Detailed Action
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3-2-26 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
2. 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3 and 6 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WIPO No. 2018/019344 to Bjerregaard.
Referring to claim 1, 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.
Referring to claim 3, Bjerregaard further discloses the energy source is selected from a group consisting of, microwaves, audio waves, X-rays, laser, tailored photon bombardment, and neutron bombardment – see at least microwaves and laser – at 11 as detailed in pages 13-14.
Referring to claim 6, Bjerregaard discloses a method for weakening an attachment of a pin bone to muscle or adipose tissue in a fillet of fish comprising, applying heat to the pin bone – see via item 11 in figures 8a-14 and see pages 13-14, and conducting the applied heat along the pin bone sufficient to heat the pin bone and substantially only connective tissue that attaches the pin bone to the muscle or adipose tissue in the fillet of fish – see applied at pin bones and directly attached tissue in figures 8a-14 and pages 13-14, 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.
Claim Rejections - 35 USC § 103
3. 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) 2 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bjerregaard as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2013/0017771 to Birgisson et al.
Referring to claim 2, Bjerregaard further discloses the fillet of fish is selected whether pre-rigor mortis or post-rigor mortis – see pages 13-14. Bjerregaard does not disclose the fish is selected from salmon, cod or halibut. Birgisson et al. does disclose the fish is selected from salmon, cod or halibut – see salmon and in paragraphs [0095]-[0096], whether pre-rigor mortis or post-rigor mortis – see paragraph [0093]. Therefore it would have been obvious to one of ordinary skill in the art to take the device of Bjerregaard 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 4, Bjerregaard does disclose 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. 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. 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/in 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]. 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 to the pin bone so that the current is conducted from a first end to a second end of the pin bone. However, Birgisson et al. does disclose in paragraph [0101], that the current is applied inside the fish and 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, 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.
Referring to claim 5, Bjerregaard as modified by Birgisson et al. 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 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
4. Regarding the prior art rejections of claims 1, 3 and 6, applicant argues that the Bjerregaard reference WO 2018/019344 does not disclose the heat is applied to substantially only the pinbone and the connective tissue that attaches the pinbone to the muscle or adipose tissue. The phrase “substantially only” is no longer in the claim so it is not relevant to whether the Bjerregaard reference discloses this claim feature given the current claim language. However, Bjerregaard does disclose this feature in the embodiment of figures 12-14 with the heat applied at and proximate the pinbone and surrounding tissue. This narrower reading of the Bjerregaard reference also reads on the current claim language lacking the “substantially only” phrase. The three embodiments of figures 8a-14 are used in the prior art rejections and embodiments of figures 8a-11 also meet the claim limitations of the heat being applied to the pinbone and connected tissue. The embodiment of figures 9-11 that appears to be the only embodiment applicant discusses in the response dated 3-2-26 reads on the claim as detailed earlier in paragraph 3 of this office action since the “substantially only” phrase has been removed from the claims. Further, applicant argues that Bjerregaard does not disclose the fish fillet is not degraded or denatured by the applied heat and this argument is not persuasive in that applicant has not claimed that the fish fillet remains unchanged in anyway after the application of heat but only claims that the fish fillet is not negatively changed so as to be considered a degrading or denaturing of the fish fillet. The tissue of the fish is not degraded in that the tissue is not made less acceptable for its intended purpose of human consumption in that the tenderizing of the tissue detailed in Bjerregaard makes the fish fillet more palatable by making the fish tissue less tough and easier to consume and therefore the fish fillet of Bjerregaard is not negatively impacted by the application of heat as disclosed so as to consider the fish fillet as being degraded.
Regarding claims 2 and 4-5, applicant relies upon the same remarks/arguments with respect to claims 1, 3, and 6 discussed earlier.
Conclusion
5. 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