Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 4, 2026 has been entered.
Status of the Claims
Claims 1, 2, 4, 5, 8, 10-12, and 14-23 are under examination.
Claim Rejections - 35 USC § 101
3. 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, 2, and 4 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Claims 1, 2, and 4 are directed to method of determining the amount of urea, protein source, peptides, rumen-protected peptides, and rumen -protected amino acids to add to an initial ruminant diet. As described in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S._, 134 S. Cr. 2347, 110 U.S.P.Q.2d 1976 (2014), a two-step analysis is required in considering the patent eligibility of the claimed subject matter. The first step requires determining if the claimed subject matter is directed to a judicial exception. The instant claims require the steps of determining the effective energy requirement of a ruminant, determining the amino acid requirement of a ruminant, determining the quantity of usable energy provided by an amount of an initial ruminant diet, determine a ruminal microbial efficiency of the ruminant, predict a flow of dietary amino acid and microbial amino acid to a small intestine of the ruminant, determining the amount of urea, protein source, peptides, rumen-protected peptides, and rumen -protected amino acids to add to an initial ruminant diet, and selecting one or more feed products or dietary supplements. However, these steps are drawn to a mental step or mathematical algorithm. In addition, dependent claims 2 and 4 recite additional mental steps or mathematical steps. The courts have found mathematical algorithms to be drawn to the judicial exception of an abstract idea (In re Grams, 888 F.2d 835, 12 U.S.P.Q.2d 1824 (Fed. Cir. 1989)). Thus, the instant claims are drawn to a judicial exception.
This judicial exception is not integrated into a practical application. The instant claims do not recite an element that reflects an improvement in the functioning of a computer or other technology, an element that applies the judicial exception to effect a particular treatment, an element that implements the judicial exception with a particular machine, or an element that effects a transformation of a particular article to a different state or thing. The instant claims recite the elements of non-transitory computer readable media, instructions, computing devices, user interface and feed dispenser. However, the instant claims do not recite structural limitations of these elements. Thus, the instant claims do not recite a particular machine and do not integrate the judicial exception into a practical application. Furthermore, the instant claims recite outputting the determined amount and selected feed products or dietary supplements. However, outputting the results of a judicial exception is an extra solution activity and does not integrate the judicial exception into a practical application.
The second part of the analysis requires determining if the claims include additional elements that are sufficient to amount to significantly more than the judicial exception. The instant claims recite the additional elements of receiving signals, transmitting signals, and outputting the determined amounts. These elements are drawn to well-understood, conventional and routine data gathering steps and outputting steps. (Specification, pages 23-27). The instant claims also recite elements of non-transitory computer readable media, instructions, computing devices, processors, computer readable storage media, user interface and a feed dispenser. These elements are well-understood, conventional and routine devices (Specification, pages 23-27). Reciting such well-understood, routine, and conventional elements do not transform a judicial exception into patent eligible subject matter. In addition, the recitation of the specific types of data, to be used in the judicial exception does not transform the abstract idea into a non-abstract idea. (See buySAFE, Inc. v Google, Inc. 765 F.3d 1350, 112 U.S.P.Q.2d 1093 (Fed.Cir.2014)). Furthermore, the elements taken as a combination are also well-understood, routine, and conventional, since the elements are merely specifying a device for performing a mathematical algorithm or mental steps. Thus, the instant claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Response to Arguments
4. Applicants have responded to this rejection by amending the claims. The rejection is withdrawn as it was applied to claims 5, 8, 10-12, are 14-23. Instant claim 5 recites the system transmits the signal to a feed system that delivers feed to the ruminant. Instant claim 16 recites administering the adjusted ruminant diet or dietary supplement to the ruminant. In both claims 5 and 16, the instant claims recites a step that integrates the judicial exception into a practical application.
Applicants state that instant claims 1, 2 and 4 recite limitations that are drawn to a particular treatment. Instant claims 1, 2, and 4 recite “output the determined amount and the selected one or more feed products, one or more dietary supplements, or any combination thereof for use in administering to the ruminant an adjusted diet, dietary supplement, or combination thereof comprising the determined amount.” While the instant claims state that the output has the intended use of administering an adjusted diet, dietary supplement, or combination thereof to the ruminant, the instant claims do not have an active step of administering the feed to the ruminant. Rather, the instant claims only requires that an output of the results of the judicial exception is produced. Since the claims do not require administering the adjusted diet, dietary supplement, or combination thereof to a the ruminant, the instant claims do not recite a particular treatment. The instant claims do not integrate the judicial exception into a practical application.
Double Patenting
5. 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.
6. Claims 1, 2, 4, 5, 8, 10-12, are 14-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 7-16, and 26-38 of copending Application No. 16/789,292 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the reference application require the limitations of the instant claims with additional limitations. Thus, the subject matter of the instant claims encompasses the subject matter of the claims of the reference application. Thus, the instant claims are not patentably distinct from the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
7. Applicants state they have submitted a terminal disclaimer. However, there is no such terminal disclaimer in the file. This rejection is maintained.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY LIN whose telephone number is (571)272-2561. The examiner can normally be reached T-F 7am-5pm.
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, Olivia Wise can be reached at (571) 272-2249. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JERRY LIN/Primary Examiner, Art Unit 1685
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