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 . 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 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.
DETAILED NON-FINAL ACTION
Status of Claims
New
Withdrawn
Cancelled
Currently Amended
Previously Presented/Original
Pending
51
27, 29, 30, 34, 35, 37-40
2, 7, 10, 13, 17, 20, 23, 26, 28, 31-33, 36, 41-50
3-6, 8, 11, 15, 16, 19, 21, 22, 24
1, 12, 14, 18 and 25
1, 3-6, 8, 11, 12, 14-16, 18, 19, 21, 22, 24, 25, 27, 29, 30, 34, 35, 37-40 and 51
The examined claims are directed to a composition.
Status of Previous Objections / Rejections
At this juncture, Examiner withdraws the previous Office action’s (OA) (i.e, 08/27/2025) individual 35 USC §112 rejection of claims 11 and 14. However, Examiner maintains the other 35 USC §112 rejection as well as the 35 USC §103 rejections.
Response to Amendment
In their reply dated November 26, 2025, Applicant made certain claim amendments to address the rejections and claim interpretations of the prior Office action (OA), to clarify the claim language, and to potentially advance prosecution, and added new claim 51. However, Applicant did not amend independent claim 1 bur argues the propriety of the noted rejections.
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 1, 3-6, 8, 9, 11, 12, 14-16, 18, 19, 21, 22, 24, and 25 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 pre-AIA the applicant regards as the invention.
The claim scope in claim 1 is not commensurate with the description in the specification The specification provides specific examples of compositions that incorporate certain classes of compounds that one may employ for treating aquarium water. However, the disclosure does not suggest that one of ordinary skill will be able to employ any type of the class of compounds or ingredients noted in the claim, including any biodegradable polyester, any type of metal carboxylate, any type of metal chelating agent, and any type of buffer such that the combination of such ingredients would result in an effective formulation for the treatment of aquarium water. It thus appears that one or more essential or critical elements or ingredients are missing for forming a composition that is effective for treating aquarium water.
This inconsistency between the claim language and the specification renders the claim language indefinite. There should be correspondence between the specification and claims so that the meaning of terms and phrases may be ascertainable by reference to the specification. That is, claims that are inconsistent with their supporting specification or the prior art cannot be considered reasonably particular and distinct, even though the terms of the claims may seem definite. MPEP §2173.03.
The issue is not mere claim breadth but the notion that one of ordinary skill would understand the specification to support the notion (in the associated claims) that one of ordinary skill would understand how to employ any and all ingredients falling within the scope and definitions of biodegradable polyesters, metal carboxylates, metal chelating agents, and buffers, in any proportion, to achieve a workable composition for aquarium water, despite the specific examples provided regarding which of these compounds, and in what proportions (“The existence of effective amount of buffer in aquarium water help stabilize the desired pH value for a long period time without impairing other important functions” (Specification, p. 12, lines 15-17); “The inventors discovered that the combination of chelating agent with metal carboxylate in the composition with appropriate concentrations thereof could significantly improve the efficiency of phosphate elimination in aquarium water” (Specification, p. 15, lines 16-18), it is believed to be effective and workable for the desired outcome. Although the specific type of treatment is not claimed, the specification refers to reducing or removing nitrogen and phosphorus, implying that not all compounds falling within the referenced class of compounds will be suitable for such an endeavor. To clarify the claims, Examiner recommends choosing ingredients from the provided examples, such as recited in claims 4, 5, 14 and 18.
The meaning of every term or phrase used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. See MPEP §2173.05(a). According to MPEP §2173, "The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent . . . If the language of a claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. See Morton Int 'l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). See MPEP §2173.02.
Although the claims may also be amenable to an enablement analysis using Wands factors, Examiner did not apply such an analysis in this or the prior OA.
Claim 4 is recited as depending on claim 2, although that claim is cancelled. As such, Examiner interprets claim 4 as depending on claim 1.
Claims depend 3-6, 8, 9, 11, 12, 14-16, 18, 19, 21, 22, 24 and 25 depend on claim 1.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-6, 8, 9, 11, 12, 14-16, 18, 19, 21, 22, 24 and 25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon or natural products without significantly more. Claim 1 recites a formulation that includes a biodegradable polyester, a metal carboxylate, one or more metal chelating agents, and a buffer. Each of these four broad compounds are naturally occurring and can be found together in the environment. See the Conclusion below for references discussing this possibility.
Thus, the biodegradable polyester (naturally occurring polyesters like polyhydroxyalkanoates (PHAs) are synthesized by soil and marine bacteria (e.g., Cupriavidus necator) as carbon storage granules), metal carboxylate (formed when fatty acids or metabolic byproducts (carboxylates) from decomposing organic matter react with metal ions in the soil), metal chelating agent (secreted by plants and microorganisms (e.g., siderophores) to manage metal nutrient uptake) {combined metal carboxylate and metal chelating agents: plants and microbes secrete organic acids (like citric, malic, or oxalic acid) into the rhizosphere. These acids function as both chelating agents to mobilize nutrients and as carboxylates when they bind with metal ions like Ca2+, Fe3+, or Mg2+}and buffer (natural systems, especially soil and cellular fluids, contain bicarbonate or phosphate systems that act as buffers to maintain pH stability, which is critical for the enzymatic degradation of the polyesters mentioned above; they are naturally present as organic acids, humic substances, or carbonate systems that maintain pH) are products of nature, or natural products, and in combination they comprise the natural phenomenon or natural product judicial exception.
In nature, these products may be dispersed, but they could interact opportunistically. Indeed, the simultaneous presence of either of these compounds is a common event in nature in biological microenvironments, soil ecosystems and in plant biology.
This judicial exception is not integrated into a practical application because, there is no stated application beyond the preamble of the claim. Thus, the practical effect or the industrial application beyond the potential use for treating aquarium water is unclear or unstated. It appears the product merely exists and is therefore generally linking the use of the judicial exception to a particular technological environment or field of use 2106.05(h). So either the natural phenomenon is not applied at all, or it is merely generally linked to the technological environment or field of use.
To the extent that the buffer or metal carboxylate is an additional element, as noted above, these are also a natural products, and it is possible, even if unlikely that all four product can occur naturally in the environment, particularly since the independent claim does not provide any stated proportions or weight percentages. If one views either the buffer or metal carboxylate as an additional element, then one of ordinary skill can view these as additional element that are well-understood, routine and conventional (WURC), and thus not sufficient to amount to significantly more than the judicial exception.
Moreover, based on an analysis with respect to the claims as a whole, none of the dependent claims include features that are not WURC, or that recite something that amounts to significantly more than the noted judicial exception. Therefore, the above-noted claims are not tied to any particular novel product or composition, machine or apparatus. As recited in the referenced claims, the claimed invention would impermissibly cover every substantial practical application of, and thereby preempt all use of these natural products or natural phenomenon.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1, 3-6, 8, 14-16, 18, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ritter (US20040206696), in view of Wooley et al. (US20020098208) (each of record).
Regarding 1, 3-6, 8, 14-16, 18, 19 and 21, Ritter discloses a composition for treating aquarium water comprising:
a first formulation for reducing or removing inorganic nitrogen, inorganic phosphorus, or mixtures thereof in aquarium water, the first formulation comprising a biodegradable polyester ([0168] – [0170]) and a metal carboxylate ([0172]); and
a buffer ([0153]-[0155], [0173], where citrate and citric acid is a fruit acid buffer).
Therefore, Ritter discloses the claimed invention, except one or more metal chelating agents.
However, metal chelating agents and their effect and alternate uses is well known.
For example, Wooley discloses a method of reducing microbial infections, especially bacterial infections, of animals, especially of aquatic animals such as fish maintained in tanks or aquaria (Abstract). The methods of the present invention combine at least one metal chelating agent and at least one antibiotic that is biologically active against bacterial infections and, optionally, at least one pH buffering agent, wherein the antimicrobial activity of the antibiotic is enhanced by the chelating agent ([0018]-[0020], [0029]). The synergistic effects of combining an antibiotic with a chelating agent for the inhibition of bacterial growth are also known ([0013], [0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to routinely experiment with chelating agent, including complex chelating agent and chelating agents of all types, and to employ a metal chelating agent and the other recited components in a suitable weight percentage, depending on the specific needs, including the types of aquatic organisms living in the aquarium and the desired water quality, particularly since Wooley teaches that chelating agents can be an effective treatment in aqueous environments.
Additional Disclosures Included: Claim 3: The metal chelating agent is a complex agent comprising one or more chelating units (this is implicitly disclosed since there are no restrictions on the type of chelating agents; alternately, it would have been obvious to use any suitable chelating agent); Claim4: The chelating unit of the chelating agent is N(CH(R1)R2COOH) or conjugate anion thereof, wherein R is H or an alkyl group, and R2 is absent or an alkyl group (claim 1 analysis); Claim 5: The metal chelating agent further comprises a metal ion selected from the group consisting of Na+, K+, Al3+, Fe3+, La3+, TiO2+, ZrO2+, Cu2+, Zn2+, Ca2+, Mg2+, Li+, and combinations thereof (claim 1 analysis); Claim 6: The metal chelating agent is selected from the group consisting of EDTA, Fe(III)-EDTA, Al(III)-EDTA, MGDA, Fe(III)-MGDA, Al(III)- MGDA, and combinations thereof (Wooley, [0019]; claim 1 analysis); Claim 8: The metal chelating agent is from about 0.01 wt% to about 0.15 wt% based on the total weight of the composition (claim 1 analysis); Claim 14: The biodegradable polyester is polycaprolactone (Ritter, [0001], [0012]-[0023]); Claim 15: The polycaprolactone is in a form of fine granule 9Ritter, [0017]); Claim 16: The biodegradable polyester is from about 0.1 wt% to about 10 wt% based on the total weight of the composition (claim 1 analysis); Claim 18: The metal carboxylate is Fe(III)-citrate, Al(III)-citrate, or combinations thereof (claim 1 analysis); Claim 19: The metal carboxylate is from about 0.01 wt% to about 5 wt%, wherein the wt% is calculated based on the total weight of the aqueous composition (claim 1 analysis); and Claim 21: The buffer is from about 0.1 wt% to about 20 wt%, wherein the wt% is calculated based on the total weight of the aqueous composition (claim 1 analysis).
Claims 9, 11, 12, 22, 24, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ritter (US20040206696), in view of Wooley et al. (US20020098208), as applied to claim 1 above, in view of Hadar et al. (US20100203158) (of record).
Regarding 9, 11, 12, 22, 24, and 25, Ritter discloses or suggests the composition of claim 1, except further comprising a tea tree oil or extract thereof. However, tea tree oil is an antiseptic and is a component typically used in aquarium treatment. Ritter also notes that one can add other functional additives including stabilizers to the composition which can help to make it multifunctional ([0172]).
Hadar discloses antiseptic compositions and kits containing a source of silver ions and menthol, which act in synergy such that a concentration of silver ions in the composition is substantially reduced (Abstract). Tea tree oil is also noted as a suitable anti-irritant that one can use in the context of certain embodiments ([0207]).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to add tea tree oil or its extract, and other desired compounds, in an appropriate weight percentage, where the tea tree oil can act as an antiseptic where desired or necessary.
Additional Disclosures Included: Claim 11: The tea tree oil is from about 0.01 wt% to about 1 wt% based on the total weight of the composition (claim 9 analysis); Claim 12: The composition further comprises a second formulation consisting essentially of a tea tree oil, a solvent, and a co-emulsifier, wherein the solvent is selected from the group consisting of glycerol, 1,2-propylene glycol, propylene glycol, dipropylene glycol, hexylene glycol, and combinations thereof, wherein the co-emulsifier is selected from the group consisting of cornstarch, cellulose, carboxymethyl cellulose (CMC), pre-gelatinized starch, arrowroot, agar-agar, carrageenan, gum arabic, gum acacin, gum tragacanth, pectin, and combinations thereof (Hadar, [0197] and claim 9 analysis); Claim 22: The composition further comprises a thickener selected from the group consisting of cornstarch, cellulose, carboxymethyl cellulose (CMC), pre-gelatinized starch, arrowroot, agar-agar, carrageenan, gum arabic, gum acacin, gum tragacanth, pectin, xanthan gum, and combinations thereof, wherein the thickener is from about 0.05 wt% to about 1 wt%, wherein the wt% is calculated based on the total weight of the aqueous composition (Hadar, [0197] and claim 9 analysis); Claim 24: The composition further comprises a vitamin concentrate from about 0.1 wt% to about 5 wt% based on the total weight of the aqueous composition (Ritter, [0173] and claim 9 analysis); Claim 25: The composition further comprises from about 0.05 wt% to about 1 wt% of a preservative selected from the group consisting of potassium sorbate, Butrol 1060, and combinations thereof (Hadar, [0031], [0099], [0197], and claim 9 analysis); and Claim 51: The biodegradable polyester has an average particle size of 1 mm or less (it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention been obvious to routinely experiment to determine a suitable size).
Response to Arguments
Applicant’s arguments filed 11-26-2025 have been fully considered but they are not persuasive.
With regard to Applicant’s arguments concerning the 35 USC §§ 112 and 101 rejections, Examiner has discussed these in further detail above.
Regarding the §112 rejection, Examiner contends that essential aspects of the invention, as described in the specification, are not claimed and provides excerpted language showing that the claims are much broader than what the disclosure describes as
While this may be related to enablement, the claim language itself is unclear if it does not sufficiently describe the metes and bounds of the invention. For example, it is not clear that any compound, in any proportion, within the fours recited classes of compounds [biodegradable polyester, metal carboxylate, metal chelating agent and buffer], would be sufficient to achieve the desired water treatment effect.
Concerning the §101 rejection, Examiner has provided additional details, arguments and references concerning his contention that the noted broad categories of the claimed four types of compounds can indeed occur together naturally in the environment.
With respect to the §103 rejection, the use of metal chelating agents is widely known for isolating metals present in water for later removal. Wooley is not necessary, but is employed to show one potential alternate use of a chelating agent in an aquatic environment. Applicant’s implication is that the references are not analogous or that Examiner has applied hindsight reasoning. However, it is not necessary that all ingredients in a composition be directed to the same end result or the same purpose, as long as the ingredients can work together in the same environment. Thus, the chelating agent portion can be directed towards treating infections in aquatic animals such as aquarium fish, whereas the other portions of the composition may be directed to other purposes including water treatment. The combined references would still be analogous as being directed to the same field of endeavor. And, with respect to the notion of improper hindsight reasoning, Applicant must recognize that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the use of the chelating agent is already well known and its use for treating aquarium fish rather than aquarium water is clearly not based on Applicant’s disclosure.
Regarding the use of Hadar for certain dependent claims, this reference is employed to show the use of the claimed compounds as antiseptic which one can employ in any environment, including aquarium water.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nowack (Environmental chemistry of aminopolycarboxylate chelating agents, Environ Sci Technol, 2002 Oct 1;36(19):4009-16) discusses the presence of metal chelates (like NTA, EDDS) in natural waters and soils, where they exist alongside natural organic buffers and metal complexes.
Yin et al. (Biodegradable chelating agents for enhancing phytoremediation, Ecotoxicology and Environmental Safety, Vol. 272, 1 March 2024, 116113 (2024): Explains that biodegradable chelators (like EDDS) are used in soil to mobilize heavy metals, where they exist alongside naturally occurring organic compounds, microbial-derived metal carboxylates, and humic buffers in soil environments.
Byrne et al. (Enzyme-catalyzed synthesis of malonate polyesters, Green Chemistry, Issue 14, 2021): Highlights that biodegradable polyesters can act as metal chelators and work in tandem with other chelating agents and carboxylic acid derivatives (metal carboxylates) in aqueous environments.
These are all evidentiary references.
THIS ACTION IS MADE FINAL. 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.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571)270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
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If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779