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.
Election/Restrictions
Applicant's election with traverse of claims 1-5 in the reply filed on December 23, 2025 is acknowledged. The traversal is on the ground(s) that the claims in the instant application possess the same or corresponding special technical features. Applicant states that the amended claims from the non-elected groups incorporate the method of elected claim 1 and satisfy the requirements for the unity of invention.
This is found persuasive. The groups of inventions are considered to relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, the amended claims now possess the same or corresponding special technical features. The restriction requirement is withdrawn.
Claim Rejections - 35 USC § 112
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 1-6 and 9-13 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.
Claims 1, 4 and 10-13 recite, “most preferably eaten by the algae-eating fish or shellfish.” It is unclear what “most preferably” means. How is the “most preferred” determined? Is it the most consumed algal cells, the first consumed algal cells, or the last consumed algal cells? It is unclear how the “most preferred” was determined. For the purpose of examination, the “most preferred” will be construed as the sample of algal cells that were most consumed by the algae-eating fish or shellfish of the algal cell samples provided to the algae-eating fish or shellfish, or in other words the sample that allowed for the most growth and/or weight gain of the fish or shellfish.
Claims 2-3, 5-6 and 9 are included in the rejection because they depend from a rejected base claim.
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 algae-eating fish or shellfish eating algae. For example, claim 1 recites “feeding algae-eating fish or shellfish with a plurality of samples, the 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 algae-eating 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 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, which does not add a meaningful limitation to the method. This is because the selected feed whose stage of growth or division is most preferably eaten by the algae-eating fish or shellfish is not being fed to the algae-eating fish or shellfish. 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). 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 § 102
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.
Claims 1, 4, 6 and 9-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ladygina, RU 2548107.
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 with a plurality of samples, as required by claim 1; or feeding shellfish with one or more samples, 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]).
Regarding the recitation in claims 1 and 4, “selecting, as a feed for giving the algae-eating fish or shellfish, the algal cells… most preferably eaten by the algae-eating fish or shellfish,” 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, Ladygina teaches a method of feeding algae-eating fish and 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 fish or shellfish by the methods discussed above according to claims 1 and 4, respectively.
Regarding the recitation, “feeding the algae-eating shellfish with the feed determined by the method,” in the interest of compact prosecution, the “feed determined” by the methods according to claim 1 and 4, are viewed as the algal cells whose stage of growth or division is the same as that of the algal cells contained in the sample most preferably eaten by the algae-eating shellfish.” Additionally, as noted above in the 112(b), “most preferably eaten” is construed as the sample of algal cells that were most consumed by the algae-eating fish or shellfish of the algal cell samples provided to the algae-eating fish or shellfish, or in other words the sample that allowed for the most growth and/or weight gain of the fish or shellfish
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 preferably eaten 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, Ladygina teaches 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 algal cells most preferably eaten by the algae-eating shellfish, as the feed, 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, 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 algal cells most preferably eaten by the algae-eating shellfish, as the feed, 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]).
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.
Claims 2-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ladygina, RU 2548107 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, Ladygina teaches feeding the algae-eating fish or shellfish with the plurality of samples 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 on the algae samples.
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).
Conclusion
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/S.R.G./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791