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 .
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, 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.
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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Jari et al. (CN 113453545; published: 9/28/21).
The English language machine translation of CN 113453545 is attached herein. The passages cited below which indicate the teachings of the ‘545 publication are based on its English translation.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Jari is directed to a mouldable composition for manufacturing a fishing bait [Title].
With regards to instant claims 1-2, Jari teaches a moldable composition for the manufacture of fishing bait, comprising: a base solution comprising water, a gelling agent, a plasticizer and at least one crosslinking agent [claim 1]. Jari teaches wherein the gelling agent is gelatin [claim 4], wherein the plasticizer is a sugar alcohol, such as glycerol, sorbitol, mannitol, xylitol or erythrose alcohol [claim 7], wherein the base solution comprises 5-50 wt% gelatin, preferably 10-50 wt% gelatin, more preferably 20-50 wt% gelatin [claim 9], wherein the base solution comprises 15-60 wt% sugar alcohol, preferably 20-60 wt% sugar alcohol, more preferably 30 - 60 wt% sugar alcohol [claim 10], wherein the base solution comprises 5-50 wt % water, preferably 20-50 wt % water, more preferably 20-40 wt % % water [claim 11], wherein the cross-linking agent comprises a polyphenol of plant origin [claim 13], and wherein the moldable composition comprises 1-2 wt% of a crosslinking agent [claim 14].
With regards to instant claim 6, Jari teaches that the bait is directly moulded into a tray forming part of the consumer package and may resemble small fish, worms or other aquatic animals consumed by certain fish [p. 3].
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Jari teaches wherein the base solution comprises 5-50 wt% gelatin, preferably 10-50 wt% gelatin, more preferably 20-50 wt% gelatin [claim 9], Jari does not specifically teach the claimed range of 10-30% by mass of gelatin, as required by instant claim 1.
Jari does not teach a particular embodiment wherein the abovementioned composition further comprises 0.01-10% by mass of a polysaccharide, as required by instant claim 3. However, it is noted that Jari teaches that the gelling agent may be a protein-containing gelling agent or a polysaccharide-containing gelling agent (e.g., pectin and agar) [p. 2]. The preferred gelling agent is gelatin, but other gelling agents may be used alone or in combination with gelatin [p. 2].
Although Jari is silent with regards to the bait composition having no cytotoxicity (via a cytotoxicity test specified in ISO 10993-5:2009), as required by instant claim 4.
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
As indicated in MPEP §2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Based on these teachings of Jari, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the embodiment described above containing a gelatin gelling agent by further incorporating a second gelling agent such as pectin or agar to achieve the predictable result of obtaining a composition suitable for providing a fishing bait. One of ordinary skill in the art would have been motivated to do so because Jari teaches that other gelling agents such as the polysaccharide-containing components (e.g., agar or pectin) may be used in combination with gelatin [p. 2].
The amount of each gelling agent (e.g., agar or pectin) is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and would reasonably expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each gelling agent in order to best achieve the desired results as such would provide advantageous product form (i.e., in the form of a gel). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Where 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, 105 USPQ 233 (CCPA 1955). In the instant case, one of ordinary skill in the art understands that when an effective amount of a gelling agent is an aqueous suspension, a gel is formed, as such is the basic property of a gelling agent. The Examiner considers it prima facie obvious to optimize the amounts of any biologically active agent to achieve their known biological effect, absent unexpectedly superior properties of the claimed invention. In the instant case, one of ordinary skill in the art would have recognized that the amounts of each gelling agent would impact the formation of gelled fishing bait and therefore be an optimizable variable.
However, the invention as claimed is not structurally distinguishable from the disclosure of Jari and it is therefore, the Examiner's position that cytotoxicity is an inherent property of the invention taught by Jari. Since the Patent and Trademark Office does not have the facilities for examining and comparing the claimed composition with the composition of Jari, the burden of proof is upon the Applicants to show an unobvious distinction between the structural and functional characteristics of the claimed composition and that of the prior art. See In re Best, 562 F.2d 1252, 195 U.S.P.Q. 430 (CCPA 197) and Ex parte Gray, USPQ 2d 1922 (PTO Bd. Pat. App. & Int.).
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 would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jari et al. (CN 113453545; published: 9/28/21) as applied to claims 1-4 and 6 above, and further in view of Savage (WO 2021/217208; published: 11/4/21).
The English language machine translation of CN 113453545 is attached herein. The passages cited below which indicate the teachings of the ‘545 publication are based on its English translation.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Jari teaches the limitations of instant claims 1-4 and 6 (see above rejection).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Jari teaches a fishing lure or fish bait that is moldable; i.e., can be molded by pouring into a mold and is allowed to stand until the moldable composition cures [p. 3], Jari does not specifically teach wherein the bait is formed into a block-like shape, a grain-like shape or a pellet-like shape, as required by instant claim 5. However, such deficiency is cured by Savage.
Savage is directed to marine fishery trap baits and deterrents [Title].
Savage teaches that bait blocks can be places in bait baskets or lobster pots. Savage teaches that the moulds create the final block shape and dimensions are desired which benefits, for example, storage, placement and to fit within a bait holder of a trap [0080].
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Jari and Savage are both directed to fish bait products. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the shape of Jari’s fish bait with the block shape taught by Savage to achieve the predictable result of obtaining a composition suitable for baiting fish. One of ordinary skill in the art would have been motivated to do so because Savage teach that it is advantageous for storage, placement and to fit within a baith holder of a trap [0080].
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 would have been prima facie obvious to one of ordinary skill before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617
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