0.0012 to 12 parts by mass acetic acid to 100 parts by mass charcoal powder. The wood vinegar can also be diluted as taught in [0015]. Thus, it would have obvious to one skilled in the art that the final ratio would depend on the dilution but that there would be more charcoal than wood vinegar, as claimed. It would have been obvious to one skilled in the art to vary the ratio of wood vinegar to charcoal based on the desired odor and ratio needed to control a targeted disease.
Response to Arguments
Applicant's arguments filed 8/24/2025 have been fully considered but they are not persuasive.
Any rejections from the previous Official Action not repeated above are withdrawn.
The applicant argues that the prior art does not teach reducing the content of one of both geosmin and 2-mehtylisoborneol within the muscles, lipids or skin of fish and crustaceans.
However, as noted above, FUKUMI teaches a method of feeding fish ([0009] [10]) a dried composition comprising charcoal powder (i.e., and amorphous charcoal) and wood vinegar ([0009] [1]). The composition can be fed to the fish [0030]. The administration of the compound to fish would inherently reduce geosmin and 2-methylisoborneal. This includes within muscles, lipids, or skin of the fish. Indeed, the body of the claim remains unchanged in terms of the amount and how the composition is administered.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on 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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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791