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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 November 2025 has been entered.
Claim Status
Applicant’s remarks and amendments, filed 20 November 2025 in response to the final rejection mailed 29 August 2025, are acknowledged and have been fully considered. Applicant’s amendments to the claims are acknowledged. The listing of claims filed 20 November 2025 replaces all prior versions and listings of the claims.
Claims 1, 9, and 21 are pending and are being examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 9, and 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.
Claims 1, 9, and 21 are rendered indefinite for the reasons below.
Claim 1, step ii, line 1 recites the limitation "solid containing extract.” There is insufficient antecedent basis for this limitation in the claim and it is unclear where the “solid” is coming from.
In Claim 1, step ii, line 3, it is unclear what “by vacuum” refers to because this could mean utilizing a vacuum to pull the liquid through a filter or utilizing vacuum evaporation to separate the extract from insoluble solid matter.
In Claim 1, step ii, “as a filtration step” refers back to the filtered liquid extract as written. It is unclear how the filtered liquid extract is also a filtration step.
In Claim 1, step viii, “remaining aqueous part” is indefinite because it is unclear where exactly the remaining aqueous part is coming from or what it is the remaining aqueous part of. This could refer to the remaining portion of the filtered liquid extract, remaining eluent, etc.
In Claim 1, step viii, line 3, it is unclear what “at lyophilizer as freeze drying step” means, and whether the intention is to freeze dry material using a lyophilizer.
In Claim 1, step xi, the limitation “the ethanol solution” is indefinite because as presently written, step v refers to a 50% ethanol-water solution and step ix refers to 99% ethanol and thus it is unclear whether either of these are “the ethanol solution” and which one is being referred to. Additionally, the claim implies that the carnosic acid and carnosol are contained within the ethanol which is evaporated.
Claim 9 states “during the feeding of the extract,” however both Claim 1, step iii and Claim 1, step iv refer to “feeding,” and since the method comprises sequential steps, it is unclear to which feeding the claim refers. This could be corrected by removing the “before feeding the filtered extract…” phrasing of Claim 1, step iii.
All other claims depend directly or indirectly from rejected claims and are, therefore, also rejected under 35 U.S.C. 112, second paragraph for the reasons set forth above.
In the interest of advancing prosecution, please note the following phrasing, incorporating explanations for various steps provided by the Applicant in the response filed 20 November 2025:
“A method for isolation of deodorized carnosic acid, carnosol, and rosmarinic acid from de-oiled rosemary, comprising the sequential steps of:
extracting de-oiled rosemary in an ultrasonic water bath at 60°C for 20 min with a 50 v/v% aqueous ethanolic solution to obtain a de-oiled rosemary extract;
filtering the de-oiled rosemary extract through coarse filter paper by vacuum to remove insoluble material and then through a filter with a 1-5 μm pore diameter to obtain a filtered liquid extract;
passing deionized water through a macroporous adsorbent-containing column as a mobile phase to obtain a prepared column;
feeding the filtered liquid extract into the prepared column in an amount of 0.01 to 5 times the column volume, wherein an eluent with a wavelength of 284 nm corresponds to waste;
passing a 50% aqueous ethanolic solution through the filtered liquid extract containing column as a mobile phase and collecting an eluent comprising rosmarinic acid, wherein the ethanol is evaporated from the eluent comprising rosmarinic acid under vacuum in a rotary evaporator, vacuum dryer, vacuum oven, or spray dryer to obtain an aqueous rosmarinic acid extract;
freeze drying the aqueous rosmarinic acid extract and then drying the freeze dried rosmarinic acid extract under vacuum to obtain a deodorized rosmarinic acid extract; and
passing a 99% ethanol solution through the filtered liquid extract containing column as a mobile phase and collecting an eluent comprising carnosic acid and carnosol, wherein all of the ethanol is evaporated from the eluent in a rotary evaporator at 40°C to obtain a powder comprising carnosic acid and carnosol.”
The above or similar phrasing, if presented in a claim, would be considered sufficient to overcome the grounds of rejection under 35 USC 112(b) as above. Appropriate clarification and/or correction is required.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 9, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Oliviera et al. (Food Chem, 2016, 465-473) in view of Handa et al. (Extraction Technologies for Medicinal and Aromatic Plants, 2008, 263 pages), Tang et al. (J Chrom, 2014, 41-48), and Zibetti et al. (J Supercrit Fluids, 2013, 133-145).
The instant claims are as of record, drawn to a method of isolating carnosic acid, carnosol, and rosmarinic acid comprising eleven sequential steps described therein.
Oliveira et al. teach a method for extracting carnosic acid, carnosol, and rosmarinic acid from rosemary wherein extraction of rosemary powder was carried out for 10 minutes in an ultrasound bath (ultrasonic water bath) with various solvents including 70% ethanol (ethanol:water solution) and the resulting sample was filtered through a 0.45 micrometer membrane (fine filter; Oliveira et al., section 2.2., page 466; as required for instant Claim 1, steps i and ii). Rosmarinic acid was quantified at 330 nm and diterpenes (carnosic acid and carnosol) at 280 nm (wasting of eluent observed at 284 nm corresponding to waste; Oliviera et al., section 2.5., page 467; as required for instant Claim 1, steps iii and iv). The column had a volume of 4.15 mL (4150 μL) with an injection (feeding into the column) volume of 20 μL for an extract:column volume ratio of 0.005 (Oliviera et al., section 2.5., page 467; as required for instant Claim 1, steps iii and iv and Claim 9). The extraction yields were highest for rosmarinic acid when 44.8% and 55.0% ethanol (ethanol-water) were used, whereas extraction yields for carnosic acid and carnosol were comparatively higher with 85.0% and 95.2% ethanol (ethanol water) were used (Oliviera et al., Table 1, page 467; as required for instant Claim 1, steps v, vi, ix, and x).
Oliviera et al. do not teach deoiled rosemary, vacuum filtration, passing deionized water as a mobile phase, a macro-porous adsorbent-containing column, or the described evaporation and drying methods.
Handa et al. teach methods of evaporating solvents (e.g., ethanol) such as drying under reduced pressure and lyophilization (freeze drying; Handa et al., 1.2.1.12, page 30; as required for instant Claim 1, steps ii, vii, viii, and xi), as well as water (deionized water) as the initial mobile phase in an HPLC column (see examples of Handa et al., 11.8, pages 192; as required for instant Claim 1, step iii).
Tang et al. teach separation and purification of rosmarinic acid using synthetic adsorbents in microporous resin chromatography (macro-porous adsorbent-containing column) wherein the resin (packing material) can include polyamide (Tang et al., Introduction, page 41; as required for instant Claim 1, step iii and Claim 21).
Zibetti et al. teach solvent extraction of rosmarinic acid from solid plant waste from rosemary after supercritical fluid extraction (deoiled rosemary) and that particulate solids are filtered from the extract (Zibetti et al., Introduction, page 135 and 3.4.2., page 143; as required for instant Claim 1, step i and ii).
Montag teaches that vacuum filtration utilizes negative pressure to suck liquid through a filter in order to filter plant extracts (Montag, pages 1-2).
Oliviera et al., Tang et al., Handa et al., Zibetti et al., and Montag are relied upon for the reasons discussed above. If not expressly taught by the prior art, based upon the overall beneficial teaching provided by this reference with respect to carrying out extraction methods in the manner disclosed therein, the adjustments of particular conventional working conditions (e.g., determining one or more suitable temperatures, extraction times, solvents, and ratios 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 Oliviera et al., Handa et al., Tang et al., Zibetti et al., and Montag to arrive at the instantly claimed method. Based upon the positive teachings of the references, a skilled artisan could arrive at the instant invention to obtain purified, isolated, and deodorized rosmarinic acid, carnosic acid, and carnosol. A skilled artisan would be motivated to provide multiple filtration steps, including the faster and less wasteful vacuum filtration to remove solid matter (Montag, pages 1-2 and image, page 3), because it is challenging to obtain pure rosmarinic acid utilizing macro-porous adsorbent-containing columns due to impurities in crude extracts (Tang et al., Introduction, page 42). Purity of the filtered liquid extract would be further advanced via use of the deoiled extract, which would have even less impurities than a crude extract directly from the plant, and reuse of solid waste from hydrodistillation and supercritical extraction of herbs is even more advantageous because it does not affect the amount of rosmarinic acid obtained (Zibetti et al., Conclusion, page 145). It is advantageous to utilize these macro-porous adsorbent-containing columns because of their stable chemical and physical properties, inertness toward toxic solvents, simple regeneration, low cost, and long service life (Tang et al., Introduction, page 42) and thus a skilled artisan would be motivated to use this type of column. Finally, a skilled artisan would be motivated to use multiple mobile phases with different ethanolic contents in order to separately isolate the different compounds based upon the positive teaching regarding higher extraction yields rosmarinic acid when 44.8% and 55.0% ethanol (ethanol-water) were used, whereas extraction yields for carnosic acid and carnosol were comparatively higher with 85.0% and 95.2% ethanol (Oliviera et al., Table 1, page 467). Based upon the positive teachings and advantageous of the methods taught by the prior art, a skilled artisan could therefore combine the methods to arrive at the instantly claimed invention with a reasonable expectation of success.
From the teachings of the references, 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 November 2025 have been fully considered but they are not persuasive.
The Examiner acknowledges and has fully considered Applicant’s explanations and comments, on pages 7-11 of the reply filed 20 November 2025, regarding the claim rejections under 35 USC §112(b), however, the arguments are not found to be persuasive because the limitations cannot be read into the claims from the specification or remarks filed by the Applicant and thus the rejections are maintained.
In response to applicant's argument that individual combinations of references (e.g., Oliveira et al. and Handa et al. on page 20) do not teach the complete invention, nor does the combination of references teach simultaneous extraction of rosmarinic acid, carnosol, and carnosic acid, this is not found to be persuasive over the present grounds of rejection based on the combination of references (Oliviera/Handa/Tang/Zibetti) for the reasons of record, and because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., using a single method; obtaining a stable, easily storable, user-friendly final product; 42-48% carnosic acid and carnosol and 7-8% rosmarinic acid in a final powder product) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually (e.g., Oliveira et al., Remarks pages 18-22), 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). Additionally, applicant argues on pages 16, 19, 23, and 26 that the references do not explain all features of currently amended Claim 1 under 35 USC § 102, however anticipation under this statute has not been argued by the Examiner.
Regarding Applicant’s argument that the ethanol:water ratio and defined extraction temperatures and times enhance selective solubilization and yield of target compounds, these features are not recited in the instant claims. Additionally, Applicant states that these are optimized parameters (page 17) and therefore these features are deemed merely a matter of judicious selection and routine optimization which is well within the purview of the skilled artisan. The Applicant also notes that deodorization is inherent to the use of de-oiled rosemary (page 17), a product which is taught by Zibetti et al. as of record.
Finally, the Applicant argues that the drying methods taught by Handa et al. are general drying methods, however that indicates, as taught by the prior art, that they are well-known to a skilled artisan and could thus be incorporated into the claimed method with a reasonable expectation of success, particularly since they are widely and increasingly used methods in the field of medicinal and aromatic plant extraction that ensure the safety and stability of active constituents (Handa et al., 1.2.1.12, page 30).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L CAIN whose telephone number is (703)756-1318. The examiner can normally be reached M-Th 11:00am to 5:00pm EST.
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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655