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 .
Election/Restrictions
Claims 1-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 24 April 2025.
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 12-22 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 rendered infinite for the following reasons:
Providing is defined to supply or equip, or to make available. There is no explanation as to how this is accomplished as it pertains to the instant process.
Prepared refers to something that has been subjected to a special process or treatment. There is no explanation as to how this is accomplished as it pertains to the instant process.
Claims 14-15 contain both process and apparatus limitations as they both depend from a process claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite.
Claims 16 & 18 is rendered indefinite for lacking antecedent basis for the “organic solvent nanoseparation” limitation. There is insufficient antecedent basis for this limitation in claim 12.
Claim 17 is rendered indefinite for lacking antecedent basis for the “supercritical carbon dioxide” limitation. There is insufficient antecedent basis for this limitation in claim 12.
Claim 18 is rendered indefinite for lacking antecedent basis for the “membrane purification” limitation. There is insufficient antecedent basis for this limitation in the claim. Claim 12 refers to a membrane separation process that does not definite the process as membrane purification therefore it can cannot not support the limitation in claim 18.
Claim 18 additionally lack antecedent basis for the step of “receiving raw biomass extract” for the extraction process. There is no indication that the component of step © in claim 12 is raw as it is called a “prepared” biomass.
Claim 19 is rendered indefinite for lacking antecedent basis for the “distillation of the purified product” limitation. There is insufficient antecedent basis for this limitation in claim 18. Claim 18 states that the solvent is purified by distillation and returned to the process via a membrane separation process that does not definite the process as membrane purification therefore it can cannot not support the limitation in claim 18.
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.
Claim(s) 12-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boam et al. (US Pub. 2015/0118331, hereafter USPub’331).
USPub’331 discloses a process for (1) reducing impurities, i.e. undesirable natural components such as waxes and undesirable synthetic materials such as agrochemicals and other environmental pollutants, or (2) fractionation of natural components present in an essential oil comprising (a) optionally mixing the essential oil with an organic solvent to form a solution; (b) contacting the essential oil or the solution with at least one selective nanofiltration membrane, wherein a retentate is formed comprising at least one compound from the essential oil and a permeate forms comprising at least one compound from the essential oil such that the composition of the retentate and permeate solutions is different; and (c) optionally removing the organic solvent from the retentate to form a purified oil.
USPub’331 discloses the instant invention as indicated supra. While the referenced biomass is industrial hemp, a biomass as a whole encompasses organic matter form plants and animals. In USPub’331, the term "essential oil" as used in this disclosure shall be taken to mean hydrophobic oils derived from plant matter, The essential oil (natural raw material) can be prepared via steam distillation, mechanical expression, or extraction. The extraction method involves a supercritical solvent (CO2) and another solvent. (See sections [0046] - [0053]).
Regarding claims 16-22, providing a selectively permeable nanofiltration membrane having a first surface and a second surface; (iii) separating the essential oil by transferring one or more components of the essential oil or of the essential oil solution from the first surface to the second surface across the membrane through contacting the essential oil or the essential oil solution with the first surface, wherein the oil or solution in contact with the first surface forms a retentate and the oil or solution contacting the second surface forms a permeate, wherein the pressure at the first surface is greater than the pressure at the second surface, and wherein the concentration of the one or more components of the essential oil or of the essential oil solution is reduced in the oil or solution contacting the first surface compared to the initial essential oil or essential oil solution.
While USPub’331 only discloses a preferred cannabinoid source, it would have bee obvious to one of ordinary art at the time that the invention was made, to substitute a cannabinoid source (biomass material). The starting materials analogous in that they are both biomasses. One having ordinary skill in the are would have been motivated to employ the process of the prior art with the expectation of obtaining the desired product because he would have expected the analogous starting materials to react similarly. It has been held that application of an old process to a new or analogous material to obtain a result consistent with the teachings of the art would have been obvious to one having ordinary skill.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -7:00 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 572-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691