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 .
Applicants' arguments, filed 07/29/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 15-18 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barnett et al (J of Nutrition, American Society for Nutrition, V 112, no 11, 1982, pp 2020-2026).
Applicants assert the claimed invention is directed to the administration of 25-hydroxyvitamin D3 in specific concentrations in feed for aquatic animals in order to provide unexpected benefits and that none of the cited references disclose the combination of feature or attributes. Applicants also assert there is no motivation to select hydroxy vitamin D3 instead of standard vitamin D.
Examiner disagrees. It is unclear how these arguments relate to the composition claims. Contrary to Applicant’s assertion, the claims rejected under anticipatory grounds directed to a composition, where the composition comprises 25-hydroxyvitamin D3 as an active ingredient (claim 1) and an oil (claim 4). The intended use language is not limiting, any composition comprising only hydroxyvitamin D can be used for aquatic animals. And as previously noted, while the final feed content is intended to be 150µg to 1000µg per kg feed, this is an intended use of the base composition. The claims are not actually directed to the end feed having the desired content. The language of the claim is the claim is directed to a composition, but the ”concentration of the active ingredient in the final feed added to the animal is in the range from …”. As the claim is not directed to a final feed, any amount appears to meet this limitation where the skilled artisan can simply adjust the amount added to the final feed to meet the desired concentration.
Claims 1-7 and 11-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aebi et al (WO2014/173862).
Aebi et al discloses administering 1.75µg/kg body weight of 1,25 hydroxyvitamin D3 to brown trout via tablets and feed (pg 9, experiment no 1) in order to improve mineral absorption in fishes (pg 2 lines 9-12). The
Claim Rejections - 35 USC § 103
Claims 1-8 and 11-18 stand rejected under 35 U.S.C. 103 as being unpatentable over Barnett et al (J of Nutrition, American Society for Nutrition, V 112, no 11, 1982, pp 2020-2026), in view of Leatherland et al (Env Biol Fish, Vol 5, no 2, pp 167-173, 1980).
Applicant’s arguments appear to be the same for both rejections.
Examiner disagrees with the arguments for this rejection as well. While Applicants point out various treatment benefits, Examiner notes Barnett et al specifically teaches supplement of hydroxyvitamin D3 as a component of fish feed. As such, the improvements would be inherent when the active is administered. In other words, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. MPEP 2112(I). Indeed, there is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112(II).
It could be argued that the concentration of active is critical to get the desired effects instantly asserted, but there is no evidence that the composition made obvious would not provide the same benefits. This is especially true where the administered composition is a fish food, which would not reasonably be expected to have a consistent administration dosage per fish. Examiner also notes that the only claim limitations with concentrations are the intended use of the composition of instant claim 1, discussed above.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 07/29/26 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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