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 .
The Amendment filed October 22, 2025 has been entered. Claims 1-3, 9-10, 13, and 15-16 are pending. Claim 1 has been amended. Claim 18 has been canceled.
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 1-3, 9-10, 13, and 15-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites the new limitation “wherein the feed comprises less than 60% protein”, however, the instant specification does not include support for such range. Applicant points to specific examples in the specification, wherein the examples comprise specific protein content, however, the instant specification fails to provide support for the entire range of less than 60% (e.g. 0-60%).
Claims 3, 9-10, 13, and 15-16 are included as they depend from claim 1.
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 1-3, 9-10, 13, and 15-16 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 “60% of protein”, however, it is not clear what unit of measure the percentage represents (e.g. weight percent, volume percent).
Claims 3, 9-10, 13, and 15-16 are included as they depend from claim 1.
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 1-3, 9-10, 13, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Dhert et al. (WO 2022/182248 A1; Sept. 1, 2022, made of record by applicant) in view of Place et al. (US Patent No. 6,261,590 B1; July 17, 2001).
Regarding claims 1-2, Dhert discloses a method for feeding a crustacean of the malacostraca class in hatchery or farm ([0004] and [0053]), the method comprising feeding the crustacean with a feed comprising fatty acids and salts thereof ([0023]).
While Dhert teaches that the feed comprising fatty acid salts, Dhert fails to specifically teach that they are alkali metal salts of fatty acids.
Place discloses a method for feeding a crustacean in hatchery or farm with a feed comprising one or more alkali metal salts of fatty acids (Abstract, col 1 lines 10-15, col 2 lines 10-65). Place teaches that alkali metals, such as sodium and potassium, are suitable counter-ions for the fatty acid in the feed. Place further teaches that alkali metal salts of fatty acids aid in enriching the crustacean to provide a suitable DHA and EPA ratio (col 2).
It would have been obvious to one of ordinary skill in the art to have the feed of Dhert further comprise alkali metal salts of fatty acids as taught by Place. Doing so would predictably provide the feed composition of Dhert with an enrichment component to enrich the crustacean to provide a suitable DHA and EPA ratio as taught by Place. Both Dhert and Place are directed towards the same goal of enriching crustacean in a farm or hatchery and therefore using alkali metal salts of fatty acids in the feed of Dhert would provides the same benefits as taught by Place.
With respect to the feed comprising between 0.5 and 40% by weight of the alkali metal salts of fatty acids, Dhert teaches that the composition can contain 0.5 to 3.5% by weight DHA, which is a fatty acid and falls within the claimed range ([0046]). Dhert also teaches that the composition has less than 30% by weight fat, which is determined by the amount of fatty acids present ([0040]). Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of salts of fatty acids present to achieve a desired fatty acid profile in the feed, which can be adapted to the species of aquatic organism the feed is intended for ([0040]).
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Dhert further teaches that the feed composition, which can include fatty acid salts, increases the survival rate and biomass of the crustacean ([0067]).
With respect to the feed increasing the biomass and survival rate compared with a feed without alkali metal salts of fatty acids, the examiner notes that Dhert fails to specifically teach such limitation, however, the combination of the prior art renders obvious a feed composition comprising the same ingredients as claimed and therefore the feed composition of the prior art would be expected to increase a biomass and survival rate compared to a feed without alkali metal salts of fatty acids. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, the examiner notes that such recitation does not provide any structural difference in the method for feeding or the feed composition itself and is therefore considered intended use as the method for feeding and the feed composition is intended to be used to increase biomass and survival rate. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Again, as the combination of the prior art renders obvious a method of feeding and a feed composition comprising the feeding steps and same ingredients as claimed, the method of the prior art would be capable of increasing a biomass and survival rate compared to a feed without alkali metal salts of fatty acids.
Dhert further teaches that the feed composition can have about 60% by weight protein ([0036]), which overlaps the claimed range of less than 60%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
Further, it is well within the ordinary skill in the art to vary the amount of protein depending on the desired nutrition for the crustacean.
Regarding claim 3, Dhert teaches that the crustacean can be Pacific white shrimp, giant tiger prawn, Kurume shrimp, banana shrimp, or Indian prawn ([0053]).
Regarding claim 9, Dhert teaches that the fatty acids can be derived from vegetable oil ([0041] and [0042]). The examiner notes that the additional limitations are in the alternative form through the use of “or” and are therefore not required as vegetable oil has been met.
Regarding claim 10, Dhert teaches that the feeding is conducted intermittently multiple times a day, such as up to 21 times a day ([0080]).
With respect to the feeding being between 2 to 12 times daily, it would have been obvious to one of ordinary skill in the art to vary the amount of feeding times depending on the amount feed at a single time and the size of the crustacean. If a larger amount is fed at a single time, one of ordinary skill would decrease the number of times fed per day to meet the same nutrient requirements. This is merely routine experimentation that is well within the ordinary skill in the art.
Regarding claim 13, Dhert teaches that the feed is in pellet form ([0001] and [0021]).
Regarding claim 15, Dhert further teaches that at least one fatty acid can be linoleic acid, linolenic acid, DHA, or EPA ([0042]).
Regarding claim 16, Dhert additionally teaches that the feed comprises one or more components selected from protein, carbohydrates, vitamins and minerals ([0018], [0049], [0054], [0057]).
Response to Amendment
The Declaration under 37 CFR 1.132 filed October 22, 2025 is insufficient to overcome the 103 rejection as set forth in the last Office action.
Applicant argues that it would not be expected that a feed comprising high DHA would increase a biomass and survival rate. Applicant has provided references to show that a feed containing high DHA content does not expectedly result in an increase in biomass and survival rate. Applicant states that the examiner’s statement regarding Place is not correct as the references show that high DHA content does not result in increased biomass and survival rate.
This is not found persuasive as Place clearly teaches that the use of alkaline metal salts of fatty acids results in a significantly higher absorption of DHA in the species, which is important for the physiological function, including survival, growth and pigmentations (col 2 lines 1-5). Therefore, it would have been obvious that a feed comprising alkaline metal salts of fatty acids would improve survival and growth of the species as it increases the absorption of DHA, which Place states is mportant for the physiological function, including survival, growth and pigmentations.
Futher, Dhert teaches that the feed composition, which can include fatty acid salts, increases the survival rate and biomass of the crustacean ([0067]).
With respect to the feed increasing the biomass and survival rate compared with a feed without alkali metal salts of fatty acids, the examiner notes that Dhert fails to specifically teach such limitation, however, the combination of the prior art renders obvious a feed composition comprising the same ingredients as claimed and therefore the feed composition of the prior art would be expected to increase a biomass and survival rate compared to a feed without alkali metal salts of fatty acids. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, the examiner notes that such recitation does not provide any structural difference in the method for feeding or the feed composition itself and is therefore considered intended use as the method for feeding and the feed composition is intended to be used to increase biomass and survival rate. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Again, as the combination of the prior art renders obvious a method of feeding and a feed composition comprising the feeding steps and same ingredients as claimed, the method of the prior art would be capable of increasing a biomass and survival rate compared to a feed without alkali metal salts of fatty acids.
For the reasons stated above, the Declaration is not found persuasive.
Response to Arguments
Applicant’s arguments with respect to the 103 rejection have been fully considered but were not found persuasive.
Applicant argues that Dhert fails to teach a composition comprising less than 60% protein.
This is not found persuasive as Dhert teaches that the feed composition can have about 60% by weight protein ([0036]), which overlaps the claimed range of less than 60%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I) Further, it is well within the ordinary skill in the art to vary the amount of protein depending on the desired nutrition for the crustacean. As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
With respect to applicant’s argument that Dhert’s invention relates to the use of feeds comprising charcoal, wherein they perform with higher biomass and survival rate compared to the same feed compositions without charcoal, the examiner notes that the claims are open ended through the use of the transitional phrase “comprising”, which allows for the presence of additional ingredients recited by the prior art.
As stated above in the rejection, Dhert clearly teaches that the feed composition, which can include fatty acid salts, increases the survival rate and biomass of the crustacean ([0067]). While Dhert fails to teach examples using fatty acid salts and only mentions the use of fatty acid salts once, such teaching in Dhert still suggests the use of such component in the feed composition. Place further teaches that fatty acid salts are known in the art to provide enrichment to crustaceans, therefore providing motivation as to why one of ordinary skill would use fatty acid salts in the composition of Dhert.
As stated in MPEP 2123: “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994)
Therefore, as the broad disclosure of Dhert suggests the use of fatty acid salts, and Place provides motivation to use fatty acid salts, the combined teaching of the prior art renders obvious the claimed invention.
Applicant argues that Place discloses that biomass and survival rate do not increase due to a feed to alkaline metal salts of fatty acid compared to other form fats like triglycerides, phospholipids and esters. Applicant then states that Place teaches away from the use of alkaline metal salts of fatty acid for increasing biomass and survival rate as recited by the claims.
This is not found persuasive as Place shows that the average weight did not change significantly after any dietary treatment. Therefore, it cannot be concluded that comparative feeds with other form fats like triglycerides, phospholipids and esters increase biomass and survival rate compared to alkaline metal salts of fatty acid.
Further, the examiner recognizes that Place fails to specifically teach that the use of alkaline metal salts of fatty acids increases biomass and survival rate. However, Place clearly teaches that the use of alkaline metal salts of fatty acids results in a significantly higher absorption of DHA in the species, which is important for the physiological function, including survival, growth and pigmentations (col 2 lines 1-5). Therefore, it would have been obvious that a feed comprising alkaline metal salts of fatty acids would result improve survival and growth of the species as it increases the absorption of DHA.
With respect to the limitation of the feed increasing the biomass and survival rate compared with a feed without alkali metal salts of fatty acids, the examiner notes that Dhert fails to specifically teach such limitation, however, the combination of the prior art renders obvious a feed composition comprising the same ingredients as claimed and therefore the feed composition of the prior art would be expected to increase a biomass and survival rate compared to a feed without alkali metal salts of fatty acids. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, the examiner notes that such recitation does not provide any structural difference in the method for feeding or the feed composition itself and is therefore considered intended use as the method for feeding and the feed composition is intended to be used to increase biomass and survival rate. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Again, as the combination of the prior art renders obvious a method of feeding and a feed composition comprising the feeding steps and same ingredients as claimed, the method of the prior art would be capable of increasing a biomass and survival rate compared to a feed without alkali metal salts of fatty acids.
Finally, Dhert clearly teaches that the feed composition, which can include fatty acid salts, increases the survival rate and biomass of the crustacean ([0067]). Place clearly teaches that the use of alkaline metal salts of fatty acids results in a significantly higher absorption of DHA in the species, which is important for the physiological function, including survival, growth and pigmentations (col 2 lines 1-5). Therefore, it would be expected that a feed comprising alkaline metal salts of fatty acids would result improve survival and growth of the species as it increases the absorption of DHA.
Therefore, as the broad disclosure of Dhert suggests the use of fatty acid salts, and Place provides motivation to use fatty acid salts, the combined teaching of the prior art renders obvious the claimed invention.
For the reasons stated above, the 103 rejection is maintained.
Conclusion
No claims are allowed.
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 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 STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached on (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791