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. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 6, 2025 has been entered.
3. Claims 1, 3-6, 8, 11-17, and 20-26 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 Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 3-6, 11-17, and 20-26 are examined on the merits in regards to the elected species.
Claim Rejections - 35 USC § 112
7. Claims 1, 3-6, 8, 11-17, and 20-21 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 1 is indefinite because it is unclear how many extraction steps are required by the claim. Lines 2-3 state that the process is drawn to “extract a biological active compound…in a solvent to form an extract.” However, line 5 then states that “the extract” is solubilized in “the solvent”. Line 5 appears to indicate that a second extraction step for “the extract” is performed.
Claim 1 at lines 7-8 is indefinite because it states that solvent or mixture is heated to a temperature above 63°C “for at least the extracting of the biological active component.” The use of “at least” in this context is confusing because it is unclear what other effects on the solvent or the mixture are intended to be encompassed by “at least.”
Claim Rejections - 35 USC § 103
8. Claim(s) 1, 3-6, 11-17, and 20-26 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.
Li teaches a process for the preparation of a product which comprises mixing chili oil resin (part of a vegetal matrix) with glycerin (glycerol) monolaurate and an additional oil such as sunflower oil. The reference teaches that the mixing process solubilizes the chili oil. The mixture is filtered and packaged. The resulting product is a food in oil form which is also considered to meet the structural limitations of an ointment (see translation).
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.
The chili oil resin would be extracted from chili peppers prior to the mixture with the glycerol monolaurate. The reference does not specifically teach using dried or ground chili in the process. However, an artisan of ordinary skill would reasonably expect that dried or ground chili could be used as the source of the chili oil taught in the reference. This reasonable expectation of success would have motivated the artisan to modify the reference to include the use of dried or ground chili peppers in the process.
In addition, the reference does not specifically teach using oleic, non-oleic, or hydrogenated sunflower oil in the process. However, these are known types of sunflower oil which would be obvious for one of skill in the art to employ as the sunflower oil ingredient in the reference.
Double Patenting
9. Claims 1, 3-6, 11-17, and 20-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10, 14, and 15 of copending Application No. 17/999,267 (reference application) for the reasons set forth in the previous Office action.
Applicant has requested that this rejection be held in abeyance until allowable subject matter is indicated. The request is noted. The rejection is currently still considered valid at this time for the reasons set forth in the previous Office action.
10. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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