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 .
This office action is in response to the amendment filed June 9th, 2026.
The applicant has cancelled claim 3.
Claims 1, 2, and 4-10 are pending and were examined on the merits.
Any objections or rejections not reiterated below are hereby withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 9th, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawal of Objections and Rejections
Applicant’s arguments, filed Jun, with respect to the objection to the specification have been fully considered and are persuasive. The objection to the specification has been withdrawn. The applicant has amended the specification to resolve informalities pointed out in the previous office action.
Applicant’s arguments, filed June 9th, 2026, with respect to the objection to have been fully considered and are persuasive. The objection to claim 7 has been withdrawn. The applicant has amended claim 7 to resolve the informality pointed out in the previous office action.
Applicant’s arguments, filed June 9th, 2026, with respect to the rejection have been fully considered and are persuasive. The rejection of claim 7 under 35 U.S.C. 112(b) has been withdrawn. The applicant has amended claim 7 to not recite the limitation of “configured to release 10-200 mg bromoform per day in the reticulo rumen of a ruminant animal” therefore claim 7 is no longer incomplete for failing to recite the steps of “configuring”.
The rejection of claim 3 under 35 U.S.C. 103 is withdrawn, this claim having been cancelled by the applicant.
The rejection of claim 3 under provisional non-statutory double-patenting is withdrawn, this claim having been cancelled by the applicant.
Pending Objections and Rejections
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 8-10 are provisionally rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1-8 of copending Application No. 18/560449 (reference
application).
If the applicant wishes to traverse this rejection, then the applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
The provisional rejection of claims 1, 5, 6, and 8-10 on the ground of non-statutory double-patenting is maintained.
Claims 1, and 4-10 are provisionally rejected on the ground of nonstatutory double patenting
as being unpatentable over claims 1, and 3-10 of copending Application No. 18/560451 (reference
application).
If the applicant wishes to traverse this rejection, then the applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
The provisional rejection of claims 1 and 4-10 on the ground of non-statutory double-patenting is maintained.
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, 2, and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over De Nys and Magnusson (WO 2020113279 A1) and further in view of Wardell and Duffy (WO 90/11756).
Applicant's arguments filed June 9th, 2026 have been fully considered but they are not persuasive. The rejection .
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 there is no teaching, suggestion, or motivation to combine the teachings of the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the instantly claimed invention is obvious through combining prior art elements according to known methods to yield predictable results. One of skill in the art could have combined Asparagopsis oil (De Nys and Magnusson) with a water-soluble glass comprising the slow release vitreous system of Wardell and Duffy by mixing a heated, softened water soluble glass with the Asparagopsis oil and subsequently cooling the mixture (Wardell and Duffy, Abstract, page 6 lines 2-20, Table 1). In this case the Asparagopsis oil and the slow release system each performs the same function as it does separately, the former has anti-methanogenic effects through its bioactive agent bromoform, and the slow release system delays the release of its internal contents. One of skill in the art would have recognized that the results of the combination were predictable: an article that delays the release of the anti-methanogenic agent bromoform into the digestive tract of an animal.
Regarding the applicant’s allegation that De Nys and Magnusson arguably teach away from the sustained release by stating that "an Asparagopsis oil composition as described herein is preferably administered with or immediately before feed", this quote merely teaches the time of administration of the Asparagopsis oil; it does not provide teaching regarding the release of the oil or oil components inside the subject it is administered to.
The applicant alleges that “given that De Nys and Magnusson does not contemplate sustained release of the bromoform, the skilled person would have no understanding or expectation that enriched seaweed extract comprising 60% by weight of bromoform in a bolus article would permit the sustained release of the bromoform at 10 to 200 mg per day for a period of 10 to 100 days in the reticulo rumen”. However, the applicant has not recited evidence that the sustained release recited above is contrary to a release enabled by the prior art, and therefore an unexpected result in view of the prior art.
The applicant has alleged that “The Office has further argued that the skilled person would have added a hydrophobic material to the bolus to control the sustained release of the bromoform as claimed. However, in order to perform the experiment the skilled person would be required to know the result to be achieved namely a bolus "comprising a seaweed extract enriched in bromoform in which the bromoform constitutes at least 60% of the enriched seaweed extract by weight to enable the sustained release of 10 to 200 mg of bromoform per day in the reticulo rumen from the bolus for a period of 10 to 100 days". However, one of skill in the art would not have been required to know the resulting composition as described above to perform the experiment; rather one of skill in the art would be motivated to reduce methane emissions and the frequency of administration of the bolus, and would have a reasonable expectation of success performing experiments using an artificial rumen to optimize the release rate of bromoform for methane reduction along with the duration of the bromoform release (De Nys and Magnusson, page 22 of 67, lines 19-30).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Please note, since the Office does not have the facilities for examining and comparing
Applicants’ composition with the composition of the prior art, the burden is on applicant to show
a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over De Nys and Magnusson (WO 2020113279 A1) in further view of Wardell and Duffy (WO 90/11756) as applied to
claims 1-9 above, and further in view of Wardell and Duffy (WO 90/11756) and ILO-WHO ICSC (ICSC:
0547).
If the applicant wishes to traverse this rejection, then the applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
The rejection of claims 1-10 under 35 U.S.C. 103 is maintained.
Conclusion
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 Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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, Anand Desai can be reached at (571) 272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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