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 1-20 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-16, in the reply filed on 15 April 2026 is acknowledged. After further consideration, the species election of an improvement of the fish has been withdrawn. The traversal is on the ground(s) that invention I and invention II share a single general inventive concept of a specific concentration of ZnO particles in fish feed and its effect on fish health. Applicant argues that inventions I and II are not capable of being used independently because the two inventions directly, functionally, and inextricably linked as sequential steps of the same overall inventive process and cannot be practiced or evaluated independently of one another. Applicant argues that inventions I and II are not patentably distinct because the ultimate functional objective in both is improving fish health. Applicant argues that there is no serious search burden because any prior art search directed to ZnO particles at a specific concentration for fish feed and fish health would necessarily encompass both inventions I and II. Applicant argues that inventions I and III and also II and III share a single general inventive concept of a specific concentration of ZnO particles in fish feed and its effect on fish health. Applicant argues that inventions I and III and also II and III are not capable of being used independently because the two inventions directly, functionally, and inextricably linked as sequential steps of the same overall inventive process and cannot be practiced or evaluated independently of one another. Applicant argues that inventions I and III and also II and III are not patentably distinct because they are all related to a specific concentration of ZnO particles and ultimately the objective of improving fish health. Applicant argues that there is no serious search burden because any prior art search directed to ZnO particles at a specific concentration for fish feed and fish health would necessarily encompass inventions I and III and also II and III. This is not found persuasive because of the reasons set forth in the Restriction and Election Requirement mailed 16 March 2026. The inventions are distinct, each from the other because of the following reasons: Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the invention I recites a method of improving health of fish as claimed in claim 1. Invention II recites a method of preparing a fish feed as claimed in claim 17. The examination of each group would require different searches in U.S. Patents and scientific literature and would require the consideration of different patentability issues. Thus, inventions I and II are separate and distinct in having different method objectives (e.g., feed fish and produce particles of zinc oxide, respectively), method steps, parameters, different endpoints and are patentably distinct. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. Inventions I and III are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process for using the product as claimed can be practiced with another materially different product. Specifically, the method of improving health of fish can be practices with a fish feed that does not contain zinc oxide particles. Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process. Specifically, the process of preparing a fish feed comprising zinc oxide particles can be made by a process that includes a centrifuging step at different rotating speeds to obtain zinc oxide particles.
Because the inventions are distinct for the reasons given above and the search for Group I is not required for Groups II and III, search for Group II is not required for Groups I and III, and search for Group III is not required for Groups I and II; and Groups I-III have acquired a separate status in the art as shown by their different classification and divergent subject matter, restriction for examination purposes as indicated is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 April 2026.
Claims 1-16 are presented for examination herein.
Information Disclosure Statement
The information disclosure statement (IDS) filed 10/03/2023 and 05/04/2026 have been considered by the Examiner. A signed and initialed copy of the IDS is included with the instant Office Action.
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 15-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are in the form of “use” claims and are not proper process claims under 35 U.S.C. 101. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The instant specification does not reasonably provide enablement for a method comprising feeding fish that includes maintaining the salinity at 28-30%.
The factors to be considered in determining whether undue experimentation is required are summarized In re Wands 858 F.2d 731,8 USPQ2nd 1400 (Fed. Cir, 1988). The court in Wands states: "Enablement is not precluded by the necessity for some experimentation such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is 'undue,' not 'experimentation.'" (Wands, 8 USPQ2d 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. "Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations." (Wands, 8 USPQ2d 1404). The factors to be considered in determining whether undue experimentation is required include: (1) the quantity of experimentation necessary, (2) the amount or direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. While all of these factors are considered, a sufficient amount for a prima facie case are discussed below.
Wands now requires that one consider the number of working examples presented in the instant specification. No examples were provided in the instant specification that shows feeding of any type of fish in a water with a salinity maintained at 28-30%.
As the state of the art reflects, fish cannot survive in water with a salinity of 28-30% (e.g., 280 ppt – 300 ppt). According to ATI, salinity that fish can tolerate range from including 1.024-1.026 which is 32 – 35 ppt (e.g., 3.2 – 3.5%) (ATI, https://atinorthamerica.com/blog/all-you-need-to-know-about-salinity/, under heading “What is the Optimal Range?”). Therefore, fish cannot survive in water with a salinity of 28-30% (e.g., 280 ppt – 300 ppt).
Applicants have not provided guidance with regard to feeding of any type of fish in a water with a salinity maintained at 28-30%, which fish cannot survive in. No absolute nexus has been provided within the instant specification as filed between feeding fish in a water with a salinity maintained at 28-30%.
"Inventor should be allowed to dominate future patentable inventions of others where those inventions were based in some way on his teachings, since such improvements while unobvious from his teachings, are still within his contribution, since improvement was made possible by his work; however, he must not be permitted to achieve this dominance by claims which are insufficiently supported and, hence, not in compliance with first paragraph of 35 U.S.C. 112; that paragraph requires that scope of claims must bear a reasonable correlation to scope of enablement provided by specification to persons of ordinary skill in the art; in cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific law; in cases involving unpredictable factors, such as most chemical reactions and physiological activity, scope of enablement varies inversely with degree of unpredictability of factors involved."
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 8-9 and 15-16 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.
Claim 8 recites “the fish feed in its dried state has substantially 74.68 mg/kg” which renders the claim indefinite because it is unclear what the amount of “74.68 mg/kg” is in reference to. In favor of compact prosecution, the amount of “74.68 mg/kg” is interpreted as being the amount of zinc oxide nano-particles (nZnO).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “48.25-75 mg/kg”, and the claim also recites “60-75 mg/kg” and “60 mg/kg” which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 8-9 are indefinite due to the recitation “substantially…” which is a relative term/degree that is not defined. The instant specification does not disclose a definition for the term “substantially”. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims.
Claim 14 recites “salinity at 28-30%” which renders the claim indefinite because it is unclear if 28-30% means “28-30%” of salt to water (which is too high of an amount of salt for any fish to survive in) or what “28-30%” is referring to.
Claims 15-16 provides for the use of “zinc oxide nano-particles (nZnO) for the preparation of a ZnO-containing fish feed for improving health of fish”, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 16 recites the limitation "the improving health of fish" in lines 1-2. There is insufficient antecedent basis for this limitation in 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over WANG (CN 111202185 A, publication date of 29 May 2020) in view of AKSNES (WO 2008/084074 A2, publication date of 17 July 2008).
Regarding the recitation “of improving health of fish” (e.g. claim 1), Applicant is reminded that a preamble that recites the use or purpose of the claimed invention generally does not limit the claim. Catalina, 62 USPQ2d at 1785. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02 (II). In the instant case, the recitation “of improving health of fish” in claim 1 only recites the purpose of the method, therefore, is not considered a limitation.
Wang is primarily directed towards a basket for fish feed containing additive that contains including zinc element that is a nanometer material (abstract of the English translation).
Regarding claims 1-2, Wang discloses zinc are trace metal element necessary for an animal. Adding the proper metal zinc helps to meet the requirement of the animal for the zinc, and promote the growth of the animal (page 2, third paragraph of the English translation). Wang discloses a fish feed containing including mineral that is preferably nano-zinc oxide granular (page 2, fifth to eighth paragraph of the English translation). Wang discloses that nanometer material of zinc improves the absorption efficiency of zinc in the fish body, reduce the loss efficiency of the additive in the feeding process, the chemical environment-friendly material of nanometer material is higher than the traditional, adding the nano-material is capable of acting on different fish organs and tissue, and enhance growth (page 3, third paragraph of the English translation).
Regarding claim 12, Wang discloses using nano-zinc oxide as the zinc (page 2, seventh to eighth paragraph of the English translation).
Regarding claim 13, Wang discloses that the fish feed comprises protein (page 2, sixth paragraph of the English translation).
Wang does not specifically teach that fish feed has 60-93.35 mg/kg of zinc oxide (ZnO) particles. Wang does not specifically teach that the protein is from casein or soybean. The deficiencies are made up for by the teachings of Aksnes.
Aksnes is primarily directed towards feed composition for aquatic organisms (abstract).
Regarding claims 1-2 and 7-9, Aksnes teaches that dietary calcium and phosphorous concentrations, presence of phytic acid, protein source affect zinc absorption and use in fish. Aksnes teaches that the bioavailability of zinc is inversely related to the tricalcium phosphate continent. Aksnes teaches that higher supplements of zinc should be included in natural ingredient fish diets to compensate for reduced zinc bioavailability caused by dietary phytate and tricalcium phosphate (page 144, lines 15-25). Aksnes teaches fish feed composition comprising from 1- 1000 mg/kg zinc (paragraph bridging pages 144 and 145). The amount of zinc of 1-1000 mg/kg overlaps the amount of 48.25-75 mg/kg of zinc recited in claim 9. Aksnes teaches that in rainbow trout, zinc deficiency caused including growth suppression (page 145, lines 12-13).
Regarding claim 13, Aksnes teaches that the protein in the feed includes casein (page 110, lines 16-17).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to feed fish a fish feed to improve growth of the fish, wherein the fish feed comprises zinc oxide nanoparticles, wherein the amount of the zinc oxide provides zinc of 1-1000 mg/kg (e.g., amount of zinc oxide would range from 1.25-1250 mg/kg zinc oxide; about 80% weight of zinc in zinc oxide; 1-1000 / .80 = 1.25-1250). The person of ordinary skill in the art would have been motivated to make those modifications because Aksnes teaches that different fish requires different amounts of zinc and ranges of zinc includes 1-1000 mg/kg which one of ordinary skill in the art would use to optimize to determine the best amount of zinc in the form of zinc oxide to feed fish in order to improve their growth. The person of ordinary skill in the art would have reasonably expected success because Wang discloses zinc are trace metal element necessary for an animal. Adding the proper metal zinc helps to meet the requirement of the animal for the zinc, and promote the growth of the animal (page 2, third paragraph of the English translation). Wang discloses a fish feed containing including mineral that is preferably nano-zinc oxide granular (page 2, fifth to eighth paragraph of the English translation). Wang discloses that nanometer material of zinc improves the absorption efficiency of zinc in the fish body, reduce the loss efficiency of the additive in the feeding process, the chemical environment-friendly material of nanometer material is higher than the traditional, adding the nano-material is capable of acting on different fish organs and tissue, and enhance growth (page 3, third paragraph of the English translation). Aksnes teaches that dietary calcium and phosphorous concentrations, presence of phytic acid, protein source affect zinc absorption and use in fish. Aksnes teaches that the bioavailability of zinc is inversely related to the tricalcium phosphate continent. Aksnes teaches that higher supplements of zinc should be included in natural ingredient fish diets to compensate for reduced zinc bioavailability caused by dietary phytate and tricalcium phosphate (page 144, lines 15-25). Aksnes teaches fish feed composition comprising from 1- 1000 mg/kg zinc (paragraph bridging pages 144 and 145). The amount of zinc of 1-1000 mg/kg overlaps the amount of 48.25-75 mg/kg of zinc recited in claim 9. Aksnes teaches that in rainbow trout, zinc deficiency caused including growth suppression (page 145, lines 12-13).
Regarding claims 2-6, feeding fish a fish feed to improve growth of the fish, wherein the fish feed comprises zinc oxide nanoparticles, wherein the amount of the zinc oxide provides zinc of 1-1000 mg/kg (e.g., amount of zinc oxide would range from 1.25-1250 mg/kg zinc oxide; about 80% weight of zinc in zinc oxide; 1-1000 / .80 = 1.25-1250), which is prima facie obvious in light of Wang and Aksnes is substantially identical to the instantly claimed method, therefore, necessarily possesses the same characteristics, e.g., improving microbiota composition in the intestines of the fish, improving intestinal structures and intestinal health of the intestines of the fish, and regulating metabolism of glucose and lipid in the fish. The office does not have the facilities and resources to provide the factual evidence needed in order to establish that the composition of the prior art does not possess the same material, structural and steps-like characteristics of the claimed composition. In the absence of evidence to the contrary, the burden is on Applicant to prove that the claimed composition is different from that taught by the prior art and to establish patentable differences. See In re Best 562F .2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2nd 1992 (PTO Bd. Pat. App. & Int. 1989).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). MPEP 2112.01 (I).
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Aksnes, as applied to claims above, and further in view of KIM (KR 2019/0081235 A, publication of 09 July 2019).
Regarding claim 7, the method of claim 7 is described above in section 13.
Wang and Aksnes do not specifically teach that the size of the zinc oxide nanoparticle is an average diameter of 10-45 nm (e.g., claim 10) or 10-28 nm (e.g., claim 11). The deficiency is made up for by the teachings of Kim.
Kim is primarily directed towards zinc oxide nanoparticles for a feed (see entire English translation of the patent publication).
Regarding claims 10-11, Kim teaches that zinc oxide produced by the conventional method has a large particle size and low absorption (page 2 of the English translation). Kim teaches zinc oxide with a size of 20 nm or less (page of the English translation).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to feed fish a fish feed to improve growth of the fish, wherein the fish feed comprises zinc oxide nanoparticles, wherein the amount of the zinc oxide provides zinc of 1-1000 mg/kg (e.g., amount of zinc oxide would range from 1.25-1250 mg/kg zinc oxide; about 80% weight of zinc in zinc oxide; 1-1000 / .80 = 1.25-1250), wherein the zinc oxide nanoparticles have a size of 20 nm. The person of ordinary skill in the art would have been motivated to make those modifications to obtain a method with better absorption of zinc by using zinc oxide nanoparticles with a size of 20 nm, as taught by Kim. The person of ordinary skill in the art would have reasonably expected success because Kim teaches that zinc oxide produced by the conventional method has a large particle size and low absorption (page 2 of the English translation). Kim teaches zinc oxide used in feed (page 4 of the English translation). Kim teaches zinc oxide with a size of 20 nm or less (page 5 of the English translation).
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over WANG (CN 111202185 A, publication date of 29 May 2020) in view of AKSNES (WO 2008/084074 A2, publication date of 17 July 2008) and KIM (KR 2019/0081235 A, publication of 09 July 2019).
Regarding the recitation “of improving health of fish” (e.g. claim 1), Applicant is reminded that a preamble that recites the use or purpose of the claimed invention generally does not limit the claim. Catalina, 62 USPQ2d at 1785. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP 2111.02 (II). In the instant case, the recitation “of improving health of fish” in claim 1 only recites the purpose of the method, therefore, is not considered a limitation.
Wang is primarily directed towards a basket for fish feed containing additive that contains including zinc element that is a nanometer material (abstract of the English translation).
Regarding claims 15-16, Wang discloses zinc are trace metal element necessary for an animal. Adding the proper metal zinc helps to meet the requirement of the animal for the zinc, and promote the growth of the animal (page 2, third paragraph of the English translation). Wang discloses a fish feed containing including mineral that is preferably nano-zinc oxide granular (page 2, fifth to eighth paragraph of the English translation). Wang discloses that nanometer material of zinc improves the absorption efficiency of zinc in the fish body, reduce the loss efficiency of the additive in the feeding process, the chemical environment-friendly material of nanometer material is higher than the traditional, adding the nano-material is capable of acting on different fish organs and tissue, and enhance growth (page 3, third paragraph of the English translation).
Wang does not specifically teach that fish feed has 60-93.35 mg/kg of zinc oxide (ZnO) particles. The deficiency is made up for by the teachings of Aksnes.
Aksnes is primarily directed towards feed composition for aquatic organisms (abstract).
Regarding claims 15-16, Aksnes teaches that dietary calcium and phosphorous concentrations, presence of phytic acid, protein source affect zinc absorption and use in fish. Aksnes teaches that the bioavailability of zinc is inversely related to the tricalcium phosphate continent. Aksnes teaches that higher supplements of zinc should be included in natural ingredient fish diets to compensate for reduced zinc bioavailability caused by dietary phytate and tricalcium phosphate (page 144, lines 15-25). Aksnes teaches fish feed composition comprising from 1- 1000 mg/kg zinc (paragraph bridging pages 144 and 145). The amount of zinc of 1-1000 mg/kg overlaps the amount of 48.25-75 mg/kg of zinc recited in claim 9. Aksnes teaches that in rainbow trout, zinc deficiency caused including growth suppression (page 145, lines 12-13).
It would have been prima facie obvious to the person of ordinary skill in the art before the effective filing date of the claimed invention to feed fish a fish feed to improve growth of the fish, wherein the fish feed comprises zinc oxide nanoparticles, wherein the amount of the zinc oxide provides zinc of 1-1000 mg/kg (e.g., amount of zinc oxide would range from 1.25-1250 mg/kg zinc oxide; about 80% weight of zinc in zinc oxide; 1-1000 / .80 = 1.25-1250), wherein the zinc oxide nanoparticles have a size of 20 nm. The person of ordinary skill in the art would have been motivated to make those modifications because: 1) Aksnes teaches that different fish requires different amounts of zinc and ranges of zinc includes 1-1000 mg/kg which one of ordinary skill in the art would use to optimize to determine the best amount of zinc in the form of zinc oxide to feed fish in order to improve their growth; and 2) to obtain a method with better absorption of zinc by using zinc oxide nanoparticles with a size of 20 nm, as taught by Kim. The person of ordinary skill in the art would have reasonably expected success because Wang discloses zinc are trace metal element necessary for an animal. Adding the proper metal zinc helps to meet the requirement of the animal for the zinc, and promote the growth of the animal (page 2, third paragraph of the English translation). Wang discloses a fish feed containing including mineral that is preferably nano-zinc oxide granular (page 2, fifth to eighth paragraph of the English translation). Wang discloses that nanometer material of zinc improves the absorption efficiency of zinc in the fish body, reduce the loss efficiency of the additive in the feeding process, the chemical environment-friendly material of nanometer material is higher than the traditional, adding the nano-material is capable of acting on different fish organs and tissue, and enhance growth (page 3, third paragraph of the English translation). Aksnes teaches that dietary calcium and phosphorous concentrations, presence of phytic acid, protein source affect zinc absorption and use in fish. Aksnes teaches that the bioavailability of zinc is inversely related to the tricalcium phosphate continent. Aksnes teaches that higher supplements of zinc should be included in natural ingredient fish diets to compensate for reduced zinc bioavailability caused by dietary phytate and tricalcium phosphate (page 144, lines 15-25). Aksnes teaches fish feed composition comprising from 1- 1000 mg/kg zinc (paragraph bridging pages 144 and 145). The amount of zinc of 1-1000 mg/kg overlaps the amount of 48.25-75 mg/kg of zinc recited in claim 9. Aksnes teaches that in rainbow trout, zinc deficiency caused including growth suppression (page 145, lines 12-13). Kim teaches that zinc oxide produced by the conventional method has a large particle size and low absorption (page 2 of the English translation). Kim teaches zinc oxide used in feed (page 4 of the English translation). Kim teaches zinc oxide with a size of 20 nm or less (page 5 of the English translation).
Regarding claim 16, feeding fish a fish feed to improve growth of the fish, wherein the fish feed comprises zinc oxide nanoparticles, wherein the amount of the zinc oxide provides zinc of 1-1000 mg/kg (e.g., amount of zinc oxide would range from 1.25-1250 mg/kg zinc oxide; about 80% weight of zinc in zinc oxide; 1-1000 / .80 = 1.25-1250) , wherein the zinc oxide nanoparticles have a size of 20 nm, which is prima facie obvious in light of Wang, Aksnes and Kim is substantially identical to the instantly claimed method, therefore, necessarily possesses the same characteristics, e.g., improving microbiota composition in the intestines of the fish, improving intestinal structures and intestinal health of the intestines of the fish, and regulating metabolism of glucose and lipid in the fish. The office does not have the facilities and resources to provide the factual evidence needed in order to establish that the composition of the prior art does not possess the same material, structural and steps-like characteristics of the claimed composition. In the absence of evidence to the contrary, the burden is on Applicant to prove that the claimed composition is different from that taught by the prior art and to establish patentable differences. See In re Best 562F .2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2nd 1992 (PTO Bd. Pat. App. & Int. 1989).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. A Russian article disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties.). MPEP 2112.01 (I).
Thus, the claimed invention as a whole is clearly prima facie obvious over the teachings of the prior art.
Conclusion and Correspondence
No claims are found allowable.
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/John P Nguyen/
Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner, Art Unit 1600
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