Detailed Action
Amendment
1. This office action is in response to applicant’s amendments dated 7-27-26 and this office action is a final rejection.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. 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 1-3, 8 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/226,707 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 4 of the ‘707 application are substantially similar to claims 1, 3, 8 and 10 of the present application. Further, claim 2 of the ‘707 application is substantially similar to claim 2 of the present application and claim 5 of the ‘707 application is substantially similar to claim 11 of the present application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
3. 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 4-7 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.
Claim 4 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 4 details the first end of the pin bone is exposed and protruding from an inside muscle surface and amended parent claim 1 details the first end of the pin bone is at an inside muscle surface which implies the first end of the pin bone is in the muscle surface with at most the very end of the pin bone being the first end being exposed and therefore it is unclear to how the first end of the pin bone protrudes from the inside muscle surface as detailed in claim 4 given the orientation of the first end of the pin bone detailed in parent claim 1.
Claim 5 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 5 details the second end of the pin bone is proximate to an outside or skin surface of the fish and amended parent claim 1 details the second end of the pin bone is at an outside skin surface and it is unclear to whether the outside surface detailed in claim 5 refers to another surface other than the skin surface given the “or” clause in claim 5.
Claim Rejections - 35 USC § 103
4. 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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WIPO No. 2018/019344 to Bjerregaard in view of U.S. Patent Application Publication No. 2013/0017771 to Birgisson et al. and further in view of JP Patent No. 2003-138 to Takahashi.
Referring to claims 1, 4-5 and 10, Bjerregaard discloses an apparatus for weakening an attachment of a pin bone to muscle or adipose tissue in a fillet of fish comprising, an energy source – see temperature manipulation units – at 11 detailed in pages 13-14 where energy has to be supplied for these devices and from these devices to operate as disclosed, to supply sufficient heat to the/substantially only the pin bone and connective tissue, that attaches the pin bone to the muscle or adipose tissue, in the fillet of fish – see pages 13-14 and figures 8a-14, where the temperature units – at 11 apply heat to where the pin bones and connective tissue is located, to degrade or denature the connective tissue without degrading or denaturing the muscle or adipose tissue and thereby weaken the attachment of the pin bone to the muscle or adipose tissue in the fillet of fish – see pages 13-14. Bjerregaard further discloses an electrode coupled to the electrical power supply – see at 14,20 in figure 12 and page 13, and in electrical contact with the fish at the pin bone to conduct electrical current from the electrical power supply to the pin bone – see figure 12 and page 13, and the energy source to supply sufficient heat to the/substantially only the pin bone and connective tissue that attaches the pin bone to the muscle or adipose tissue, in the fillet of fish to degrade or denature the connective tissue, without degrading or denaturing the muscle or adipose tissue, and thereby weaken the attachment of the pin bone to the muscle or adipose tissue in the fillet of fish – see pages 13-14 and figures 8a-14, and specific to claim 4 discloses the electric current is applied to the pin bone at the first end of the pin bone as it protrudes from an inside or muscle surface of the fillet of fish – see figures 8a-14 and pages 13-14, and specific to claim 5 discloses the electric current is applied to the pin bone at a second end of the pin bone located proximate to an outside or skin surface of the fillet of fish – see figures 8a-14 and pages 13-14. It is noted that claims 4 and 5 do not depend from each other and applicant has not defined the first and second ends of the pin bone in relation to the fish and other claimed components. Bjerregaard does not disclose the electrode in physical contact with a first end of the pin bone, a controller coupled to the power supply to select an amount of the electrical current conducted from the power supply to the pin bone, wherein the pin bone conducting the electrical current from the first end of the pin bone to the second end of the pin bone comprises the pin bone conducting the selected amount of electrical current from the first end of the pin bone to the second end of the pin bone such that the Ohmic heating produces sufficient heat in to the/substantially only the connective tissue that attaches the pin bone to the muscle or adipose tissue, in the fillet of fish to degrade or denature the connective tissue, without degrading or denaturing the muscle or adipose tissue, and thereby weaken the attachment of the pin bone to the muscle or adipose tissue in the fillet of fish, and a grounding electrode coupled to the power supply and in electrical contact with the fillet of fish to return the electrical current to the power supply. Birgisson et al. does disclose an electrode – at 12, in physical contact with the fish – see figure 4, a controller – at 16, coupled to the power supply to select an amount of the electrical current conducted from the power supply to the fish and near the pin bone – see figure 4 and paragraphs [0056]-[0059] and [0101], wherein the conducting of the electrical current in the fish and adjacent the pin bone conducts the selected amount of electrical current in the fish and adjacent the pin bone such that the Ohmic heating produces sufficient heat in/on substantially only the connective tissue, that attaches the pin bone to the muscle or adipose tissue in the fillet of fish to degrade or denature the connective tissue, without degrading or denaturing the muscle or adipose tissue, and thereby weaken the attachment of the pin bone to the muscle or adipose tissue, in the fillet of fish – see figure 4 and paragraphs [0101]-[0103], and a grounding electrode – see paragraph [0049], coupled to the power supply and in electrical contact with the fillet of fish to return the electrical current to the power supply – see conveyor as ground electrode contacting fish in paragraph [0049] and figures 5-7b. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired. Bjerregaard as modified by Birgisson et al. does not disclose the electrode and electric current applied directly in physical contact to the pin bone so that the current is conducted from a first end to a second end of the pin bone. Takahashi does disclose the electrode – at 5, and electric current is applied directly in physical contact to the bone so that the current is conducted from a first end to a second end of the bone – see figures 1-4 and paragraphs [0008]-[0011] and [0022]-[0028] of the English translation supplied by applicant. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and add the current applied to the pin bone so that the current is conducted between the ends of the pin bone as disclosed by Takahashi, so as to yield the predictable result of ensuring the current and energy is accurately and automatically supplied in the region of the pin bones as desired. Specific to claim 4, it is recommended to change “inside, or muscle, surface” to - -inside or muscle surface- -. Specific to claim 5, it is recommended in line 4 of claim 5 to change “outside, or skin, surface” to - -outside or skin surface- -. Bjerregaard as modified by Birgisson et al. further does not disclose the pin bone conducting the electrical current along and within the pin bone from the first end of the pin bone to a second end of the pin bone which causes Ohmic heating along and within the pin bone from the first end of the pin bone at an inside muscle surface of the fillet of fish to the second end of the pin bone at an outside skin surface of the fillet of fish that produces sufficient heat in only connective tissue that attaches the pin bone to the muscle or adipose tissue in the fillet of fish, as distinguished from heat applied externally to a surface or volume of the fillet of fish, to degrade or denature the connective tissue without degrading or denaturing the muscle or adipose tissue. Takahashi does disclose the bone conducting the electrical current along and within the bone from the first end of the bone to a second end of the bone – see figures 1-4 and paragraphs [0008]-[0011] and [0022]-[0028] of the English translation provided by applicant, which causes Ohmic heating along and within the bone from the first end of the bone at an inside muscle surface of the fillet of fish – see figures 1 and 4 with item 5 at the surface of the fish in figure 4, to apply current at an inside muscle, to the second end of the bone at an outside skin surface of the fillet of fish – see figures 1 and 4 with item 5 connected to a bone outside the meat as seen in figure 1,that produces sufficient heat in only connective tissue that attaches the bone to the muscle or adipose tissue in the fillet of fish – see figures 1-4 and paragraphs [0008]-[0011] and [0022]-[0028] of the English translation provided by applicant, as distinguished from heat applied externally to a surface or volume of the fillet of fish, to degrade or denature the connective tissue without degrading or denaturing the muscle or adipose tissue – see figures 1-4 and paragraphs [0008]-[0011] and [0022]-[0028] where electrical current is applied directly to the bone to cause removal of only the portion of the fish connecting the bone to the muscle. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. disclosing the removal of pin bones from fish and add the applying of the electrical current directly to the bone of the fish to remove only the portion of the fish connecting the bone to the muscle as disclose by Takahashi, so as to yield the predictable result of more easily removing the bone(s) without needing any other processing steps while maintaining the fish muscle for future consumption as desired.
Referring to claim 2, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the fillet of fish is selected whether pre-rigor mortis or post-rigor mortis – see pages 13-14 of Bjerregaard, and the fish is selected from salmon, cod or halibut – see salmon and in paragraphs [0095]-[0096] of Birgisson et al., whether pre-rigor mortis or post-rigor mortis – see paragraph [0093] of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and use the device on any type of fish including the salmon and cod disclosed by Birgisson et al., so as to yield the predictable result of allowing for the user to use the device on any desired type of fish to be processed.
Referring to claim 3, Bjerregaard as modified by Birgisson et al. and Takahashi the power supply is selected from a group consisting of, an alternating current (AC) power supply, a DC power supply, and a rectified power supply – see alternating current in paragraphs [0056] and [0116] of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired.
Referring to claim 6, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the grounding electrode in contact with the fillet of fish to return the electrical current to the power supply comprises the grounding electrode in contact with the outside, or skin, surface of the fillet of fish – see the conveyor as the ground electrode contacting the outside skin surface of the fish as seen in paragraph [0049] and figures 5-7b of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired.
Referring to claim 7, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the grounding electrode in contact with the outside, or skin, surface of the fillet of fish comprises the grounding electrode in contact with the outside, or skin, surface of the fillet of fish – see paragraph [0049] of Birgisson et al., at a location proximate to the second end of the pin bone – see paragraph [0049] and figures 5-7b of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired.
Referring to claim 8, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the electrical current is selected from a group consisting of: an alternating electrical current, a direct electrical current, and a pulsed direct electrical current, a half-wave rectified electrical current, and a full-wave rectified electrical current – see alternating current detailed in paragraphs [0056] and [0116] of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired.
Referring to claim 9, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the grounding electrode in electrical contact with the fillet of fish is selected from a group consisting of: an electrically conductive plate, pin, ball, roller, rail, wire, and conveyor belt, or combinations thereof, in contact with the fillet of fish – see plate/conveyor belt in paragraph [0049] and figures 5-7b of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired. It is recommended that applicant change in line 1 of the claim “wherein grounding electrode” to - -wherein the grounding electrode- -.
Referring to claim 11, Bjerregaard as modified by Birgisson et al. and Takahashi further discloses the controller selects the amount of electrical current conducted from the power supply to the pin bone based on factors selected from a group consisting of, a pre-rigor condition of the fillet of fish, a post-rigor condition of the fillet of fish, a skinned versus unskinned fillet of fish, a size of the fillet of fish, a thickness of the fillet of fish, an estimated age of the fish, a size of the pin bone, a location of pin bone in the fillet of fish, a type of fish, an estimated time elapsed since harvest of the fillet of fish, an estimated time elapsed since filleting the fish, an electrical resistivity of the pin bone, an amount of joule heating in the pin bone, and combinations thereof – see at least the type of fish detailed in paragraph [0084] of Birgisson et al. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard as modified by Birgisson et al. and Takahashi and add the electrical current application in the fish as disclosed by Birgisson et al., so as to yield the predictable result of ensuring automatic and better application of the current at the pin bones as desired.
Response to Arguments
5. It is noted that applicant will address the non-statutory double patenting rejections as it is appropriate.
Regarding the prior art rejections of claim 1, applicant’s claim amendments and remarks/arguments dated 7-27-26 obviates the 35 U.S.C. 103 rejections detailed in the last office action dated 1-26-26. However, applicant’s claim amendments dated 7-27-26 necessitates the new grounds of rejection detailed earlier in paragraphs 3 and 4 of this office action.
Regarding the prior art rejections of claims 2-11, applicant relies upon the same arguments with respect to parent claim 1 discussed earlier.
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID J PARSLEY/Primary Examiner, Art Unit 3643
Prosecution Insights