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 .
Status of the Claims
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1-2
Withdrawn claims: None
Previously canceled claims: None
Newly canceled claims: None
Amended claims: None
New claims: None
Claims currently under consideration: 1-2
Currently rejected claims: 1-2
Allowed claims: None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 102
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delamare-Deboutteville et al. (Delamare-Deboutteville, J., Batstone, D. J., Kawasaki, M., Stegman, S., Salini, M., Tabrett, S., ... & Hülsen, T. (2019). Mixed culture purple phototrophic bacteria is an effective fishmeal replacement in aquaculture. Water research X, 4, 100031. https://doi.org/10.1016/j.wroa.2019.100031).
Regarding claim 1, Delamare-Deboutteville discloses an aquaculture feed comprising a crushed product of a marine purple photosynthetic bacterium and having a nitrogen content of 8.0% by mass or more – Diets 2-4 in Table 2 comprise phototropic purple bacteria (PPB), including Rhodopseunomonas sp. and Rhodobacter sp. (p. 2, col. 1, ¶ 2) as partial or full substitutes for fish meal (p. 5, Table 2B; see also p. 3, § 2.2.1). According to the instant specification at paragraphs [0013]-[0014], bacteria belonging to the genus Rhodobacter are marine purple sulfur bacteria, and purple sulfur bacteria are bacteria that perform photosynthesis utilizing near-infrared light to grow in a photoautotrophic manner in the presence of hydrogen, sulfides, and carbon dioxide. Delamare-Deboutteville discloses that the PPB is “processed in a mixer…to produce a fine powder” (p. 3, § 2.1.5), and in preparing the diets, “[e]ach raw material was pre-milled to a fine powder” (p. 3, § 2.2.1). Thus, the feed comprises a crushed product of a marine purple photosynthetic bacterium.
Regarding the nitrogen content of 8.0% by mass or more, Paragraph [0010] of the instant specification provides:
…For aquaculture feeds, the nitrogen content of an aquaculture feed is an index of the protein content of the feed, and higher nitrogen contents tend to indicate higher protein contents.
In an official analysis method such as that in The Guide of the Analysis Manual for STANDARD TABLES OF FOOD COMPOSITION IN JAPAN, crude protein content is estimated from nitrogen content measured in compositional analysis with use of a nitrogen-protein conversion factor. While nitrogen-protein conversion factors have been determined individually for major foods, in most cases a nitrogen- protein conversion factor of 6.25 is used on the assumption that nitrogen accounts for 16% of protein. That is, in most cases, the amount of crude protein may be estimated by calculating the product of a nitrogen content and a conversion factor of 6.25. While the aquaculture feed of the present embodiment has a nitrogen content of 8.0% by mass or more, the amount of crude protein may be estimated to be 50% by mass or more with use of the nitrogen-protein conversion factor of 6.25.
Thus, it can be said that the fact that the nitrogen content of the aquaculture feed of the present embodiment is 8.0% by mass or more means that the protein content of the aquaculture feed is high, even though the protein content is an estimated value.
Likewise, the nitrogen content of the aquaculture feed can be determined by dividing the protein content by the protein conversion factor 6.25. Diets 2-4 of Delamare-Deboutteville have protein contents of 56.2%, 55.5%, and 57.3% by mass, respectively. Dividing each by 6.25 yields nitrogen contents of Diets 2-4 of 8.99%, 8.88%, and 9.17% by mass, respectively. Each diet has a nitrogen content of 8.0% by mass or more as claimed.
Claim 1 is therefore anticipated by the prior art.
Regarding claim 2, Delamare-Deboutteville discloses that the crushed product of a marine purple photosynthetic bacterium has been subjected to drying treatment – Delamare-Deboutteville discloses “the dried biomass was further processed in a mixer…to produce a fine powder” (p. 3, § 2.1.5), and in preparing the diets, “[s]teamed strands were then dried overnight at 65°C” (p. 3, § 2.2.1).
Claim 2 is therefore anticipated by the prior art.
It is noted that the limitation of claim 2 is a product-by-process limitation. Applicant is reminded that “[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). See MPEP § 2113.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/861792 (hereinafter, “the ‘792 application”).
Regarding claim 1, claim 1 of the ‘792 application discloses an agricultural fertilizer comprising a crushed product of a marine purple photosynthetic bacterium and having a nitrogen content of 8.0% by mass or more.
The phrase, “an aquaculture feed” of the instant claim 1 and the phrase “an agricultural fertilizer” of claim 1 of the ‘792 application are intended uses of the product. A statement with regard to intended use is not further limiting insofar as the structure of the product is concerned. In order to patentably distinguish the claimed invention from the prior art, a claimed intended use must result in a structural difference between the claimed invention and the prior art. See MPEP § 2111.02(II). In the present case there is no difference between the structure of the product of the instant claim 1 and claim 1 of the ‘792 application.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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