DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed June 22, 2026 has been received and entered. The text of those sections of Title 35, U.S. Code, not included in this action can be found in a prior Office action. Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.
3. Claims 1, 3, 4, 8, 11-17, and 22-26 are pending.
Election/Restrictions
4. In the reply filed on July 31, 2024, applicant elected Group I, now claims 1, 3-6, 11-17, and 20-26, chili for species A and sunflower oil for species B without traverse.
5. Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
6. Claims 1, 3, 4, 11-17, and 22-26 are examined on the merits in regards to the elected species.
Claim Rejections - 35 USC § 103
7. Claim(s) 1, 3, 4, 11-17, and 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 103749743 A – English translation submitted by applicant in the IDS of June 6, 2025) in view of prior art admitted by applicant in the specification for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues:
A fundamental distinction between the presently claimed invention and Li resides in the role played by glycerol monolaurate (GML). In the present invention, GML is used as a solvent for extracting a biologically active compound from a vegetal matrix. As recited in claim 1, the biologically active compound is extracted in a solvent comprising glycerol monolaurate. Thus, GML actively participates in the extraction process and serves as the extraction medium.
In contrast, Li does not use GML as an extraction solvent. Rather, Li expressly discloses that the spice oil is first obtained by extraction, specifically by "adding supercritical extracted spice oil" (see [0012]). Only after the spice oil has already been extracted does Li add the monoglyceride fatty acid ester, glyceryl oleate, or glycerin (see [0012]). Accordingly, the extraction step of Li is completed before the addition of the monoglyceride component. The monoglyceride therefore plays no role in the extraction of compounds from the vegetal material.
Moreover, Li teaches that the monoglyceride component functions as an emulsifier (see [0015]). Thus, Li employs the monoglyceride as a food additive for emulsification purposes rather than as an extraction solvent. Because GML is absent during extraction in Li, Li cannot provide the advantages associated with the use of GML as an extraction solvent. As explained in paragraph [0044] of the present application, GML exhibits excellent extraction capabilities, particularly with respect to capsaicinoids, while also providing a favorable toxicological profile. These benefits arise from the use of GML during the extraction process itself and are therefore not obtainable in the process of Li, where the GML-containing component is added only after extraction has been completed.
In response to applicant's argument that Li does not specifically teach that the GML acts as an extraction solvent, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant’s claims require the mixture of a vegetal matrix with GML. The claims specifically state that this mixing allows for the extraction of the active components from the vegetal matrix where the extraction, solubilizing, and formulating are performed at the same time. Li performs this same step. The extraction of any active components as claimed by applicant should occur on this mixing if the invention functions as claimed.
Applicant also argues that Li does not suggest extraction at a temperature above 63°C. Applicant argues “Example 9, the effect of temperature on extraction performance was specifically investigated. The results demonstrate that temperature has a statistically significant impact on extraction. For the totum, the reported F-ratio is 14.1 and the associated p-value is 0.0038. These values establish that temperature is a highly influential parameter and that its effect is statistically significant. The application therefore demonstrates that temperature is not an arbitrary optimization variable but rather a critical process parameter directly affecting extraction performance.”
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). As discussed in the previous Office action, Li does not specifically teach heating the glycerol monolaurate or the mixture of the glycerol monolaurate and chili oil resin to a temperature above 63°C. However, the reference does teach that the glycerol monolaurate is liquid and that the combination of the ingredients is stirred (see pages 1 and 2 of the translation). Applicant’s specification admits that it was known in the art at the time of the invention that the melting point of glycerol monolaurate was 63°C (see paragraph 44). Thus, an artisan of ordinary skill would reasonably expect that the temperature of the mixture of the glycerol monolaurate and the chili oil resin should be increased to above 63°C to ensure that the glycerol monolaurate is in liquid form and is able to be stirred in combination with the chili oil as required by the reference. This reasonable expectation of success would have motivated the artisan to modify the reference to include increasing the temperature to above 63°C.
In addition, applicant argues:
Claim 1 expressly defines a totum as "a mixture of (i) the glycerol monolaurate and the active compound and (ii) the vegetal matrix depleted by the active compound that was transferred to the glycerol monolaurate." Thus, the claimed totum necessarily contains not only the extracted active compound and the glycerol monolaurate, but also the residual vegetal matrix from which the active compound has been extracted.
Li does not disclose such a composition. As noted above, Li begins with a previously obtained spice oil extract. The vegetal material from which the spice oil was extracted is no longer present in the composition of Li. Rather, Li merely incorporates the extracted oil into a food formulation together with additional ingredients. Accordingly, Li does not disclose, teach, or suggest retaining the depleted vegetal matrix in the final composition.
The retention of the depleted vegetal matrix is not incidental. The present application expressly explains that the depleted vegetal matrix may still contain biologically active compounds and therefore contributes beneficial properties to the resulting totum (see [0086]). The claimed process intentionally preserves this material as part of the final composition rather than discarding it following extraction.
Because Li relies on previously prepared spice oil extracts, the skilled person following the teachings of Li would have no reason to retain the extracted vegetal matrix in the final product. To the contrary, Li is directed to incorporating an already isolated extract and therefore provides no teaching or suggestion that the residual vegetal material should be preserved as part of the composition.
However, as discussed above, applicant’s claims only require the mixing of a vegetal matrix with GML to perform the extraction and formulation of the totum where the totum contains both the active components and the depleted vegetal matrix. Li performs this mixing. If a totum as defined by applicant is not formed, then applicant’s claims are missing key steps or key ingredients. In regards to applicant’s argument that the oils of Li are not a “vegetal matrix,” applicant’s claims do not contain a specific definition that it considered to exclude the use of oil as the starting material for the extraction process.
8. No claims are allowed.
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.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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