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 .
Election/Restriction
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 07/07/2020 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2020.
Claims 1-11 are under current examination.
The rejection of claim 4 under 35 USC 112(b) has been withdrawn in view of Applicant’s arguments, see page 7, pointing to para 0042 of the pre-grant publication of the instant application as providing a limiting definition.
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.
Response to Arguments
Applicant's arguments filed 07/07/2020 have been fully considered but they are not persuasive.
On page 8, Applicant states “the Examiner explains that 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. Id. (Emphasis added.) The Examiner then turns to Reddy, alleging Smith in combination with Reddy renders claim 1”.
Here, the examiner finds that Applicant overstates what is missing from Smith. For clarity, the only feature not clearly taught within the broader disclosure of Smith is that the citric acid, although present, is not described as crosslinking the pregelatinized starch, please see rejection above.
On page 9, Applicant argues that Smith does not disclose any of its binders contain an edible acid and starch, let alone gelatinized starch, nor does the reference disclose or suggest its binders are incomplete and somehow require additional components.
As an initial matter, as explained in the rejection, Smith discloses both that the starch is gelatinized and that citric acid may be included in the feed; the relevant portion of the examiner’s rejection is replicated here:
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).
Wit regard to the argument that Smith does not suggest its binders are incomplete, "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. See also In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known.
Applicant’s comment on page 9 is noted that it is impermissible to pick and choose from Smith only so much of it as will support a given position; however, this line of reasoning does not apply to the instant case, as very little picking and choosing must be done to arrive at the instantly claimed method. As noted above, only minor differences exist between the claimed method and the prior art.
On page 9, Applicant argues that Smith’s failure to suggest using wheat flour and folic acid in the binder compositions must therefore be fully considered is noted; however, noting that Smith’s examples do contain wheat flour, it is unclear how this is meant to traverse the rejection of the instant claims, as folic acid is not claimed. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a mixture of folic acid and wheat flour) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Finally, in answer to the statement that the Office must show the prior art specifically describes the same function as disclosed in the application, as detailed in the rejection above, the examiner points out that Reddy’s disclosure teaches that crosslinking with citric acid provides structural enhancement to starch, and Smith’s feed provides food for and attracts marine life.
On page 9, Applicant describes Reddy as demonstrating citric acid can crosslink starch to improve mechanical properties, describes more details of Reddy’s disclosure, notes Reddy’s application to textiles, and that the reference does not address edible polymers that form a web by the binder distributed throughout the product, or marine attractant feed block. Applicant argues further that Reddy is in the field of textiles and that Reddy’s objectives are contrary to attracting marine life. On page 10, in traversal of the examiner’s citing Reddy, Applicant argues that the Office must show that prior art specifically describes the same function as that disclosed in the application.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s argument that Reddy is in the field of textiles, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, as discussed in the rejection, both disclosures address mechanical properties of starches, as does the instant invention, and therefore they solve the same problem and can be properly combined under 35 USC 103.
On page 10, Applicant argues that the fields of chemistry and animal nutrition are unpredictable and that even minor deviations in the formula could have a major effect on the properties of the marine attractant.
This argument is not persuasive because the modification from Smith required to reach the instant invention, as claimed, was quite small, specifically crosslinking of the starch with citric acid, an ingredient already listed as suitable by Smith. The prior art establishes that crosslinking starch with citric acid had been recognized in the art as a means to adjust the mechanical stability of the starch polymer, and therefore, this benefit would have been entirely predictable by the artisan of ordinary skill in this field, e.g. a highly intelligent person having a Ph.D. in formulations science. Additionally, please refer to MPEP 2123(II), disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
On page 11, Applicant argues that the prior art does not provide any teaching or suggestion for how Reddy’s starch films can or should be incorporated into Smith.
For clarity, the obviousness conclusion does not rely on the premise that one would “incorporate” the starch films of Reddy into Smith’s feed pellet. In response to applicant's argument that there is no teaching or suggestion for “how Reddy’s starch films can or should be incorporated into Smith”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The claims are considered prima facie obvious because one having ordinary skill in the art would have been motivated to crosslink the gelatinized starch present in Smith’s invention using the citric acid that Smith also suggests including in their formulation.
On page 11, Applicant argues that it would have been complex to hope that Smith’s block, in which the gelatinized starch had been crosslinked with citric acid, would remain in water for at least 12 hours.
As pointed out in the rejection, 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 the attraction of marine life to the dissociated portions of the marine attractant feed block or the feed block itself mentioned on page 11 of the remarks, the examiner points out that marine life would be attracted to the attractant wherever it is found and the rate at which the block degrades appears to have been an optimizable parameter as of the instant effective filing date.
On page 11, Applicant argues that there would be no way to predict that a Smith feed pellet as modified by Reddy would achieve an edible and palatable product suitable for marine life.
The examiner respectfully disagrees that the modification of crosslinking Smith’s gelatinized starch with citric acid would be likely to have any pronounced effect on the operability of Smith’s pellet. Citric acid was taught by Smith as a suitable ingredient, and the crosslinking would merely alter the mechanical properties and degradation rate of the starch. This is not a situation where the rejection is a statement that it would have been “obvious to try” without more. Here there was a reasonable expectation of success. “Obviousness does not require absolute predictability of success.” Id. at 903, 7 USPQ2d at 1681."
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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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.
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/KATHERINE PEEBLES/ Primary Examiner, Art Unit 1617
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