DETAILED ACTION
Notice of Pre-AlA or AIA Status
The present application is being examined under the pre-AlA first to invent provisions.
Election/Restrictions
Applicant’s election of claims 1-3, 6 and 19 in the reply filed on 6/6/2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Therefore, claims 7-18 are withdrawn from further consideration by the Examiner as being drawn to non-elected inventions.
Therefore, the restriction is hereby made FINAL.
Claim Rejections - 35 USC § 103
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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Ruiz (US Patent 2017/0348277-of record) in view of Muscarella (US Patent 2018/036919-of record).
Ruiz teaches that a cannabis extract (THC or CBD) is combined with methylsulfonylmethane (MSM) and heated to 210 0 F which will make it a molten phase, see examples.
Ruiz does not teach that the composition is in powdered form.
Muscarella teaches blended, processed cannabis compounds containing multiple additives including MSM which are used in pills, salves, syrups, powders, drops, and creams, see abstract.
The claims are drawn to a method of making a powdered botanical extract preparation. Thus, what the composition is used for does not matter. As long as the preparation is made as claimed, then the invention is taught by the references. Clearly Ruiz teaches a molten MSM phase as noted above. They add a cannabis extract to it in the form of either THC or CBD which forms a liquid since water and saline solution have been added. Clearly as noted in paragraph 109 of Ruiz, the product can also be employed through delivery via the ears, sublingually and topically which can be in a solid form. Paragraph 108 of Ruiz does in fact teach oral administration. Thus, it clearly would have been obvious to one having ordinary skill in the art to use the composition as a powder since powders can be stored longer and have a longer shelf life. Since Muscarella teaches blended, processed cannabis compounds containing multiple additives including MSM are used in pills, salves, syrups, powders, drops, and creams, then clearly it would have been obvious to one having ordinary skill in the art to use the composition in a form such as a powder making it obvious to process the composition as a powder.
C. Changes in Sequence of Adding Ingredients
Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a
process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Clearly a carrier (water) was added to the cannabis extract (THC or CBD) to form a mixture as clearly seen in the examples of Ruiz.
Applicant argues that allegedly molten MSM phase was not used in Ruiz, but on page 12 of Ruiz, it is made very clear that MSM was melted at 109 0 C- 1200 C, thus making this argument moot and making it very clear that the invention was indeed taught in Ruiz because MSM was definitely made into a molten form.
Next, applicant argues that allegedly a person of ordinary skill in the art would not consider a heated aqueous solution of MSM to correspond to the claimed “molten MSM phase”. This is simply NOT true since page 12 of Ruiz makes it very clear that MSM was melted at 109 0 C- 1200 C, thus making this argument moot.
It is also noted that claim 2 calls for “a liquid cannabis extract” and that the liquid is combined with the molten MSM to form a single phase which is then cooled down to a solid. Cannabis extract (CBD) is clearly combined with MSM as clearly shown in the examples of Ruiz and since it is done at 109 0 C- 1200 C, clearly a molten phase is created, thus applicant’s arguments are moot. Clearly a liquid is taught in Ruiz, see examples.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL V MELLER whose telephone number is (571)272-0967. The examiner can normally be reached M-F 9 am-5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Terry McKelvey can be reached on 571-272-0995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL V. MELLER
Primary Examiner
Art Unit 1655
/MICHAEL V MELLER/Primary Examiner, Art Unit 1655