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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0332213 (Morris).
Morris discloses an additive mixture added to a feed material. The additive mixture may be an organohalide [0075] and the feed material may be a seaweed or algae (seaweed is a macroalgae) [0034]. While no express disclosure of a combination of algae and organohalide are given by Morris, the reference clearly discloses that the feed may be a biomass selected from a limited list that includes algae and that the additive may be an organohalide, thus the selection of algae and an organohalide would have been obvious to one of ordinary skill based upon the express disclosure in Morris that these materials may be selected and used for their given purposes. The organohalide is not described as exogenous but is also not described as derived from an algae; thus, it is considered that the organohalide may be either exogenous or derived from a natural source, as either source would have been available to one of ordinary skill in the art and either option is considered obvious since Morris does not require a specific source.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 5, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 5 and 6 of U.S. Patent No. 12,582,142. Although the claims at issue are not identical, they are not patentably distinct from each other because the instantly claimed composition corresponds to the formulation of the patent claims. The formulation comprises an organohalide and is an exogenous methanogenesis inhibitor and is not derived from algae and the substrate is algae. The instant claims require an exogenous organohalide and a macroalgae substrate wherein the exogenous organohalide is not derived from macroalgae.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 19/544,771 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are to a formulation wherein the formulation requires a methanogenesis inhibitor not derived from algae and a substrate of algae, and the claim of the ‘771 application requires the same components as part of a composition. The ‘771 specification provides definition as to the scope of the term methanogenesis inhibitor for the instant claims [0028], thus the scope of claim 14 encompasses these compositions. See MPEP 804 (II)(B)(1) which states in part “The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification, including all of the compound’s uses that are disclosed.”
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Note that should the non-elected claims be rejoined, the following double patenting rejection may be applicable and are presented here for compact prosecution.
Claims 11, 13, 15 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 49 and 50 of copending Application No. 18/366,532 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are to administering a formulation to a ruminant as a supplement to a diet or to reduce enteric emissions where the formulation requires an organohalide not derived from algae and a substrate of algae, and the claims of the ‘532 application require the same components as part of a formulation that is administered to a ruminant to reduce methane production.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim 1 has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Allowable Subject Matter
Claims 2-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and further notwithstanding the double patenting rejections noted above.
Please note that should claims 11-17 be rejoined, the following issues are noted:
Claim 15 refers to an “effective amount” but does not specify what is accomplished by the “effective amount”. In other words, it is not clear what the “effect” is.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tong Guo can be reached at 571-272-3066. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
Prosecution Insights