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.
This communication is the first action on the merits.
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.
Election/Restrictions
Applicant's election with traverse of Species H in the reply filed on 08/14/2025 is acknowledged. The traversal is on the ground that all of the Species contain the technical features of a fish compartment adapted to keep a shoal of fish in a region between the inlet and the outlet, a shoal of fish comprising fish with at least one of the characteristics of negative buoyancy, swimming in circle, and negative buoyancy and swimming in circle, and the shoal of fish creates a water flow from an inlet to an outlet. The Applicant argues that these technical features are not found in the prior art.
This is found to be persuasive, and the restriction requirement is withdrawn.
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 do not require that the fish has a negative buoyancy. However, Applicant’s Specification Page 5 line 3 – Page 6 line 18, specifies that negative buoyancy is required for the water flow from the inlet to the outlet to be facilitated solely by the movement of the fish. Therefore, the fish having a negative buoyancy is required for practice of the 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 a specific relation between the cross-sectional area of the inlet to the cross-sectional area of the outlet, 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 do not specify the relationship between the cross-sectional area of the inlet as compared to the cross-sectional area of the outlet. However, Applicant’s Specification Page 5 lines 21-22, Page 7 lines 16-18, and Page 8 lines 11-15, specifies requirements for the cross-sectional area of the inlet and the outlet, in order for the invention to function as claimed.
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 a submerged inlet at the upper portion of the sidewall and an outlet in fluid communication with surrounding water, 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 do not specify that the inlet must be submerged and the outlet must be in fluid communication with surrounding water. However, Applicant’s Specification Page 6 lines 19-24 and Page 8 lines 16-18, specifies that the inlet must be “submerged” and the outlet must be “in fluid communication” with water for the fluid dynamics of the system to function as expected.
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 “the shoal of fish creates a water flow from the entrance through the passage” in lines 19-20. This renders the claim vague and indefinite, since it is unclear whether the shoal of fish creates a water flow from “the entrance through the passage” or creates a water flow in the fish compartment “from the inlet to the outlet”, as is specified in the Applicant’s Drawings and Specification. Further clarification is required.
Claim 10 recites “a force created by the fish” in line 9. This renders the claim vague and indefinite, since it is unclear what exactly “force” is referencing. Further clarification is required to understand what is meant by the term “force” and how it is “created” in relation to the fish.
Claims 3-11 are rejected based on their respective dependencies.
Appropriate correction is required. Accordingly, the invention has been examined as best understood.
Conclusion
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
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