`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATIONNO.
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`14/490,176
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`09/18/2014
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`Inge Bruheim
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`AKBM-14409/US-8/CON
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`3471
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`7s
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`Casimir Jones, 8.
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`2275 DEMING WAY,SUITE 310
`MIDDLETON,WI 53562
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`[ese
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`EXAMINER
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`WARE, DEBORAH K
`ART UNIT
`PAPER NUMBER
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`1651
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`MAIL DATE
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`10/27/2014
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`14/490,176
`BRUHEIM ETAL.
`
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventorto File)
`
`
`1651DEBBIE K. WARE Na
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply betimely filed
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`Status
`1)L] Responsive to communication(s) filed on
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
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`___} the restriction requirement and election have been incorporated into this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`
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`Disposition of Claims*
`5)KX] Claim(s) 1-30 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-30is/are rejected.
`8)L] Claim(s)____is/are objectedto.
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`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`nit Jwwwuspto.dov/patents/init_ events/poh/index.iso
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`or send an inquiry to PPHieedback@uspto.aoy.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`
`11)] The drawing(s)filed on
`is/are: a)L_] accepted or b)X] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20141015
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`

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`Application/Control Number: 14/490,176
`Art Unit: 1651
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`Page 2
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`DETAILED ACTION
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`Claims 1-30 are pending.
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`The present application is being examined underthe pre-AlA first to invent
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`provisions.
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`Claim Rejections - 35 USC § 112
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`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.
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`The following is a quotation of 35 U.S.C. 112 (pre-AlA), 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.
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`Claims 1-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AlA the
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`applicant regards as the invention.
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`Claim s 1-30 recite the limitation "the composition" in each of the independent
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`claims 1, 13 and 24 at line 7, respectively. There is insufficient antecedent basis for this
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`limitation in the claims.
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`In addition, claims 2, 14 and 24 each recite “wherein steps a
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`and b” which lacks antecedent basis in the claims. All dependent claims are rejected for
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`reciting the same language bytheir dependency on independent claimed subject
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`matter.
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`Double Patenting
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`Claims 13-30 are objected to under 37 CFR 1.75 as being substantial duplicates
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`of claims 1-12. When two claimsin an application are duplicates or else are so close in
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`

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`Application/Control Number: 14/490,176
`Art Unit: 1651
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`Page 3
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`content that they both cover the same thing, despite a slight difference in wording, it is
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`properafter allowing one claim to object to the other as being a substantial duplicate of
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`the allowed claim. See MPEP § 706.03(k). The claims are substantially identical
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`having only a different wording in terms of their scope. Claims 1 and 13 are almost
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`identical other thankrill is recited as "fresh krill" in claim 13 but claim 1 does not omit
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`fresh krill so claim 1
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`is only stated in slightly different wording. Claim 24 recites some of
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`the dependentsteps of claims 1 and 13 but upon reading these dependentclaimsof
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`claims 1 and 13, the claims have the same steps or substantially similar steps.
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`Examiner can appreciate a different scope may be argued but she believe the claims to
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`only be comprised of the same subject matter but having a slightly different wording.
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`However, she will reconsider this objection based upon Applicants’ reasoning if they so
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`believe that the claims are different from each other. The claims are certainly obvious
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`variations of each other.
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine groundedin public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate wherethe claims at issue are notidentical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`Application/Control Number: 14/490,176
`Art Unit: 1651
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`Page 4
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321 (d)
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`may be used to overcome an actualor provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly ownedwith this application, or claims an invention made asa result of
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer mustbe signed in compliance with 37 CFR 1.321 (b).
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`The USPTOinternet Website contains terminal disclaimer forms which may be
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`used. Pleasevisit http:/Awww.uspto.gov/forms/. Thefiling date of the application will
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`determine what form should be used. A web-based eTerminal Disclaimer maybefilled
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`out completely online using web-screens. An eTerminal Disclaimer that meetsall
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`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-|.jsp.
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`Claims 1-30 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 50, 52-53, 56-57 and 60-61 of copending
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`Application No. 12/057,775. Although the claims at issue are notidentical, they are not
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`patentably distinct from each other becausethe only difference between the copending
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`claims is a matter of scope.
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`Application/Control Number: 14/490,176
`Art Unit: 1651
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`Page 5
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claims are drawn to producing krill oil and both methodsof the instant and
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`copending invention require the same steps butin a different scope and terminology of
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`the claim subject matter. However, it would have been an obvious modification of the
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`cited prior art to provide for heat such asin cooking the krill to denature enzymeslike
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`lipases to obtain and extract the oil with a solvent as required by both sets of claims of
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`the instant and copending subject matter. The claims of the instant case are made
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`obvious by the copending subject matter because essentially the same steps are
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`required and obtain the same expected successful result. A terminal disclaimeris
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`required becausethe instant claims are prima facie obvious over the copending claims.
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`Claims are renderedfree of the prior art.
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`No claims are allowed.
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to DEBBIE K. WARE whosetelephone number is
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`(571)272-0924. The examiner can normally be reached on 9:30-6:00.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Mike Wityshyn can be reached on 571-272-0926. The fax phone number
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`for the organization wherethis application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 14/490,176
`Art Unit: 1651
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`Page 6
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on accessto the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automatedinformation
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`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
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`/Deborah K. Ware/
`Deborah K. Ware
`Primary Examiner
`Art Unit 1651
`
`