DETAILED ACTION
Notice of Pre-AIA or AIA Status
This action is in response to the application 18/725,629 filed 6/28/2024 which claims priority to LU501230 01/10/2022.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claims 1, 4, and 11 objected to because of the following informalities:
Recommend rephrasing claim 1, ln 2-4, specifically the following: “wherein the saltwater or brackish water is producible or is produced using a salt composition that contains between 70 mol% and 99.9 mol% sodium chloride (NaCl) and between 0.1 mol% and 30 mol% magnesium chloride (MgCl2).” One possible amendment is: “wherein the saltwater or brackish water comprises a salt composition comprising …”
In claim 4 (throughout): the “-“ should be removed after the word “mol”
Claim 11 should end with a period.
Appropriate correction is required.
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 1-15 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.
For purposes of examination on the merits, the claims, as best understood, are examined in the Action below.
Claim 1 is drafted without a clear transition from preamble to claim body. For purposes of compact prosecution, the Examiner is interpreting this claim as though “brackish water” is ending the preamble and the limitation following “wherein the brackish water” is beginning the claim body. It should further be noted that in Acceleration Bay, LLC v. Activision Blizzard Inc., the Federal Circuit Court determined that: (a) in claims that do not have a transition phrase formally denoting a preamble, terms interpreted by the Examiner as being part of the preamble are not substantive limitations of the claims and should not be afforded patentable weight despite the lack of any transition phrases, and (b) Applicants should avoid such “poor claim drafting” by including a transition word to clearly delineate between the preamble and the body.
The limitation “in each case” in line 4 renders the claim indefinite. There is insufficient antecedent basis for this limitation in the claim. It is unclear which case this limitation refers to.
Claim 1 recites the limitation “the total amount of substance in the salt composition" in line 5 (AND THROUGHOUT THE CLAIMS). There is insufficient antecedent basis for this limitation in the claim. Are the only substances in the salt composition the sodium chloride and magnesium chloride? Does the total substance include the water? Does it include aquatic organisms?
The term “low sulphate content” in claim 1 is a relative term which renders the claim indefinite. The term “low sulfate content” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 9 is indefinite for similar rationale to claim 1.
Throughout the claims: “Aquatic organisms, in particular fish or crustaceans, …” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
*** Throughout the claims: 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). 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.
RE Claim 2: In the present instance, claim 2 recites the broad recitation “contains potassium chloride”, and the claim also recites “preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4.0 mol%, particularly preferably between 1.5 mol% and 2.25 mol%” which is the narrower statement of the range/limitation.
Also, in Claim 2 (and throughout the claims): the phrase "preferably” used throughout the claims renders the claim(s) indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 3 recites the broad recitation “contains calcium chloride”, and the claim also recites “preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4.0 mol%, particularly preferably between 1.5 mol% and 2.25 mol%” which is the narrower statement of the range/limitation.
Claim 4 recites the broad recitation the salt composition contains sodium carbonate , and the claim also recites preferably up to 0.5 mol-% in relation to the total amount of substance in the salt composition, in particular between 0.01 mol-% and 0.15 mol-%, particularly preferably 0.065 mol-%. which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “the salt composition contains sodium bicarbonate”, and the claim also recites “preferably up to 0.5 mol% in relation to the total amount of substance in the salt composition, in particular up to 0.35 mol%, particularly preferably between 0.20 mol% and 0.31 mol%” which is the narrower statement of the range/limitation.
RE Claim 6: Is “a salt composition” (emphasis on “a”) different than the one previously recited in claim 1? Again, what constitutes “the total amount of substance”? The claim recites a broad limitation followed by a narrower limitation. The claim also uses the phrase “preferably” which renders the claim indefinite (previously discussed).
RE Claim 7: Is “a sulphate-free salt composition” (emphasis on “a”) different than that of claim 1? What constitutes “the total amount of substance”? The claim recites a broad limitation followed by a narrower limitation. The claim also uses the phrase “preferably” which renders the claim indefinite (previously discussed).
RE Claim 8: Is “a salt composition” (emphasis on “a”) different than the one previously recited in claim 1? What constitutes “the total amount of substance”? The claim recites a broad limitation followed by a narrower limitation. The claim also uses the phrase “preferably” which renders the claim indefinite (previously discussed).
Claim 10 appears to recite method steps in an apparatus claim. As best understood, the claim requires brackish or saltwater comprising sodium chloride and magnesium chloride.
RE Claim 11: The claim recites a broad limitation followed by a narrower limitation. The claim also uses the phrase “preferably” which renders the claim indefinite (previously discussed).
Claim 12: Claim 1 is not directed to a method, yet the preamble of claim 12 recites “Method for ….according to claim 1” which renders the claim indefinite.
Claim 13: Is claim 14 supposed to be a method of rearing aquatic organisms in brackish or saltwater?
Claim 14 does not appear to limit claim 9.
Claim 10 is not directed to a method, yet claim 15 recites “the method of claim 10” which renders the claim indefinite.
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 1-15, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Axelrod et al. (US 2005/0193956 A1)(hereinafter Axelrod).
RE Claims 1 and 9: Axelrod discloses installation for farming aquatic organisms, in particular fish or crustaceans, which has a rearing tank containing saltwater or brackish water (synthetic ocean salt for simulating ocean environment per abstract),
wherein the saltwater or brackish water is producible or is produced (see note below on product-by-process claims) using a salt composition that contains sodium chloride (NaCl) (abstract, para 0008) and magnesium chloride (MgCl2) (abstract para 0008), in each case in relation to the total amount of substance in the salt composition, characterized in that the salt composition is sulphate-free or has at least a low sulphate content (para 0008) .
RE “contains between 70 mol% and 99.9 mol% sodium chloride (NaCl)” - 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 device of Axelrod such that the salt composition contains between 70 mol% and 99.9 mol% sodium chloride (NaCl), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE “between 0.1 mol% and 30 mol% magnesium chloride (MgCl2)” - 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 device of Axelrod such that the salt composition contains between 0.1 mol% and 30 mol% magnesium chloride (MgCl2), since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE product-by-process claims, please see MPEP 2113 (1) which states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
RE Claim 2: Axelrod as modified discloses a farming installation according to claim 1,
characterized in that the salt composition contains potassium chloride (KCl) (para 0008).
RE “preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4.0 mol%, particularly preferably between 1.5 mol% and 2.25 mol%” - 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 device of Axelrod such that the salt composition contains preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4.0 mol%, particularly preferably between 1.5 mol% and 2.25 mol% since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012)
RE Claim 3: Axelrod as modified discloses farming installation according to claim 1,
characterized in that the salt composition contains calcium chloride (CaCl2) (para 0008).
RE “preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4 mol%, particularly preferably between 0.50 mol% and 2.25 mol %” – 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 device of Axelrod such that the salt composition contains preferably less than 5 mol% in relation to the total amount of substance in the salt composition, in particular between 0.5 mol% and 4 mol%, particularly preferably between 0.50 mol% and 2.25 mol %, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 4: Axelrod as modified discloses farming installation according to claim 1,
Axelrod further teaches characterized in that that the salt composition contains sodium carbonate (Na2CO3) (para 0003).
RE Claim 5: Axelrod as modified discloses the farming installation according to claim 1,
characterized in that the salt composition contains sodium bicarbonate (NaHCO3) (para 0008). RE “preferably up to 0.5 mol% in relation to the total amount of substance in the salt composition, in particular up to 0.35 mol%, particularly preferably between 0.20 mol% and 0.31 mol%” – It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to preferably up to 0.5 mol% in relation to the total amount of substance in the salt composition, in particular up to 0.35 mol%, particularly preferably between 0.20 mol% and 0.31 mol%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 6: Axelrod as modified discloses a farming installation according to claim 1,
characterized in that a salt composition that has a low sulphate content contains magnesium sulphate (MgSO4)(para 0003).
RE Claim 7: Axelrod as modified discloses a farming installation according to claim 1
RE “between 0.1 mol% and 30 mol% magnesium chloride (MgCl2)” - 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 device of Axelrod such that the composition contains between 7.5 mol% and 12 mol% magnesium chloride (MgCl2) in relation to the total amount of substance in the salt composition, preferably between 9.0 and 10.0 mol%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 8: Axelrod as modified discloses a farming installation according to claim 1
RE “characterized in that a salt composition that has a low sulphate content contains between 4.0 mol% and 7.0 mol % magnesium chloride (MgCl2) in relation to the total amount of substance in the salt composition, preferably between 5.0 and 6.0 mol%.” - 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 device of Axelrod such that the composition contains between 4.0 mol% and 7.0 mol % magnesium chloride (MgCl2) in relation to the total amount of substance in the salt composition, preferably between 5.0 and 6.0 mol%”, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 10: Axelrod discloses a brackish water or saltwater for an installation for farming aquatic organisms, in particular fish or crustaceans, which is producible or is produced by a salt composition according to claim 9 (previously discussed)(para 0008, 0012).
RE product-by-process claims, please see MPEP 2113 (1) which states: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
RE Claim 11: Axelrod as modified discloses the brackish water or saltwater according to claim 10 as previously discussed.
RE “characterized in that the salinity of the brackish water or saltwater is between 0.10 % and 5 %, preferably between 2.5 % and 3.5 %” – 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 device of Axelrod such that that the salinity of the brackish water or saltwater is between 0.10 % and 5 %, preferably between 2.5 % and 3.5 %”, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 12: Axelrod discloses the method for producing brackish water or saltwater for an installation for farming aquatic organisms according to claim 1 (previously discussed), characterized in that a salt composition according to claim 9 (previously discussed) is added to fresh water in particular tap water, groundwater or surface water, wherein a salinity of between 1.0% and 5.0% is set.
RE “characterized in that the salinity of the brackish water or saltwater is between 1.0 % and 5.0%” – 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 device of Axelrod such that that the salinity of the brackish water or saltwater is between 1.0 and 5.0%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 13: Axelrod as modified discloses aquatic organism (para 0007-0012), in particular fish or crustacean, which is bred or has been bred in an installation for farming aquatic organisms according to claim 1 (previously discussed), which brackish water or saltwater is producible or is produced with a salt composition according to claim 9 (previously discussed).
RE “characterized in that the salinity of the brackish water or saltwater is between 0.10 % and 5%” – 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 device of Axelrod such that that the salinity of the brackish water or saltwater is between 0.10 % and 5 %, preferably between 2.5 % and 3.5 %”, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges only involve routine skill in the art. See MPEP 2144.05 (II) Routine Optimization citing In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This would be done to This would be done to maintain an environment more preferable or suitable for growth of a particular types of marine organism (para 0012).
RE Claim 14: Axelrod as modified discloses salt composition according to claim 9 for operating an installation for farming aquatic organisms (para 0008-0012).
RE Claim 15: Axelrod as modified discloses the method for producing brackish water or saltwater according to claim 10 (previously discussed) for operating an installation for farming aquatic organisms (para 0007-0012).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
These documents present alternative designs similar in scope which illustrate relevant features in comparison to the Applicant’s submission. The cited prior art include various salt water compositions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA E GRABER whose telephone number is (571)272-4640. The examiner can normally be reached M-F 7:30-5.
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, Timothy D Collins can be reached on 571-272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA E GRABER/Examiner, Art Unit 3644
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