Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
3. 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.
Claims 1-2 and 13-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8 and 11 of U.S. Patent No. 11,291,213. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8 and 11 of the ‘213 patent are substantially similar to claims 1-2 and 13-14 of the present application.
Claim Rejections - 35 USC § 112
4. 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 2, 4 and 7 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.
Claim 2 is 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. Claim 2 lacks antecedent basis for the fish bleeding treatment method in line 1 of claim 2.
Claim Rejections - 35 USC § 102
5. 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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 13-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP Patent No. 2004-81048 to Yamaoka et al.
Referring to claim 1, Yamaoka et al. discloses a fish bleeding treatment method comprising, an insertion step of inserting a tubular instrument – see paragraphs [0013]-[0017] of the English translation, which is a member in a tubular shape – see paragraphs [0013]-[0017] of the English translation, into a circulatory system of a fish – see paragraphs [0013]-[0017] of the English translation, and a gas press injection step of injecting gas for freshness preservation into the circulatory system of the fish through the tubular instrument inserted in the insertion step – see paragraphs [0013]-[0017] of the English translation detailing introduction of CO gas at a temperature that would providing freshness preservation.
Referring to claim 2, Yamaoka et al. discloses a fish bleeding treatment method comprising, an insertion step of inserting a tubular instrument, which is a member in a tubular shape, into a circulatory system of a fish – see paragraphs [0013]-[0017] of the English translation, a liquid press injection step of injecting an injection liquid into the circulatory system of the fish through the tubular instrument inserted in the insertion step – see paragraphs [0013]-[0017] of the English translation, and a gas press injection step of injecting gas for freshness preservation into the circulatory system of the fish through the tubular instrument inserted in the insertion step after the liquid press injection step – see paragraphs [0013]-[0017] of the English translation detailing introduction of CO gas at a temperature that would providing freshness preservation, and detailing controlling the introduction of gas.
Referring to claim 13, Yamaoka et al. discloses a production method for a fish of which blood is drained by a fish bleeding treatment, wherein the fish bleeding treatment comprises, an insertion step of inserting a tubular instrument, which is a member in a tubular shape, into a circulatory system of the fish – see paragraphs [0013]-[0017] of the English translation, and a gas press injection step of injecting gas for freshness preservation into the circulatory system of the fish through the tubular instrument inserted in the insertion step – see paragraphs [0013]-[0017] of the English translation detailing introduction of CO gas at a temperature that would providing freshness preservation.
Referring to claim 14, Yamaoka et al. discloses a production method for a fish of which blood is drained by a fish bleeding treatment, wherein the fish bleeding treatment comprises, an insertion step of inserting a tubular instrument, which is a member in a tubular shape, into a circulatory system of the fish – see paragraphs [0013]-[0017] of the English translation, a liquid press injection step of injecting an injection liquid into the circulatory system of the fish through the tubular instrument inserted in the insertion step – see paragraphs [0013]-[0017] of the English translation, and a gas press injection step of injecting gas for freshness preservation into the circulatory system of the fish through the tubular instrument inserted in the insertion step after the liquid press injection step – see paragraphs [0013]-[0017] of the English translation detailing introduction of CO gas at a temperature that would providing freshness preservation, and detailing controlling the introduction of gas.
Claim Rejections - 35 USC § 103
6. 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.
Claim(s) 3-5 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka et al. as applied to claims 1, 2, 13 or 14 above.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka et al. as applied to claims 1 or 2 above.
Referring to claims 3 and 4, Yamaoka et al. does not disclose the gas for freshness preservation is hydrogen gas. However, it would have been obvious to one of ordinary skill in the art to take the method of Yamaoka et al. and use any suitable gas in processing the fish including the hydrogen gas as claimed, so as to yield the predictable result of allowing for the fish to be better prepared for further processing as desired.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka et al. as applied to claim 1 above.
Referring to claim 5, Yamaoka et al. does not disclose the injecting gas used in the gas press injection step is supplied at a supply pressure that ranges from 0.05 to 0.2MPa into the circulatory system of the fish. However, it would have been obvious to one of ordinary skill in the art to take the method of Yamaoka et al. and have the gas injected at any suitable pressure including the claimed pressures, so as to yield the predictable result of ensuring sufficient gas is supplied to the fish during processing as desired.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka et al. as applied to claims 13 or 14 above.
Referring to claims 15 and 16, Yamaoka et al. does not disclose the gas for freshness preservation is hydrogen gas. However, it would have been obvious to one of ordinary skill in the art to take the method of Yamaoka et al. and use any suitable gas in processing the fish including the hydrogen gas as claimed, so as to yield the predictable result of allowing for the fish to be better prepared for further processing as desired.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamaoka et al.
Allowable Subject Matter
7. Claims 6-12 and 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following patents are cited to further show the state of the art with respect to fish processing methods in general:
U.S. Pub. No. 2005/0226959 to Sakurai – shows fish processing method
U.S. Pat. No. 8,739,736 to Holliman – shows fish processing method
JP Pat. No. 2010-104356 to Sakurai et al. – shows fish processing method
JP Pat. No. 2019-122292 to Fukada et al. – shows fish processing method
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J PARSLEY whose telephone number is (571)272-6890. The examiner can normally be reached Monday-Friday, 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached at (571) 272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J PARSLEY/Primary Examiner, Art Unit 3643
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