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 Claims
The amendments and arguments filed 4 February 2026 are acknowledged and have been fully considered. Claims 1-22 are currently pending. Claims 3-4, 7-8, and 10 are amended; no claims are cancelled; claims 9, 11-13, 15-17, 19, and 21 are withdrawn; no claims are new.
Claims 1-8, 10, 14, 18, 20, and 22 are examined on the merits herein.
Response to Arguments
Applicant’s arguments, see the Remarks at pg. 5, filed 4 February 2026, with respect to the rejection of claims under 35 U.S.C. 112(a) have been fully considered and are persuasive. The rejection of claims 3-4, 7-8, and 10 under 35 U.S.C. 112(a) has been withdrawn.
Applicant’s arguments, see the Remarks at pgs. 6-7 and the Declaration at pgs. 2-5, filed 4 February 2026, with respect to the rejection of claims under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of claims 1-8, 10, 14, 18, 20, and 22 has been withdrawn.
Allowable Subject Matter
Claims 1-8, 10, 14, and 18 have been found to contain written support, are enable, and free of the art, but stand rejected on the basis of nonstatutory double patenting as discussed below.
Claims 20 and 22 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.
Election/Restrictions
As no generic claim has been found allowable, claims 9, 11-13, 15-17, 19, and 21 are not yet eligible for rejoinder.
Examiner notes that should instant claims 9 and 11-12 be rejoined, they would be rejected under 35 U.S.C. 112(a) for the reasons applied to claims 3-4 and 7-8 as discussed in the Non-Final Action mailed 18 November 2025. As such, Examiner recommends that claims 9 and 11-12 be amended in a similar manner to instant claims 3-4 and 7-8.
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.
Claims 1-8, 10, 14, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,054,692 in view of Turk et al. (LWT Food Science and Technology, 2017, Vol. 84, 626-633; of record).
Claim 1 of Patent No. ‘692 recites a method to obtain an extract from plant biomass comprising:
obtaining the plant biomass;
placing the plant biomass onto a conveyor belt, having a length, and introducing the plant biomass into a vessel having a length by moving the conveyer belt at a first velocity, wherein the plant biomass is introduced into the vessel at a rate; and wherein the temperature of the inside of the vessel is from 40 to 100 degrees Celsius;
subjecting the plant biomass to microwave energy, of a first intensity, for a time sufficient to heat the plant biomass to a temperature to vaporize water within the plant biomass, thereby producing a distillate, wherein the first intensity of the microwave energy is from 0.2 KWH/Kg biomass to 0.6 KWH/Kg biomass, wherein the temperature of the inside of the vessel is maintained between 40 and 100 degrees Celsius; and
collecting the distillate,
rendering obvious the process for obtaining the extract recited in instant claim 1.
Patent No. ‘692 does not disclose the extract comprising at least one anthocyanin or the biomass comprising strawberries. However, Turk et al. teach microwave assisted extraction of strawberry biomass. Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Patent No. ‘692 by using strawberries as the biomass as taught by Turk et al. It would have been obvious to substitute one biomass suitable for microwave extraction for another to obtain the predictable result of a strawberry biomass, with a reasonable expectation of success. As evidenced by the instant specification, application of the method of Patent No. ‘692 to strawberry biomass would result in the instantly claimed extract.
As such, claim 1 of Patent No. ‘692 in view of Turk et al. renders instant claims 1-8, 10, 14, and 18 obvious.
Claims 1-8, 10, 14, and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/747,164 in view of Turk et al. (LWT Food Science and Technology, 2017, Vol. 84, 626-633; of record).
Claim 1 of Application No. ‘164 recites an extract, wherein the extract is obtained by a method, wherein the method obtains an extract from plant biomass, wherein the method comprises the steps of:
obtaining the plant biomass;
placing the plant biomass onto a conveyor belt, having a length, and introducing the plant biomass into a vessel having a length, via the conveyor belt, wherein the plant biomass is introduced by moving the conveyer belt at a first velocity, wherein the plant biomass is introduced into the vessel at a rate;
subjecting the plant biomass to microwave energy, of a first intensity, for a time sufficient to heat the plant biomass to a temperature to vaporize water within the plant biomass, thereby producing a distillate; and
collecting the distillate,
rendering obvious the process for obtaining the extract recited in instant claim 1.
Application ‘164 does not disclose the extract comprising at least one anthocyanin or the biomass comprising strawberries. However, Turk et al. each microwave assisted extraction of strawberry biomass. Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Application ‘164 by using strawberries as the biomass as taught by Turk et al. It would have been obvious to substitute one biomass suitable for microwave extraction for another to obtain the predictable result of a strawberry biomass, with a reasonable expectation of success. As evidenced by the instant specification, application of the method of Application ‘164 to strawberry biomass would result in the instantly claimed extract.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 4 February 2026 regarding the nonstatutory double patenting rejections have been fully considered but they are not persuasive.
Applicant argues on pgs. 6-7 of the remarks that the instantly claimed extract obtained by continuous microwave assisted extraction method provides the unexpected result of an improved organoleptic profile.
This argument of unexpected results is not persuasive as both Patent No. 12,054,692 and copending Application No. 8/747,164 recite a continuous microwave assisted extraction method identical to the instantly claimed method.
Conclusion
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 Paul Hoerner whose telephone number is (571)270-0259. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/ Examiner, Art Unit 1611
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