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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a method of attracting marine life, comprising: submerging a marine attractant feed block in water for at least 12 hours, the marine attractant feed block comprising at least one of a marine feed or attractant, a binder composition, the binder composition comprising a hardening agent and a cross-linked edible polymer comprised of an edible acid and a gelatinized starch, and a sugar component, wherein the at least one of the marine feed or attractant is retained within a web defined by the binder and distributed throughout the marine attractant feed block, wherein while the marine attractant feed block is submerged, a portion of the marine attractant feed block dissociates from the marine attractant feed block and another portion of the marine attractant feed block remains intact after about 12 hours, and wherein marine life is attracted to one or more of the portion of the marine attractant feed block dissociated from the marine attractant feed block or to the portion of the marine attractant feed block that remains intact, classified in A01K 97/045.
II. Claims 12-20, drawn to a stable marine attractant feed block product, comprising: at least one of a marine feed or attractant; and a binder comprising a hardening agent, and a cross-linked edible polymer, the hardening agent comprising one or more of magnesium oxide, calcium oxide, calcium hydroxide, and ionic salts of magnesium or calcium, the cross-linked edible polymer comprising an edible acid and gelatinized starch, wherein the at least one of the marine feed or attractant is present within a web defined by the binder, classified in A01N 25/34.
The inventions are independent or distinct, each from the other because:
Inventions I and II 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 product as claimed can be used in a materially different process of using that product. Specifically, the product could be used as an extended release delivery formulation for fish oils as a source of omega-3 fatty acids for nutritional purposes.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Bridget Hayden on 03/31 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
Claim 4 is 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.
The term “substantially” in claim 4 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the extent of dissociation required by methods falling within the scope of the claimed invention is unclear.
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 1, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 5378,471; issue date: 01/03/1995; cited in the IDS filed 06/10/2024) in view of Reddy et al. (Food Chemistry 118:3 pp702-711; publication year: 2010).
With regard to claim 1, Smith discloses a method entailing the following steps: A marine feed composition is submerged within a tank containing shrimp and survival rate and weight of the shrimp is measured, showing that the shrimp ate the food (col 9-10). As the shrimp must find the food in order to eat it, the method falls within the scope of the preamble “method of attracting marine life” and the outcome “wherein marine life is attracted to one or more of the portion of the marine attractant feed block dissociated from the marine attractant feed block or to the portion of the marine attractant feed block that remains intact”. Regarding the structure of the feed used in the claimed method, table 3, col 8, discloses Smith’s feed to contain anchovy fish, shrimp, squid, and soybean meal (a marine feed or attractant), binder G (a binder comprising calcium magnesium oxide, which is a hardening agent as well as sugar and corn syrup solids), wheat feed flour (i.e. a starch), and a mineral mix comprising citric acid (an edible acid). To prepare the pellets, the ingredients above are mixed (col 8, lines 12-14) by blending in a ribbon mixer, with introduction of liquids and steam, which causes gelatinization of starch as well as elevated temperature of 10-66 degrees C above ambient temperature to react the binder ingredients (col 4, lines 25-68). The marine feed or attractant (i.e. the anchovy fish, shrimp, squid, and soybean meal) is mixed thoroughly with the binder, starch, and other excipients, as discussed supra, and therefore distributed throughout the feed formulation by mixing; and the binder comprising magnesium oxide reduces degradation and fragmentation (col 4, lines 6-14). Therefore the examiner considers Smith’s feed formulation to meet the limitation “wherein the at least one of the marine feed or attractant is retained within a web defined by the binder and distributed throughout the marine attractant feed block”.
Smith measures the dissolution of the example feed formulations for 8 hours in example 2, col 9, and adds feed to the shrimp tanks twice over 8 hours in example 3, col 9-10, therefore Smith does not disclose an example method in which the feed block is submerged for at least 12 hours, as required by instant claims 1 and 8.
Smith also does not disclose that the gelatinized starch is crosslinked with the edible acid that is present within the formulation.
Reddy, in the analogous art of improving starch mechanical properties and decreasing its water solubility (page 702, left col), teaches that cross-linking is a common approach to improve starch performance for various applications and that historically starch crosslinking agents have some drawbacks in terms of toxicity of the cross-linking agents (page 702, left col). Reddy teaches that citric acid, a nontoxic substance, can be used to crosslink starch, increasing tensile strength and thermal stability, as well as decreasing dissolution rate in aqueous media (abstract).
It would have been prima facie obvious to crosslink the gelatinized starch with the citric acid in Smith’s feed composition as a means to control dissolution rate of the final product once it is in aqueous medium as a food source or attractant. While the main focus of the disclosure is on shrimp, Smith indicates that the feed can be used for other water animals (col 1, lines 40-42, col 2, line 33). The residence time required for a feed formulation would vary depending upon the conditions of the environment and dietary requirements of a particular aquatic animal. One having ordinary skill would have been motivated to reduce frequency replacing the feed for convenience and efficiency.
With regard to claim 1, The percentage of pellet remaining after submersion of Smith’s example formulations for 8 hours ranges from about 78 to 86%, therefore the rate of dissolution is consistent with the limitation “wherein while the marine attractant feed block is submerged, a portion of the marine attractant feed block dissociates from the marine attractant feed block and another portion of the marine attractant feed block remains intact after about 12 hours” as required by claim 1. It would have been obvious to optimize a feed schedule or attractant replacement schedule by optimizing the degradation rate of the feed formulation.
With regard to claim 4, as detailed above, the examiner considers it to have been a matter of routine for the artisan of ordinary skill to optimize the dissolution time of the feed formulation depending upon the target species and characteristics of its environment by adjusting quantity of binder or degree of citric acid crosslinking in the gelatinized starch.
With regard to claim 5, shrimp are crustaceans.
Claims 2, 3, 6, and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 5378,471; issue date: 01/03/1995; cited in the IDS filed 06/10/2024) in view of Reddy et al. (Food Chemistry 118:3 pp702-711; publication year: 2010) as applied to claims 1, 4 and 5 above, and further in view of Beattie et al. (US 6555144; issue date: 04/29/2003; cited in the IDS filed 06/10/2024), as evidenced by Berry et al. (US 2002/0072108; publication date: 06/13/2002).
The relevant disclosures of Smith and Reddy are set forth above.
With regard to independent claim 8, as noted in the rejection supra, Smith/Reddy teach a method involving providing a hardened marine attractant feed block that retains an initial shape, the feed block comprising at least one of a marine feed or attractant in a binder composition, the binder composition comprising a hardening agent and a cross-linked edible polymer, the cross-linked edible polymer comprising an edible acid and gelatinized starch and is hardened by the hardening agent, and wherein the at least one of the marine feed or attractant is present within a web defined by the binder and distributed throughout the marine attractant feed block; and submerging the marine attractant feed block in the water, wherein the initial shape of the marine attractant feed block gradually dissolves in the flowing water and releases the at least one of the marine feed or attractant residing at an exterior thereof, and at least a portion of the marine attractant feed block remains intact after about 12 hours.
Neither reference disclose placing the marine feed composition in flowing water as required by claims 2 and 8.
Beattie teaches attracting lobsters by placing a marine feed composition (bait) into a trap, wherein the bait has an extended life within the trap (abstract). The composition is bait for a crustacean trap, said bait comprising a pelletized carrier and attractant having ingredients which offer extended life relative to a fish feed, said ingredients forming a pelletized feed, an attractant for attracting said crustaceans and an oil coating for coating said pellets and said attractant, said oil coating allowing a timed release of said attractant thereby to attract said crustaceans (col 1, lines 37-44). The trap containing attractant bait is placed within seawater, which is considered to fall within the scope of “flowing water”.
It would have been prima facie obvious to use the bait rendered obvious by Smith/Reddy in the method of trapping lobster disclosed by Beattie. The artisan of ordinary skill would have been motivated to do so in order to capitalize on the ability to optimize residence time during which the bait remains effective to attract the lobster. The artisan of ordinary skill would have had reasonable expectation of success because the prior art teaches the method to increase hardness and water dissolution of the binding materials for Smith’s feed composition, as detailed above. With regard to claim 8, the examiner considers the marine feed or attractant to be stabilized under these circumstances because it is not immediately dissolved.
With regard to claim 3 and 11, the shrimp feed formulation in example 3 is submerged in water maintained between 23 – 28C (i.e. 73.4 – 82.4) and the salinity of sea water is 35 ppt (i.e. 35 g/L; Berry: 0021).
With regard to claims 6 and 10, as noted above, the combined teachings of Smith/Reddy/Beattie render obvious arranging the bait of Smith/Reddy in a trap.
With regard to claim 9, the limitations regarding optimizing degradation rate have been addressed in the rejection over Smith/Reddy, above.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 5378,471; issue date: 01/03/1995; cited in the IDS filed 06/10/2024) in view of Reddy et al. (Food Chemistry 118:3 pp702-711; publication year: 2010) as applied to claims 1, 4, and 5 above, and further in view of Brady et al. (US 20150359226; publication date: 12/17/2015).
The relevant disclosures of Smith and Reddy are set forth above. Smith discloses that variable sizes and shapes of the feed formulation are contemplated (col 5, lines 23-25) but neither reference discloses the particular dimension recited in instant claim 7.
Brady teaches synthetic bait compositions that dissolve in aqueous media over an optimizable duration of from 0.5 seconds to 40 days (abstract). Brady characterizes the release rate of organic attractant as directly proportional to the dissolution time of the bait. The dissolution time is dependent on several factors including the synthetic bait composition, the size, shape, and mass of the synthetic bait, the temperature of the media, the durability against predator attack, and media agitation or turbulence.
The examiner does not consider the dimensions required by instant claim 7 to patentably define over the cited prior art because these were known result-effective variables that can be adjusted depending upon the species to be attracted, the location and conditions of the attractant (e.g. how quickly will any dissolved attractant/food be carried away by current or diffuse away from the location), and duration the attractant composition must remain effective.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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, Ali Soroush can be reached at (571)272-9925. 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.
/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
Prosecution Insights