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/Restrictions
Applicant’s election without traverse of invention group I, claims 1-12, in the reply filed on 05/04/2026 is acknowledged.
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/04/2026.
Claims 1-15 are pending, claims 1-12 are under examination.
Priority
Acknowledge is made that this application is national stage of international patent application PCT/FR2022/051151, filed on 06/15/2022; which claims priority from French Patent Application FR2107438, filed on 07/18/2021.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/03/2024 is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 1-12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation 40 and 250ºC, and the claim also recites “50 and 150ºC” which is the narrower statement of the range/limitation.
In the present instance, claim 1 recites the broad recitation 2 and 15%, and the claim also recites “3 and 8%” which is the narrower statement of the range/limitation.
In the present instance, claim 3 recites the broad recitation 150 and 250 uW/cm2, and the claim also recites 170 and 200 uW/cm2 which is the narrower statement of the range/limitation.
In the present instance, claim 7 recites the broad recitation 1 and 100 centimeters and the claim also recites 5 and 20 centimeters which is the narrower statement of the range/limitation.
In the present instance, claim 10 recites the broad recitation 15 and 35ºC, and the claim also recites “22 and 26ºC” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1 and 6 recite “UVB type and UVA type”. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). MPEP 2173.05 III.E.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Defriez et al. (WO2019229332, English translation relied on equivalent US20210360946) in view of Oonincx et al. (“Evidence of vitamin D synthesis in insects exposed to UVb light”, Sci Rep 8, 10807 (2018); https://doi.org/10.1038/s41598-018-29232-w; cited in IDS)
Determination of the scope and content of the prior art
(MPEP 2141.01)
Defriez et al. teaches a beetle powder including a percentage by weight of vitamin D3 greater than or equal to at least 0.00001% and a percentage by weight of calcium greater than or equal to at least 0.1%, the percentages by weight being given on the total weight of beetle powder, and—on the other, a method for rearing beetles for preparing such a powder, which includes a light treatment phase during which a UV source emits ultraviolet rays towards the beetles (ABSTRCAT). According to the present invention, the method includes a light treatment phase during which an ultraviolet source (or UV source) emits ultraviolet rays towards the beetle larvae ([0039]). This light treatment while rearing the beetles makes it possible, after processing, to obtain a beetle powder rich in vitamin D3. Preferably, the UV source is held in position above the beetle larvae. In a specific embodiment of the present invention, the light treatment phase is applied during the larval stage and/or the nymph stage of the beetles. ([0039-0042]). Advantageously, the ultraviolet rays emitted by the UV source towards the beetle larvae are: UVB type and consist of electromagnetic radiation wherein the wavelength is between 280 nm and 320 nm, and/or UVA type and consist of electromagnetic radiation wherein the wavelength is between 320 nm and 400 nm ([0047-0049]). In a specific embodiment of the present invention, which can be combined with one of the preceding modes above, the UV source is positioned, during the light treatment phase, at a defined distance from the beetle larvae between the order of 2 to 250 cm, preferably between 10 and 100 cm, preferentially between 15 and 50 cm ([0051]). This teaches applicant’s claim 7. In a specific embodiment of the present invention which can be combined with one of the preceding embodiments above, the UV source has a radiation power between 13 and 125 Watts, preferably between 20 and 50 Watts ([0053]). In a specific embodiment of the present invention which can be combined with one of the preceding embodiments above, the UV source emits, during the light treatment phase, the ultraviolet rays towards the beetle larvae according to treatment periods between ten hours and twenty-four hours continuously or cumulatively over a twenty-four hour period ([0055]). This teaches applicant’s claim 8-9. In a specific embodiment of the present invention which can be combined with one of the preceding embodiments above, the beetle larvae are kept in an environment having a substantially constant temperature between 24 and 30° C., preferably between 26 and 28° C. This teaches applicant’s claim 10, This environment temperature range makes it possible to add a UV source without the additional heat from this UV source impacting the survival of the beetle larvae. In a specific embodiment of the present invention which can be combined with one of the preceding embodiments above, the beetle larvae are kept in an environment having a substantially constant hygrometry between 45 and 70% relative humidity, preferably between 55 and 65% ([0058-0059]). This teaches applicant’s claim 11. Advantageously, the temperature and/or hygrometry of the environment of the beetle larvae is/are controlled such that, between the darkness and light treatment phases, the difference in temperatures is less than or equal to 2° C. and/or the difference in hygrometries is less than or equal to 10% relative humidity ([0061]). Preferably, the beetles are selected among the following species: Tenebrio molitor, Alphitobus diaperinus ([0064]). This teaches applicant’s claim 12. After UV treatment, the larvae are placed in water between 85° C. and 100° C. to be killed for 1 to 4 minutes ([0096]). After the killing, the larvae are placed at a temperature between 50 and 150° C. for a duration between 1 h 20 and 24 h according to the temperature use. The larvae obtained contain between 2 and 15% water, more preferentially between 3 and 8% water and a water activity less than 0.7. The reduction into powder is then obtained by grinding ([0098-0099]).
Oonincx et al. teaches Vertebrates obtain the prohormone vitamin D primarily by endogenous cutaneous synthesis under ultraviolet b (UVb) exposure. To date, endogenous synthesis of vitamin D in insects has never been investigated. In an initial experiment, we exposed four insect species which differ in ecology and morphology (migratory locusts, house crickets, yellow mealworms and black soldier fly larvae (BSFL)) to a low irradiance UVb source. In a second experiment we exposed these species to a higher UV irradiance, and in a third we tested the effect of exposure duration on vitamin D concentrations in yellow mealworms. Low irradiance UVb tended to increase vitamin D3 levels in house crickets, vitamin D2 levels in BSFL and vitamin D2 and D3 in yellow mealworms. Higher UVb irradiance increased vitamin D3 levels in all species but BSFL. Both BSFL and migratory locusts had increased vitamin D2 levels. Longer UVb exposure of yellow mealworms increased vitamin D2 and increased vitamin D3 until a plateau was reached at 6400 IU/kg. This study shows that insects can synthesize vitamin D de novo and that the amounts depend on UVb irradiance and exposure duration (abstract). The layer of insect (mealworms) is about 0.5 to 2.0 cm (page 5. Last paragraph). In one experiment, the UVB irradiance is 90.0±5.54 uw/cm2 (page 3. Table 3).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Defriez et al. is that Defriez et al. do not expressly teach irradiance. This deficiency in Defriez et al. is cured by the teachings of Oonincx et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Defriez et al., as suggested by Oonincx et al., and produce the instant invention.
Defriez et al. teaches a method of prepare beetle powder by treating beetle larvae by UVB with wavelength between 280 nm and 320 nm followed by the beetle larvae being killed and are placed at a temperature between 50 and 150° C so the larvae obtained contain between 2 and 15% water and a water activity less than 0.7, and the reduction into powder is then obtained by grinding. Defriez et al. is silent about UVB treatment after killing and heat treatment of beetle larvae, and since selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, it is obvious for one of ordinary skill in the art to have UVB treatment after killing and heat treatment of beetle larvae and produce instant claimed invention with reasonable expectation of success. MPEP 2144.04 IV. C.
One of ordinary skill in the art would have been motivated to have UVB irradiance between 80 and 1000 uW/cm2 because this is optimization through routing experimentation or under prior art condition. MPEP 2144.05. Under guidance from Oonincx et al. teaching UVB irradiance is 90.0±5.54 uw/cm2 for insect treatment, it is obvious for one of ordinary skill in the art to have UVB irradiance between 80 and 1000 uW/cm2 and produce instant claimed invention with reasonable expectation of success.
Regarding claim 3, one of ordinary skill in the art would have been motivated to adjust and have UVB irradiance between 150 and 1000 uW/cm2 because this is optimization routing experimentation, especially in the absence of showing criticality of claimed range. MPEP 2144.05.
Regarding claims 4-5, under guidance from Oonincx et al. teaching layer of insect (mealworms) is about 0.5 to 2.0 cm ( 5 mm to 20 mm), it is obvious for one of ordinary skill in the art to optimize and have larvae with thickness of 1 and 100 mm ( 5 and 15 mm) and produce instant claimed invention with reasonable expectation of success.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12653212. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches killing and dehydrating beetle larvae followed by UVB treatment (claim 16) but silent about irradiance 80-1000 uW/cm2, and it is within skill of one artisan in the art to optimize and have irradiance 80-1000 uW/cm2 through routing experimentation and produce applicant’s claimed invention with reasonable expectation of success.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12310341. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent teaches killing and dehydrating beetle larvae after UVB treatment (claim 16) and also silent about irradiance 80-1000 uW/cm2, and it is within skill of one artisan in the art to optimize and have irradiance 80-1000 uW/cm2 through routing experimentation, and change the order of performing process steps by killing and dehydrating beetle larvae after UVB treatment (MPEP 2144.04 IV. C) and produce applicant’s claimed invention with reasonable expectation of success.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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