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 and response filed on August 03, 20206 are received.
Claims 1-20 are pending in this application, claims 9-20 are withdrawn from further consideration (Also see Restriction/Election below), and claims 1-8 are being examined.
Restriction/Election:
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on 08/0/2026 is acknowledged. The traversal is on the ground(s) that
“Applicant submits that the identified claim groups do not require different fields of search and therefore examining them together would not present a serious burden on the Examiner. In view of the foregoing, Applicant respectfully requests withdrawal of the restriction requirement”.
This is not found persuasive because the restriction requirement is not based on that groups do not require different fields of search, but unity of invention is the basis for the restriction requirement.
In addition, unity of invention among the Groups of invention is lacking because the technical feature is not a special technical feature as it does not make a contribution over the prior art cited below (See b102/103 and 103 rejections below).
The requirement is still deemed proper and is therefore made FINAL.
Rejoinder will be considered when claims are in condition for allowance.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions (Groups I and II), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/03/2026.
Claim Rejection - 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 1-8 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.
In claim 8, the recitation “at least one microbial consortium derived from the digestive tract of herbivorous fish“ is indefinite because the “at least one microbial consortium derived from the digestive tract of herbivorous fish“ being claimed is not defined. Alos, there is no special definition for the [fermenting] microbial consortium in the specification. As such the scope of the claimed composition is not clearly set forth
It should be noted that there are numerous species of herbivorous fish families, and a diverse microbiota occurs in the digestive tracts of the numerous species of herbivorous fish, thus the broadest reasonable interpretation in light of the specification cannot be established for these claims.
Claim Rejection - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Suraiya et al. (Food Bioscience, Volume 21, 2018, p. 90-99).
Regarding claim 1, Suraiya et al. disclose a feed composition comprising fermented macroalgae wherein the fermented macroalgae are fermented in a container comprising a solution comprising at least one microbial consortium derived from the digestive tract of herbivorous fish (brown seaweeds/macroalgae Saccharina japonica and Undaria pinnatifida were fermented in a flask by the red molds; Monascus purpureus and Monascus kaoliang to increase their bio-functional properties producing seaweed-based products, food and therapeutic diets, etc.) (See for example, p. 91 right-hand column paragraphs 2.2., and p. 98 left-hand column paragraph 5.).
Regarding claim 3, Suraiya et al. disclose the fermented macroalgae are selected from the group consisting of Rhodophyta, Phaeophyta or Chlorophyta macroalgae (brown seaweed/macroalgae Saccharina japonica) (See for example, p. 91 right-hand column paragraphs 2.2.).
It should be noted that although Suraiya et al. do explicitly disclose/taught the microbial consortium is derived from the digestive tract of herbivorous fish however the microbial consortium of Suraiya et al. appears to be the same as the claimed microbial consortium. Thus, Suraiya et al. anticipate the claimed composition.
In alternative
Regarding claim 1, Suraiya et al. disclose/teach a feed composition comprising fermented macroalgae wherein the fermented macroalgae are fermented in a container comprising a solution comprising at least one microbial consortium derived from the digestive tract of herbivorous fish (brown seaweeds/macroalgae Saccharina japonica and Undaria pinnatifida were fermented in a flask by the red molds; Monascus purpureus and Monascus kaoliang to increase their bio-functional properties producing seaweed-based products, food and therapeutic diets, etc.) (See for example, p. 91 right-hand column paragraphs 2.2., and p. 98 left-hand column paragraph 5.).
Regarding claim 3, Suraiya et al. disclose/teach the fermented macroalgae are selected from the group consisting of Rhodophyta, Phaeophyta or Chlorophyta macroalgae (brown seaweed/macroalgae Saccharina japonica) (See for example, p. 91 right-hand column paragraphs 2.2.).
It should be noted that claims are product-by-process claims, and even though Suraiya et al. do not teach the microbial consortium is derived from the digestive tract of herbivorous fish, however the microbial consortium of Suraiya et al. appears to be the same or similar as the claimed microbial consortium. Therefore, Suraiya et al. make obvious the claimed composition.
Claim Rejection - 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 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.
Claim 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Suraiya et al. (Food Bioscience, Volume 21, 2018, p. 90-99) in view of Fidopiastis et al. (Marine Biology , 2006, Vol. 148, p. 631–642) and Halldorsdottir et al. (US 2015/0274791 A1) and McDermid et al. (Journal of Applied Phycology, 2003, Vol. 15, p. 513–524) and Cattuzzato et al. (US 20180117106 A1).
Regarding claim 1, Suraiya et al. teach a feed composition comprising fermented macroalgae wherein the fermented macroalgae are fermented in a container comprising a solution comprising at least one microbial consortium (brown seaweeds/macroalgae Saccharina japonica and Undaria pinnatifida were fermented in a flask by the red molds; Monascus purpureus and Monascus kaoliang to increase their bio-functional properties producing seaweed-based products) (See for example, p. 91 right-hand column paragraphs 2.2., and p. 98 left-hand column paragraph 5.).
Regarding claim 3, Suraiya et al. teach the fermented macroalgae are selected from the group consisting of Rhodophyta, Phaeophyta or Chlorophyta macroalgae (brown seaweed/macroalgae Saccharina japonica) (See for example, p. 91 right-hand column paragraphs 2.2.).
It should be noted that claims are “product-by-process” claims, and even though Suraiya et al. do not teach the microbial consortium is derived from the digestive tract of herbivorous fish, however the microbial consortium of Suraiya et al. appears to be the same or similar as the claimed microbial consortium.
Moreover, before the effective filing date of the invention Fidopiastis et al. teach that microbial consortium (microbiota) of the digestive tract of one herbivorous fish (the Kyphosidae includes the zebraperch Hermosilla azurea a strictly herbivorous fish species that occurs in warm temperate waters of the northeastern Pacific, zebraperch gut houses fermentative microbial consortium capable of fermenting algal polysaccharides thus aiding digestive process, for example, species of Bacteroides produce variety of glucosidases that degrade polysaccharide of brown algae, and gut microbiota provide the fish nutrition obtained from algal diets, etc.) (See for example, p. 631 Introduction 1st paragraph, p. 632 right -hand column 3rd paragraph, p. 640 right-hand column 2nd paragraph below figure 4, and p. 641 left-hand column 3rd paragraph). However, because the microbial consortium in the claim is not clearly defined using at least one microbial consortium derived from the digestive tract of herbivorous fish would have been obvious. Because Fidopiastis et al. teach fermentative microbial consortium of one herbivorous fish ferment algal polysaccharides and aid in digestive process.
Suraiya et al. do not teach the fermented macroalgae comprise up to 10 percent w/w of the feed composition (claim 2), macroalgae is Agardhiella subulate (claim 4), macroalgae is Halymenia hawaiiana (claim 5), macroalgae is Sargassum sp. (claim 6), macroalgae is Ulva sp. (claim 7), and fermented macroalgae is Macrocystis sp. (claim 8).
However, regarding claim 2, the amount of fermented macroalgae in the food/feed composition taught by Suraiya et al. would have been optimized based on the intended use.
Also, regarding the macroalgae of claims 6-8, , before the effective filing date of the invention Halldorsdottir et al. teach seaweeds species, macroalgae Sargassum sp., Ulva sp., and Macrocystis sp. (See for example, p. 3 right-hand column [0033]-Continued) to produce food and feed composition (See for example, p. 1 paragraph [0001]), regarding the macroalgae of claim 5, McDermid et al. teach macroalgae Halymenia hawaiiana to produce food and feed composition (See for example, p. 514 right-hand column 2nd paragraph, and p. 515 Table 1 listing Hawaiian edible seaweed including Halymenia hawaiiana a.k.a. Halymenia formosa or Hina), and regarding the macroalgae of claim 4, Cattuzzato et al. teach macroalgae Agardhiella subulate to produce food and feed composition (See paragraphs [0026] and [0024]). Therefore, substituting one macroalgae for another known macroalgae known to be used to produce food and feed compositions in the composition taught by prior art would have been obvious.
Conclusion(s):
No claim(s) is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KADE ARIANI whose telephone number is (571)272-6083. The examiner can normally be reached IFP, Monday - Friday, 8:00 AM -4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie L. Gordon can be reached at (571)272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KADE ARIANI/Primary Examiner, Art Unit 1651
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