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 .
Claim Status
Applicant’s remarks and amendments, filed 20 July 2026 in response to the non-final rejection mailed DATE, are acknowledged and have been fully considered. Applicant’s amendments to the claims are acknowledged. The listing of claims filed 20 July 2026 replaces all prior versions and listings of the claims.
Claims 1-5, 7-12, and 14-23 are pending. Claims 8, 17, 18, and 20-22 remain withdrawn. Claim 1 is amended. Claims 1-5, 7, 9-12, 14-16, 19, and 23 are being examined on the merits.
Response to Amendment
Any previous rejection or objection not mentioned herein is withdrawn.
Claim Rejections - 35 USC § 103
(grounds modified as necessitated by amendment)
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 7, 9-12, 14-16, 19, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (J Clean Prod, 2019, 9 pages) in view of Azwanida (Med Aromat Plants, 2015, 6 pages) as evidenced by Bhattacharya & Basak (IFSET, 2017, 247-266).
The instant claims are as of record, drawn to a method for pretreating a plant material prior to solvent extraction in order to immobilize and sequester inherent metals therein, the method comprising comminuting a dried plant material, spreading it into a layer, and subjecting it to non-ionizing radiation without rupturing the cells at an energy input of equal to or greater than 0.02 kWh per 1 kg of dried plant material for a period of time selected from a range of 15 sec to 10 min while maintaining a temperature of the plant material at or below about 70°C.
Li et al. teach a method for removing heavy metals from a dried biosolid wherein the biosolid is pretreated prior to solvent extraction via microwave irradiation (non-ionizing radiation; Li et al., Title, 2.1, 2.4, pages 2-3; as required for instant Claim 1). A total of 5g of biosolid was placed in a 1-kW, 2450-MHz (2.45 GHz) microwave for 10 seconds at 140 W, which converts to an energy input of 4.76 kWh per kg of biosolid (Li et al., 2.4, page 3; as required for instant Claims 1 and 10-12). This method successfully induced the immobilization and increased heavy metal removal by as much as 3x (immobilize and sequester inherent materials) Li et al., Abstract; as required for instant Claim 1). While Li et al. do not explicitly disclose that the cells of the plant material are not ruptured, the method of Li et al. comprises the same energy input and about the same period of time (about 15 seconds is equivalent to 12 seconds, see e.g., instant specification [0071]), wherein a shorter period of exposure would intrinsically result in plant cell walls remaining intact.
Li et al. do not teach comminuting via milling or plant material of stems.
Azwanida teaches extraction methods for medicinal plants (e.g., stems, leaves, flowers, seeds) including drying and grinding samples. Mills such as electric blenders (impact milling) and ball mills (attrition milling) can be used to reduce particle size of plant material, and that particle size smaller than 0.5 mm is ideal for efficient extraction (Azwanida, Grinded vs. powdered samples, page 1; Air-drying…plants samples, page 2; as required for instant Claims 1, 4, 5 and 9).
While Azwanida does not explicitly teach spreading plant material into a layer, they do teach that microwave radiation causes heating near the surface of materials that is then transferred via conduction (Azwanida, Microwave assisted extraction (MAE), page 3; as required for instant Claim 1). A skilled artisan would therefore understand that a larger surface area and/or a thinner layer would allow for better penetration of the non-ionizing radiation into the plant material and that thinner samples have better power absorption (Bhattacharya & Basak, Figures 2 and 3, pages 252-253). Additionally, a skilled artisan would also understand that a rest period is necessary between cycles of non-ionizing radiation in order to allow for temperature to decrease (as required for instant Claims 2 and 23) and that repeated cycles would further improve removal of heavy metals (as required for instant Claim 3).
Some compounds that are desired for extraction from medicinal plants, such as sinensetin and rosmarinic acid, are sensitive to temperatures as low as 44.5°C (maintaining the temperature of the plant material at or below; Azwanida, Air-drying…plants samples, page 2; as required for instant Claims 1, 14, and 23), providing motivation for the cooling. A skilled artisan would also know that the number of cycles and resting time would additionally depend upon the thickness of the spread out layer for the aforementioned reasoning, and that a temperature-controlled environment would further aid in post-exposure cooling (as required for instant Claim 15).
While Li et al. and Azwanida do not explicitly teach the moisture content of the dried biosolid, Li et al. teach that as moisture content increases from 0% to 40%, power loss also increases, providing motivation for a skilled artisan to obtain a moisture content of 15% w/w or less (Li et al., Fig. 3, page 5; as required for instant Claim 19). Additionally, Azwanida teaches that dried plant material is generally preferred for extraction because dried samples do not deteriorate as quickly (Azwanida, Fresh vs. dried samples, page 1; as required for instant Claim 19). A skilled artisan would therefore know to provide a sample with a low moisture content, and determining a specific moisture content would merely be a matter of routine optimization.
Li et al. and Azwanida are relied upon for the reasons discussed above. If not expressly taught by the prior art, based upon the overall beneficial teaching provided thereby with respect to microwave pretreatment and drying and milling plant material in the manner disclosed therein, the adjustments of particular conventional working conditions (e.g., determining one or more suitable time ranges (Claim 1), milled dried plant material layer thickness (Claims 1 and 7), environmental temperatures (Claim 16), and scaling up of the process (Claim 1) with which to perform such a method), is deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to combine the teachings of Li et al. and Azwanida in order to arrive at the claimed invention. Azwanida teaches known extraction methods of plants and the positive teaching of Li et al. regarding pretreatment of a biomass with microwave irradiation in order to remove heavy metals from plants, which are known to take up heavy metals (Li et al., Introduction, page 2), provides motivation for the skilled artisan. The methods could therefore be combined with a reasonable expectation of success at arriving at the instantly claimed invention.
From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive.
The applicant argues that a method with industrial scalability generally prefers a larger amount of plant material being pretreated at once and therefore an upper bound of layer thickness is important to the scalability and that because the layer thickness is relative to the average particle size a person skilled in the art would not be able to arrive at the claimed range.
Firstly, regarding the feature of requiring industrial scalability, it is noted that changes in size or proportion are obvious without evidence to the contrary, see e.g., MPEP § 2144.04(IV). Additionally, while a thickness is not recited in terms of absolute value as correctly stated by the applicant, thicknesses can be inferred based upon Claim 4, which recites a particle size of about 20mm or less, and Claim 5, which recites a particle size of about 10mm or less. Five times these values would be 100mm – 50mm or less for a thickness of the layer (see e.g., instant specification at [0031]). It is additionally noted that there are no examples or data indicating the criticality of the thickness of the layer being relative to the particle size, and therefore an upper limit of a thickness could readily be imagined by an artisan knowledgeable in non-ionizing radiation and the various factors that affect penetration into the plant material, such as thickness.
Examiner’s Comment
The following proposed amendment to independent Claim 1, incorporating the limitations of withdrawn Claim 21, is presented for applicant’s consideration, considered as phrasing sufficient to overcome the grounds of rejection of record, if presented (or similarly phrased) in response to the instant Office Action:
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A method for extracting products from a plant material, the method comprising:
(a) comminuting a dried plant material;
(b) spreading the comminuted dried plant material into a layer;
(c) subjecting the layered comminuted plant material to a non-ionizing radiation without rupturing the cells thereof to produce a pretreated plant material;
(d) contacting the pretreated plant material with a solvent for a selected period of time to thereby produce a solvent-solubilized plant extract; and
(e) separating and recovering the solvent-solubilized plant extract from the pretreated plant material to obtain a plant extract;
wherein the heavy metal content of the plant extract is reduced relative to a plant extract which has not been pretreated via steps (a)-(c);
wherein the non-ionizing radiation is at an energy input of equal to or greater than about 0.02 kWh per 1 kg of dried plant material for a period of time from about 15 sec to about 10 min;
wherein a thickness of the layered comminuted plant material is about five times an average particle size of the comminuted plant material or less; and
wherein the subjecting of the plant material to the non-ionizing radiation comprises maintaining a temperature of the plant material at or below about 70°C.
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Conclusion
No claims are currently allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655
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