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 .
Claim Status
Claims 1-8 and 10-16 are currently pending.
Claims 9 is canceled.
Claims 10 and 14 are withdrawn
Claims 1-8,11-13, 15, and 16 are being examined on the merits.
Election/Restriction
Applicant's election without traverse a dissolvable material comprising a sugar compound for species (a), an animal attractant comprising an animal tissue-derived material for species (b) and a rectangular block shape for species (c) in the reply filed on June 04, 2026 is acknowledged.
Claims 10 and 14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 04, 2026.
In addition, claims 10 and 14 are withdrawn because they read on another shape and animal attractant which are not the rectangular block shape and sugar elected by applicant.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
This application is a PRO of 63390668 (07/20/2022) as reflected in the filing receipt issued July 19, 2023.
Information Disclosure Statement
The Information Disclosure Statement(s) submitted on July 31, 2023, is being considered by the Examiner.
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 1-8, 11-13, 15 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (natural phenomenon) without significantly more.
The claims are evaluated below using the “Subject Matter Eligibility Test for Products and Processes” flow chart as shown in MPEP § 2106 III.
Step 1: Is the claim to a process, machine, manufacture or composition of matter?
Yes. The claims are drawn to an animal attractant dispersal system (composition of matter) which is one of the four statutory categories.
Step 2A, Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Yes. The claims are drawn to an animal attractant dispersal system (composition of matter) comprising a dissolvable material configured to maintain a shape; and an animal attractant disposed within the dissolvable material. The dissolvable material and animal attractant are naturally-occurring and can be deemed as anything that attracts animals. The nature based dissolvable material and animal attractant are analyzed to determine whether they have markedly different characteristics from any naturally occurring counterparts in their natural state. The combination is compared to the individual components as they occur in nature. Furthermore, where the claim is a nature-based product in combination with non-nature-based elements, the markedly different characteristics analysis should be applied only to the nature-based product limitation (see MPEP 2106.04(c) I. A.). There is no indication in the instant application that the combination of naturally-occurring components exhibits any markedly different characteristics from any naturally occurring counterparts, and thus, is treated as a product of nature judicial exception. The dissolvable material can be any type of material that as a coating that has the ability to be dissolved in any solution. For example, rock sugar has an outer surface which can be considered as a capsule or encasing that can be dissolved in water exposing the inner portion of the sugar, or an egg that is placed in vinegar, where the shell is dissolved exposing the inner portion of the egg to attract an animal.
Step 2A, Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. There is no judicial exception integrated into a practical application because there is no indication in the instant application that alters the natural properties of the dissolvable material or animal attractant. The claims generically state an animal attractant but there is no specific application of the composition and it does not include additional modifications that significantly differentiate the animal attractant.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
No. The claims are broad and do not recite alterations to the naturally-occurring dissolvable material and animal attractant. The claims generically state an animal attractant but there is no specific application of the composition and it does not include additional modifications that significantly differentiate the animal attractant.
As claims 1-8, 11-13, 15 and 16 recite a judicial exception that is not integrated into a practical application and recite no elements that amount to significantly more than the judicial exception, the claims are drawn to ineligible subject matter under 35 U.S.C. 101.
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 1-8, 11, 13, 15 and 16 are rejected under 35 U.S.C 102(a)(1) as being anticipated by Kapner (US20110038981A1; Published on February 17,2011; Filled on August 16,2010, cited in IDS).
Claim 1, drawn to, an animal attractant dispersal system, comprising: a dissolvable material configured to maintain a shape; and an animal attractant disposed within the dissolvable material.
Kapner throughout teaches a water-soluble soft gel encapsulated fish attractant.
For claim 1: Kapner teaches a water-soluble (reads on dissolvable material of the claim) capsule that comprises liquefied and/or freeze-dried chum (reads on animal attractant of the claim) encapsulated in the said capsule (claim 1). Kapner further teaches the combination is encapsulated into a water-soluble sphere or ball…, which reads on the claim.
For claim 2: Kapner teaches that water-soluble capsule (claim 1), at ambient temperature is above freezing the chum ball will maintain shape. Reference further discloses that the chum balls are easy to transport and store without refrigeration and have a very long shelf life (paragraph 0011).
For claim 3: Kapner teaches that when the chum balls come in contact with water the shell will start to dissolve to disperse the taste and smell of the raw chum in the water (paragraph 0012).
For claim 4: Kapner teaches the ball may be made from pig skin, plant cellulose or any other material that will contain the chum but which dissolves in water (paragraph 0018).
For claim 5: Kapner teaches a water-soluble (reads on dissolvable material or the claim) capsule that comprises liquefied and/or freeze-dried chum (reads on animal attractant of the claim) encapsulated in the capsule (claim 1).
For claim 6: Kapner teaches the chum ball preferably includes dried sterilized plant matter such as seaweed, kelp, fresh water plants and algae (which reads on sugar, carbohydrates, and salt of the claim) (paragraph 0007). References these for example algae, which contains complex carbohydrates and salt and thus inherently teaches the claim.
For claim 7: Kapner teaches chum (which reads on the animal attractant) may include krill, worms, fish, squid, amphibians or other types of ingredients used traditionally to bait fish. Further preferably includes dried sterilized plant matter such as seaweed, kelp, fresh water plants and algae, which reads on the claim (paragraph 0007), evidenced by the instant specification (paragraph 0014).
For claim 8: Kapner teaches chum (which reads on the animal attractant of the claim) is a mixture of cut or ground bait (paragraph 005). Reference further teaches that chum may include krill, worms, fish… or other types of ingredients used traditionally to bait fish (paragraph 0007). The ground worms, fish, and krill inherently disclose the composition comprises amino acids. Kapner also teaches the chum further comprises fish oil (claim 8).
For claim 11: Kapner teaches chum is a mixture of cut or ground bait (paragraph 0005), and that liquefied chum may be processed into or incorporated into an oil (paragraph 0007). Reference inherently teaches that the animal attractant is emulsified as the ground bait, which has blood, and oil are combined.
For claim 13: Kapner teaches the combination of additives are encapsulated into a water-soluble sphere or ball (paragraph 0019), which reads on the claim as it is inherent that a surfactant would be incorporated to encase the additive combinations.
For claim 15: Kapner teaches the combination of additives are encapsulated into a water-soluble sphere or ball (paragraph 0019), which reads on the claim as it is inherent that ingredients are compacted because they are combined and encased.
For claim 16: Kapner teaches the combination is then encapsulated into a water-soluble sphere or ball (paragraph 0019), as evidenced by instant specification (paragraph 0023). Reference furthers teaches chumming using a soft gel encapsulated ball filled with a mixture of freeze dried and/or liquefied raw chum as well as other ingredients (paragraph 007). Using the soft gel as discussed above inherently teaches “a binder” and reads on the claim.
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 1-5, 6, 7, 8, 11,12,13, 15 and 16 are rejected under 35 U.S.C 103 as being unpatentable over Kapner (US200110038981A1; Published on February 17,2011; Filled on August 16,2010) in view of Bobrowski (WO2005117835A1; Published on December 15,2005) and Braun et al (Food, 2019, 8(10), page 483).
Kapner throughout teaches a water-soluble soft gel encapsulated fish attractant as discussed above.
Kapner does not explicitly teach the dissolvable material comprises of at least one sugar recited in claims 6. Reference also does not teach the particle diameter of between 1 nanometer and 1 micron as recited in claim 12. Lastly, reference does not teach a rectangular block shape elected by applicant.
However, Bobrowski throughout teaches a fish attractant that facilitates catching fish that is in a predetermined shape from a material dissolvable in water.
For claim 6: Bobrowski teaches the release material (reads on dissolvable material) preferably is a sugar-based material provides the desired release and dissolution… (paragraph 0067), which reads on the claim. Reference further discusses suitable sugar-based materials… raw, partially refined or fully refined sugar, sucrose, glucose, dextrose, fructose… (paragraph 0067).
Braun et al throughout teaches the characteristics of milk and milk proteins as natural emulsifiers.
For claim 12: Braun teaches milk, a well-known emulsion (reads on the emulsified-oil of the claim) particle diameter of various sizes, for example 1 µm (which converts to 1 micron) of oil droplets in milk emulsions as shown in figure 3 (paragraph 3.2). Reduced oil particle diameter assists with animal attractant dispersal, as evidenced in the instant specification (paragraph 0016).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate sugar-based material taught by Bobrowski in the fish attractant taught by Kapner. It would be obvious to substitute one dissolvable ingredient for another. The motivation of one of ordinary skill in the art would be obvious to modify the above mentioned to achieve desired results for the animal attractant dispersal system, because it is routine and known that sugar-based materials provide desired release and dissolution for the lure of animals such as fish.
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the particle diameter of emulsified-oil as taught by Braun in the fish attractant taught by Kapner and Bobrowski. It would be obvious to optimize the particle diameter as desired because it is routine and known that reduced oil particle size may assist with dispersal of the animal attractant. The motivation of one of ordinary skill in the art would be obvious to modify the particle diameter as desired to achieve oil dispersal of the animal attractant to lure fish.
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute one shape for another as taught by Kapner. It would be obvious matter of choice to choose any shape, see MPEP section 2144.04. The motivation of one of ordinary skill in the art would be obvious to modify the shape as desired for attracting fish.
A person of ordinary skill in the art would have reasonable expectation of success of achieving such modifications since both Kapner and Bobrowski references demonstrate a dissolvable fish attractant for luring fish is routine and known in the art.
Double Patenting
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 1-8, 11-13, 15 and 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, and 5 of U.S. Patent No. 11234425 (‘425) . Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim animal attractant dispersal systems comprising dissolvable(water-soluble) material encasement (capsule) of oil and other attractants including animal tissue.
Instant claim 1, drawn to, an animal attractant dispersal system, comprising: a dissolvable material configured to maintain a shape; and an animal attractant disposed within the dissolvable material.
Reference claim 1, drawn to, a fish attractant dispersal apparatus comprising: a dispersal pouch defining a sealed attractant cavity and comprising a hook tab extending from a surface edge of the dispersal pouch, wherein the hook tab is configured to receive a fishing hook, wherein the dispersal pouch comprises a water-soluble material; and a fish attractant disposed within the sealed attractant cavity, wherein the sealed attractant cavity is configured to encompass the fish attractant to at least partially reduce air within the sealed attractant cavity.
Both the reference patent ‘425 (claim 2) and instant application (claim 8)
also claim comprising an amino acid and/or oil.
Both the reference patent ‘425 (claim 3) and instant application (claims 7 and 14) also claim comprising animal tissue material and plant material.
The reference patent does not claim the particle diameter of between 1 nanometer and 1 micron.
However, Braun et al throughout teaches the characteristics of milk and milk proteins as natural emulsifiers.
For claim 12: Braun teaches milk, a well-known emulsion (reads on the emulsified-oil of the claim) particle diameter of various sizes, for example 1 µm (which converts to 1 micron) of oil droplets in milk emulsions as shown in figure 3 (paragraph 3.2). Reduced oil particle diameter assists with animal attractant dispersal, as evidenced in the instant specification (paragraph 0016).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the particle diameter of emulsified-oil as taught by Braun in the fish attractant taught by Kapner and Bobrowski. It would be obvious to optimize the particle diameter as desired because it is routine and known that reduced oil particle size may assist with dispersal of the animal attractant. The motivation of one of ordinary skill in the art would be obvious to modify the particle diameter as desired to achieve oil dispersal of the animal attractant to lure fish.
This is a non-provisional nonstatutory double patenting rejection.
Claims 1-8, 11-13, 15 and 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, and 5 of U.S. Patent No. 11856935 ( ‘935). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim animal attractant dispersal systems comprising dissolvable(water-soluble) material encasement (capsule) of oil and other attractants including animal tissue..
Instant claim 1 above.
Reference claim 1, drawn to, a fish attractant dispersal apparatus, comprising: a dispersal pouch defining an attractant cavity and comprising a hook tab extending from a surface edge of the dispersal pouch, wherein the hook tab is configured to receive a fishing hook, wherein the dispersal pouch comprises a water-soluble material.
Both the reference patent ‘935 (claim 2) and instant application (claim 8)
also claim comprising an amino acid and/or oil.
Both the reference patent ‘935 (claim 3) and instant application (claims 6 and 7) also claim comprising animal tissue material and plant material.
The reference patent does not claim the particle diameter of between 1 nanometer and 1 micron.
However, Braun et al throughout teaches the characteristics of milk and milk proteins as natural emulsifiers.
For claim 12: Braun teaches milk, a well-known emulsion (reads on the emulsified-oil of the claim) particle diameter of various sizes, for example 1 µm (which converts to 1 micron) of oil droplets in milk emulsions as shown in figure 3 (paragraph 3.2). Reduced oil particle diameter assists with animal attractant dispersal, as evidenced in the instant specification (paragraph 0016).
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the particle diameter of emulsified-oil as taught by Braun in the fish attractant taught by Kapner and Bobrowski. It would be obvious to optimize the particle diameter as desired because it is routine and known that reduced oil particle size may assist with dispersal of the animal attractant. The motivation of one of ordinary skill in the art would be obvious to modify the particle diameter as desired to achieve oil dispersal of the animal attractant to lure fish.
This is a non-provisional nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASMINE A EVANS whose telephone number is (571)272-9796. The examiner can normally be reached Mon-Fri 8:00-5:00EST.
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/J.A.E./Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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