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 .
Status of Claims
Claims 1-6 and 9-13 are pending and under examination in this application.
Claim Objections
Claims 1-4 are objected to because of the following informalities:
Claim 1 lines 3-4 recite, “feeding fish or shellfish-groups each including algae-eating fish or shellfish with feed samples, respectively.” It is understood that the fish group includes algae-eating fish and the shellfish group includes algae-eating shellfish. However, for clarity the following wording is recommended, “feeding fish or shellfish-groups feed samples, wherein the fish group includes algae-eating fish and the shellfish group includes algae-eating shellfish.” Appropriate correction is required.
Claims 2 line 3 and claim 3 line 3 recite the word, “respectively.” However, this word is viewed as unnecessary in both claims and should be removed. Appropriate correction is required.
Claim 4 lines 3-5 recite, “feeding each of one or more fish or shellfish-groups each including algae-eating fish or shellfish with algal cells differing from each other in a stage of growth or division.” It is understood that the fish group includes algae-eating fish and the shellfish group includes algae-eating shellfish. It is also understood that one or more of the groups are being fed algal cells, and where the algal cells differ from each other in a stage of growth or division. However, for clarity the following wording is recommended, “feeding each of one or more fish group or shellfish group algal cells, wherein the fish group includes algae-eating fish and the shellfish group includes algae-eating shellfish, and wherein the algal cells differ from each other in a stage of growth or division.” Appropriate correction is required.
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 and 4-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claim(s) recite(s) a method for feeding algae-eating fish and shellfish. The feeding method, as it is claimed, is not markedly different from the biological, naturally occurring event of fish or shellfish eating algae. For example, claim 1 recites “feeding fish or shellfish groups including algae-eating fish or shellfish with feed samples, the feed samples each containing algal cells and being different from each other in a stage of growth or division of the algal cells.” This method of fish or shellfish eating algal cells in different stages of growth occurs naturally and is considered a natural phenomenon of an animal eating, which is a basic pre-existing process of nature. Further, the added amended claim language of obtaining algal cells consumed by the fish or shellfish and determining the stage of growth or division of the algal cells does not add significantly more to the claims. The determining steps are considered to be an abstract idea that can be performed in the mind and the obtaining step is a limitation that is considered routine and conventional, since it simply looks at what is being eaten by the animal. Additionally, the specification does not appear to contain any definitions that when applied to the claim language result in any product that isn’t the same as the natural phenomenon of algae-eating fish and shellfish eating algae. Thus, the claims recite a natural phenomenon without significantly more.
This judicial exception is not integrated into a practical application because the method only selects the feed to give to the algae-eating fish or shellfish, obtains the feed, and determines what the feed is, which do not add meaningful limitations to the method. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the rejected claims contain a natural phenomenon of an animal eating food, where the food is in a naturally occurring state (i.e. the samples being fed to the fish and shellfish is algae in various stages of growth) and the limitations of obtaining the food that was eaten and determining what food was eaten by the fish or shellfish do not add significantly more as they are considered either routine and conventional or an abstract idea. Moreover, the additional limitations only select a feed for future use but do not provide an active method step of feeding the animal the selected sample that is most preferred by the animal.
Claim Rejections - 35 USC § 103
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.
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.
Claim 1, 4, 6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Ladygina, RU 2548107 in view of Kasim et al., Food sources of the oyster and the clam in the Akkeshi-ko estuary, Plankton and Benthos Research 4(3), September 2009.
Please note the rejection below is based off of paragraph numbers added to the PE2E English translation of Ladygina, supplied with the rejection.
Regarding claims 1 and 4, Ladygina teaches a method of determining feed for algae-eating shellfish, as required by claims 1 and 4 (a method of preparing feed for growing oysters, ensuring the optimal feed for growing; [0006]).
Ladygina teaches feeding algae-eating shellfish groups that include algae-eating shellfish with feed samples, as required by claim 1; or feeding a shellfish group that includes algae-eating shellfish with algal cells, as required by claim 4; where the samples each containing algal cells and being different from each other in a stage of growth or division of the algal cells, as required by claims 1 and 4 (feeding oyster microalgae in the phase of slowing growth or phase of growth inhibition, [0011], [0013]; feeding oyster algae in the logarithmic growth phase, [0011], [0014]; feeding oyster algae at the end of the stationary growth phase, [0011], [0015]).
Ladygina does not teach obtaining a number of algal cells consumed by the algae-eating shellfish for each stage of growth or division of the algal cells or determining the stage of growth or division of the algal cells that are most consumed by the algae-eating shellfish, as required by claims 1 and 4.
Kasim discloses a method of determining feed for algae-eating shellfish (food sources of bivalve were investigated for the oyster and the clam by gut content analysis, the aim to clarify whether oyster and clam take foods from water column with or without food selection. (pg. 4, Introduction paragraph 5). Kasim teaches obtaining a number of algal cells consumed by algae-eating shellfish for each of the algae cells consumed (analyzing the entire gut contents of oysters and clams and looking at all the phytoplankton compositions in their gut, identifying all the species of diatoms that were consumed as well as possible; pg. 2 Abstract, pgs. 5-6 Materials and Methods paragraph 3). Kasim teaches determining the algal cells that are most consumed by the algae-eating shellfish (finding the index of electivity in the type of phytoplankton species consumed, where the index of electivity shows a preference for a specific food type; pg. 2 Abstract, pgs. 6-7 Materials and Methods paragraph 6). Kasim states that algae-eating shellfish (bivalves) demonstrate selective feeding by selecting specific feed even when the specific feed is not abundant in the water (pgs. 9-10 Discussion paragraph 1).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ladygina to incorporate the teachings of Kasim by obtaining a number of the algal cells consumed by the algae-eating shellfish for each of the shellfish groups and obtaining each type of algal cells consumed, which would be algal cells for each stage of growth, to determine the stage of growth or division of the algal cells that are most consumed by the algae eating shellfish, because algae-eating shellfish (bivalves) demonstrate selective feeding by selecting specific feed even when the specific feed is not abundant in the water, as recognized by Kasim (pgs. 9-10 Discussion paragraph 1).
Regarding the recitation in claims 1 and 4, “selecting, as a feed for giving the algae-eating fish or shellfish, the algal cells whose stage of growth or division is the same as the determined stage of growth or division of the algal cells,” the method step of “selecting” is a mental process step and is not a physical step that requires an action to be performed. The mental process step of “selecting” does not provide further specificity to the performed method. It is only helping to specify what may be given to the shellfish in the future, “as a feed for giving to… shellfish” but does not provide a physical action step performed in the claim. Additionally, “a feed for giving to the… shellfish” is directed at the intended use of the algal cells. Thus, the recitation does not further limit claims 1 and 4.
Regarding claims 6 and 9, modified Ladygina teaches a method of feeding algae-eating shellfish (implementation of the method to feed oyster algae; [0011], [0013-0015]), the methods of claim 6 and 9 comprising: determining feed for the algae-eating shellfish by the methods discussed above according to claims 1 and 4, respectively.
Ladygina teaches feeding the algae-eating shellfish with the feed determined by the method of claim 1 as required by claim 6, and by the method of claim 4 as required by claim 9; where the feed that is fed to the algae-eating shellfish is algal cells whose stage of growth or division is the same as that of the algal cells contained in the sample most consumed by the algae-eating shellfish (oyster were fed microalgae, where the algae were in a logarithmic growth phase, to maximize daily average growth of oysters, [0014]; the advantage of the preparation of feed for growing oysters [0016], where the algae is at a specific phase of growth and is fed to the oysters at that specific phase of growth [0011], [0013-0015], is that the feed is optimal for growing oysters and the inclusion of the feed in the mussel diet provides a high daily gain [0016]).
Regarding claim 10 and 11, modified Ladygina teaches the methods of claims 6 and 9, respectively, as discussed above. Ladygina discloses culturing the algal cells (process comprises cultivation of microalgae; [0001]); and obtaining, from the cultured algal cells, the algal cells which are in the same stage of growth or division as the determined stage of growth or division of the algal cells, as required by claims 10 and 11 (microalgae are cultivated [0008], [0011]; method allows to formulate feeds to satisfy the needs of mollusks, the preparation of algae and its inclusion in the diet of mussel providing high daily gains, [0016]).
Regarding claims 12 and 13, modified Ladygina teaches a method of producing the feed determined by the method according to claims 1 and 4, respectively (microalgae are cultivated [0008], [0011]; method allows to formulate feeds to satisfy the needs of mollusks, the preparation of algae and its inclusion in the diet of mussel providing high daily gains, [0016]).
Ladygina teaches the methods of claims 12 and 13 comprise determining feed for the algae-eating fish or shellfish by the methods discussed above according to claims 1 and 4, respectively.
Ladygina teaches culturing the algal cells, as required by claims 12 and 13 (process comprises cultivation of microalgae; [0001]). Ladygina teaches obtaining, from the cultured algal cells, the algal cells which are in the same stage of growth or division as the determined stage of growth or division of the algal cells, as required by claims 12 and 13 (microalgae are cultivated [0008], [0011]; method allows to formulate feeds to satisfy the needs of mollusks, the preparation of algae and its inclusion in the diet of mussel providing high daily gains, [0016]).
Claims 2-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ladygina, RU 2548107 in view of Kasim et al., Food sources of the oyster and the clam in the Akkeshi-ko estuary, Plankton and Benthos Research 4(3), as applied to claims 1 and 4 above, and further in view of Filosa et al., Feeding State Modulates Behavioral Choice and Processing of Prey Stimuli in the Zebrafish Tectum, Neuron, pgs. 596-608, May 2016.
Regarding claims 2-3 and 5, modified Ladygina teaches feeding the fish or shellfish groups with the feed samples/algal cells as discussed above in claims 1 and 4. However, Ladygina does not discuss the method further comprising putting the algae-eating fish or shellfish into a fasted state, as required by claims 2 and 5, or in a full state, as required by claim 3, prior to feeding the fish or shellfish groups with the feed samples/algal cells.
Filosa teaches studying the behavior of fish to locate food sources (pg. 596 Summary). Filosa teaches putting fish in a full (fed) or fasted (starved) state to monitor their behavioral choice, where one behavioral choice was to either approached or avoid small circles, which were perceived by the fish as food items (pg. 596-597 Results paragraphs 1 and 2).
It would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ladygina to incorporate the teachings of Filosa by putting the algae-eating fish or shellfish into a fasted or full state prior to feeding them a plurality of samples because Filosa recognizes that putting aquatic animals into a full (fed) or fasted (starved) state helps monitor their behavioral choices, as recognized by Filosa (pg. 596-597 Results paragraphs 1 and 2).
Response to Arguments
Applicant argues on pg. 6 of their remarks that the 101 rejection should be withdrawn because of the added claim amendments. Applicant contends that the claims are amended to address the issues raised in the Office action and add additional steps to the claims, meeting all statutory subject matter requirements. However, the Office disagrees for the following reasons.
As discussed in the 101 rejection above, the feeding method, as it is claimed, is not markedly different from the biological, naturally occurring event of fish or shellfish eating algae. This method of fish or shellfish eating algal cells in different stages of growth occurs naturally and is considered a natural phenomenon of an animal eating, which is a basic pre-existing process of nature. Further, the added amended claim language of obtaining algal cells consumed by the fish or shellfish and determining the stage of growth or division of the algal cells does not add significantly more to the claims. The determining steps are considered to be an abstract idea that can be performed in the mind and the obtaining step is a limitation that is considered routine and conventional, since it simply looks at what is being eaten by the animal. This judicial exception is not integrated into a practical application because the method only selects the feed to give to the algae-eating fish or shellfish, obtains the feed, and determines what the feed is, which do not add meaningful limitations to the method. Thus, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the rejected claims contain a natural phenomenon of an animal eating food, where the food is in a naturally occurring state (i.e. the samples being fed to the fish and shellfish is algae in various stages of growth) and the limitation of obtaining the food that was eaten and abstract idea of determining what food was eaten by the fish or shellfish do not add significantly more. Therefore, the 101 rejection is maintained as the claims do not meet all statutory subject matter requirements.
Applicant’s arguments with respect to the 35 U.S.C. 102 (a)(1) rejection for claims 1, 4, 6 and 9-13 and 35 U.S.C. 103 rejection for claims 2, 3 and 5 have been considered but are moot because the new ground of rejection does not rely on any teaching or matter specifically challenged in the argument.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE GERLA whose telephone number is (571)270-0904. The examiner can normally be reached Mon.-Wed. and Fri. 7-12 pm; Th. 7-2pm.
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, Nikki Dees can be reached at 571-270-3435. 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.
/S.R.G./Examiner, Art Unit 1791
/ELIZABETH GWARTNEY/Primary Examiner, Art Unit 1759
Prosecution Insights