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 .
Application Status
Claims 1-11 are pending and have been examined in this application.
Information disclosure statements (IDS) have been filed on 11/10/2023, 01/29/2025, and 03/18/2025 and reviewed by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement filed 01/29/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling.
The disclosure does not enable one of ordinary skill in the art to practice the invention without “fish with the characteristic of having a negative buoyancy”, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The claims currently do not require that the fish has a negative buoyancy.
The Applicant’s Specification, in multiple portions, discloses that the characteristic of “negative buoyancy” is required for the invention to function as intended. For example, Specification Page 6 line 13 – Page 7 line 16, recites phrases “In figure 1A, a living biomass with a negative buoyancy is positioned below the outlet”, “In figure 1B, a living biomass with a negative buoyancy is positioned above the inlet”, “In figure 1C, a living biomass with a negative buoyancy is positioned below the inlet and above the outlet”, and “If, the living biomass depicted in figure 1C has a positive buoyancy it would create an upward force, and the water would flow in the opposite direction”. This explicitly states that a fish with positive buoyancy would not allow the invention to function as claimed.
Therefore, the rejection is maintained. The fish having a characteristic of negative buoyancy is required for practice of the invention. Further clarification in the claims is required.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 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 1 recites “and/or” in line 23. This renders the claim vague and indefinite, since it is unclear if the fish are swimming both in an ascending angle and in a circle or if the fish are swimming either in an ascending angle or in a circle. Further clarification is required. Claims 2 and 10 are rejected for similar reasons.
Claims 3-11 are rejected based on their respective dependencies.
Appropriate correction is required. Accordingly, the invention has been examined as best understood.
Response to Arguments
Applicant’s arguments (filed 03/06/2026) with respect to the rejection of the claims have been fully considered but they are not persuasive.
Specifically, the claims do not require that the fish have a negative buoyancy, which has been disclosed as a required component for the invention to function as claimed (see 112(a) rejection above). This is supported by the Applicant’s disclosure, in the Specification, that a fish with positive buoyancy would cause water flow in the opposite direction than required for the invention. Therefore, just the action of swimming in a circle, would not cause the water flow stated in the claims.
Additionally, the amended claims now recite “configured” language to describe the creation of the water flow. This would seem to suggest that any fish cage having an inlet and outlet and that could have fished placed within it, such that the fish can swim in a circle, would read on the limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892, Notice of References Cited, for the full list of prior art made of record. Particularly the references were cited because they pertain to the state of the art of fish farming devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M DENNIS whose telephone number is (571)270-7604. The examiner can normally be reached Monday-Friday: 7:30 am to 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kimberly Berona can be reached at (571) 272-6909. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M DENNIS/Examiner, Art Unit 3647
/KIMBERLY S BERONA/Supervisory Patent Examiner, Art Unit 3647
