DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-11 and 13-20 are pending. Claims 10-11 and 13-15 are withdrawn. Claim 20 is new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 1/29/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 1/29/2026 have been fully considered but they are not persuasive.
Regarding claim 1, Applicant argues that a person having ordinary skill in the art would not modify Hu to achieve the benefit disclosed by Schmekel because Hu does not disclose the benefit taught by Schmekel. This argument is not persuasive as Hu is not relied upon for teaching the benefit taught by Schmekel. Instead, Schmekel is relied upon for disclosing the benefit of controlling temperature, as discussed in the rejection of claim 1. 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).
Applicant further argues that “the Office [a]ction does not explain why a skilled artisan would have been motivated to apply that alleged benefit to Hu.” This argument is not persuasive as the motivation is to achieve said benefit.
Applicant further argues that “Hu does not disclose any need or requirement tied to solubility”. This argument is not persuasive as Hu explicitly states that the problem with other devices is that “the soluble extraction rate is low” (¶ 0006) and that Hu’s device is beneficial in that it allows for a “high soluble matter extraction rate” (¶ 0008). As such, Hu does disclose a need tied to solubility.
Applicant further argues that “Hu also does not suggest that solubility related temperature control is relevant to Hu’s two-state arrangement”. This argument is not persuasive as Hu is not relied upon for teaching solubility related temperature control. Instead, Schmekel discloses solubility related temperature control. 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).
Applicant further argues that “Schmekel does not disclose a two-stage serial screw-conveyor arrangement of the type taught by Hu”. This argument is not persuasive as Schmekel is not relied upon for disclosing a two-stage serial screw-conveyor arrangement of the type taught by Hu. Instead, Hu is relied upon for disclosing the arrangement of Hu. 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).
Applicant further argues that “Schmekel does not meaningfully teach or suggest how or why Hu’s first stage and second stage should be thermally differentiated relative to one another” and that neither Hu nor Schmekel disclose “‘wherein processing conditions with respect to heat to which the plant material is subjected in the first stage are different from processing conditions with respect to heat to which the plant material is subjected in the second stage’ as recited in claim 1.” This argument is not persuasive as claim 1 is a device claim and the thermal differentiation is directed to how the device is used. As the combination of Hu and Schmekel is capable of being operated such that the first and second stage are subjected to different processing temperature conditions, all structural limitations of claim 1 are met.
Applicant further argues that “Schmekel does not teach or suggest that a two-stage serial extraction system like Hu should be configured” as such. This argument is not persuasive as Schmekel is not relied upon for disclosing a two-stage serial extraction system like Hu. Instead, Hu is relied upon for disclosing the system of Hu. 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).
Applicant further argues that the rejection does not “explain why, starting from Hu’s two-stage structure, a skilled artisan would have been led to impose different temperatures in the first and second stages”. This argument is not persuasive as the rejection noted that controlling temperature is beneficial for controlling solubility and that the specific temperatures used in each stage are directed to the manner in which the device is operated.
Applicant further argues that the “Office [a]ction’s characterization of the ‘different heat processing conditions’ limitation as merely the manner in which the apparatus is intended to be operated does not cure this deficiency”. This argument is not persuasive as the manner of operating a device does not differentiate an apparatus claim from the prior art (MPEP § 2114(II)).
Regarding claim 18, Applicant argues that Schmekel does not teach or suggest adjusting forces between two different screw conveyors or two different stages. This argument is not persuasive as Schmekel is not relied upon for this feature. Instead, Hu discloses two different screw conveyors in two different stages and Schmekel disclosing adjusting forces. 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).
Applicant further argues that a person having ordinary skill in the art would modify Hu in view of Schmekel “by implementing a corresponding profile of frictional forces with each stage of Hu’s multistage arrangement.” This argument is not persuasive as it is a conclusory statement for which Applicant has not provided evidence. Arguments presented by the applicant cannot take the place of evidence in the record (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), MPEP § 716.01(c)).
Claim Rejections - 35 USC § 103
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 1-2, 4-9, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 109832655 A, a translation of which was previously provided for reference) in view of Schmekel et al. (US 2012/0006341 A1).
Regarding claim 1, Hu discloses an apparatus (“multi-stage extraction device”, Figs. 1-2, ¶ 0064) for the extraction of ingredients from plant material (“tobacco raw materials”, ¶ 0046), comprising
a first screw conveyor (first of the “plurality of extraction devices 100”, Fig. 2, ¶ 0064) with at least one rotatably driven first screw (first “screw shaft 120” that is “driven to rotate”, Fig. 1, ¶ 0049), which is adapted to convey the plant material (“screw shaft 120” includes “spiral groove 121” that conveys the “tobacco raw material”, Fig. 1, ¶ 0050) from a first screw conveyor inlet (first “feed inlet 111”, Fig. 2, ¶ 0050) to a first screw conveyor outlet (first “pulp outlet 113”, Fig. 2, ¶ 0050), and
a second screw conveyor (second of the “plurality of extraction devices 100”, Fig. 2, ¶ 0064) with at least one rotatably driven second screw (second “screw shaft 120” that is “driven to rotate”, Fig. 1, ¶ 0049), which is adapted to convey the plant material (“screw shaft 120” includes “spiral groove 121” that conveys the “tobacco raw material”, Fig. 1, ¶ 0050) from a second screw conveyor inlet (second “feed inlet 111”, Fig. 2, ¶ 0050) to a second screw conveyor outlet (second “pulp outlet 113”, Fig. 2, ¶ 0050),
wherein a fluid connection is provided in between the first screw conveyor outlet and the second screw conveyor inlet, the fluid connection being adapted to enable flow of plant material from the first screw conveyor outlet to the second screw conveyor inlet (second “feed inlet 111” receives extracted tobacco material from first “pulp outlet 113”, Fig. 2, ¶ 0064),
wherein the first screw conveyor has a first fluid outlet at its downstream side (first “liquid outlet 112”, Fig. 1, ¶ 0050),
wherein the second screw conveyor has a second fluid outlet (second “liquid outlet 112”, Fig. 1, ¶ 0050) at its downstream side, wherein the first screw conveyor forms a first stage and the second screw conveyor forms a second stage (Fig. 2).
However, Hu does not disclose wherein processing conditions with respect to heat to which the plant material is subjected in the first stage are different from processing conditions with respect to heat to which the plant material is subjected in the second stage.
Schmekel, in the same field of endeavor, teaches an apparatus for extraction of ingredients from plant material in which the plant material can be subjected to different processing conditions within a screw conveyor (“variations in the rotational speed of the screw can be used to control the magnitude of dissipation and associated heating”, ¶ 0008). One of ordinary skill in the art would have understood that there was a benefit to controlling the temperature of the screw conveyor in that the temperature influences the solubility of the material during extraction (“changing the temperature (influencing the solubility)”, ¶ 0031). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the first and second screw conveyors of Hu to be able to adjust their temperature in order to obtain this benefit.
With regards to the specific processing conditions with respect to heat (e.g., temperatures) that the plant material is subjected to in the first and second stages, this limitation refers to the manner in which the apparatus is intended to be operated and does not differentiate the apparatus claim from the prior art, as one having ordinary skill in the art would be able to select desired processing conditions with respect to heat for each of the first and second stages (see MPEP § 2114(II)).
Regarding claim 2, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein at least one of the screw conveyors has two rotatably driven screws (“plurality of spiral shafts 120 can maintain the same rotation direction, or can rotate in opposite directions to form a counter-rotation relationship”, ¶ 0056) arranged therein.
Regarding claim 4, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses the apparatus comprising a third screw conveyor (third of the “three-stage extraction devices connected in series in sequence”, ¶ 0068) with at least one rotatably driven screw (third “screw shaft 120” that is “driven to rotate”, Fig. 1, ¶ 0049), which is adapted to convey the plant material (“screw shaft 120” includes “spiral groove 121” that conveys the “tobacco raw material”, Fig. 1, ¶ 0050) from a third screw conveyor inlet (third “feed inlet 111”, Fig. 2, ¶ 0050) to a third screw conveyor outlet (third “pulp outlet 113”, Fig. 2, ¶ 0050).
Regarding claim 5, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein in at least one of the screw conveyors, a pitch of threads of the at least one rotatably driven screw is varied (“the thread pitch of the spiral groove 121 at the end close to the feed inlet 111 is greater than the thread pitch of the spiral groove 121 at the end close to the liquid outlet 112”, ¶ 0052).
Regarding claim 6, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein in at least one of the screw conveyors a diameter of a shaft of the at least one rotatably driven screw is varied along an axial direction of the screw (“the inner diameter of the spiral groove 121 . . . increases from the feed inlet 111 to the liquid outlet 112”, ¶ 0054).
Regarding claim 7, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein at least one of the screw conveyors comprises a sieve (“filter screen”, ¶ 0048) being arranged at least partially in an axial and circumferential direction adjacent to the screw, to allow a separation of fluid from the plant material (¶ 0048).
Regarding claim 8, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein at least one of the screw conveyors comprises a fluid inlet at its upstream side (“feed port 111 is provided with a spray end, and the spray end is used to spray the solvent onto the tobacco raw material”, ¶ 0047).
Regarding claim 9, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein at least one of the screw conveyors is adapted to alter a pressure in a tobacco material while conveying the tobacco material (“The space between the spiral groove 121 and the inner circumference of the extraction chamber 110 is reduced from the feed port 111 to the liquid outlet 112, so that the tobacco raw material is gradually squeezed during the forward movement to achieve the extraction purpose.”, ¶ 0051).
Regarding claim 16, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. With regards to the specific temperatures of the ends of the first and second stages, this limitation refers to the manner in which the apparatus is intended to be operated and does not differentiate the apparatus claim from the prior art, as one having ordinary skill in the art would be able to operate the apparatus such that the temperature at the end of the second stage is higher than the temperature at the end of the first stage (see MPEP § 2114(II)).
Regarding claim 17, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Schmekel further discloses optimizing the frictional forces (i.e., the shear forces) within the screw (“optimised screw. The configuration of the surface characteristics must take into account the fact that the frictional forces between the extraction device (strainer) and the material to be pressed are higher than those between the pressed cake and the screw”, ¶ 0019). As such, configuring the first screw conveyor to apply different shear forces to the plant material than the second screw conveyor is a matter of routine optimization and, therefore, obvious to one having ordinary skill in the art (MPEP § 2144.05(II)(A)).
Regarding claim 18, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Schmekel further discloses optimizing the frictional forces (i.e., the shear forces) within the screw (“optimised screw. The configuration of the surface characteristics must take into account the fact that the frictional forces between the extraction device (strainer) and the material to be pressed are higher than those between the pressed cake and the screw”, ¶ 0019). As such, configuring the first screw conveyor to apply higher shear forces to the plant material that the second screw conveyor is a matter of routine optimization and, therefore, obvious to one having ordinary skill in the art (MPEP § 2144.05(II)(A)).
Regarding claim 19, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses wherein the first screw conveyor has a first fluid inlet at its upstream side (“the feed port 111 is provided with a spray end, and the spray end is used to spray the solvent onto the tobacco raw material”, ¶ 0047) and the second screw conveyor has a second fluid inlet at its upstream side (“the feed port 111 is provided with a spray end, and the spray end is used to spray the solvent onto the tobacco raw material”, ¶ 0047), wherein the first fluid inlet and the second fluid inlet are connected to different fluid reservoirs (“liquid receiving container 150” in Fig. 1, ¶ 0063, each stage having its own reservoir as seen in Fig. 2).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 109832655 A) in view of Schmekel (US 1,823,554) as applied to claim 2 above, and further in view of Zhang et al. (CN 2636626 Y, a translation of which was previously provided for reference).
Regarding claim 3, Hu in view of Schmekel teaches the apparatus according to claim 2, as stated above. Hu discloses that the screws are arranged axially parallel (¶ 0056) but does not explicitly disclose that the crests of the threads on the proximal sides of the screws are adjacent to each other.
Zhang, in the same field of endeavor, teaches an apparatus for the extraction of ingredients from plant material (“extraction device for leaching and extracting tobacco fragrance raw materials”, see abstract) with two rotatably driven screws (“propeller press roll 9” and “propeller press roll 10”, Fig. 1, ¶ 00015) wherein crests of threads on proximal sides of the screws are adjacent to each other (“the wave crests of the spiral blades of the propeller press roll 9 are located at the wave troughs of the spiral blades of the propeller press roll 10”, Fig. 1, ¶ 0015). Zhang also teaches a benefit of this alignment of the crests of the screws in that it achieves a higher extraction efficiency (¶ 0015). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arranged the screws taught by Hu with the crests of the threads on the proximal sides of the screws are adjacent to each other as taught by Zhang in order to achieve this benefit.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hu et al. (CN 109832655 A) in view of Schmekel (US 1,823,554) as applied to claim 1 above, and further in view of Cohen et al. (US 2021/0283527 A1).
Regarding claim 20, Hu in view of Schmekel teaches the apparatus according to claim 1, as stated above. Hu further discloses that the apparatus comprises drives of the apparatus (each stage has a “rotary motor 141”, Fig. 1, ¶ 0049). However, Hu does not disclose an electronic controller having input/output electronics configured to communicate with the drives.
Cohen, in the same field of endeavor, discloses a drive (“motor 40”, Fig. 2A, ¶ 0035) and an electronic controller (“controller 80”, Fig. 2A, ¶ 0035) having input/output electronics (“sensors 42 and 44” are connected as input to the controller, Fig. 2A, ¶ 0035, and the controller is connected to the motor via an output “connection”, ¶ 0035) configured to communicate with the drive (¶ 0035) to control operation of the apparatus (¶ 0035). One of ordinary skill in the art would have understood that there was a benefit to using such a configuration in that it allows for automated monitoring and control of the apparatus. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the electronic controller taught by Cohen in the apparatus taught by Hu in order to obtain this benefit.
Further, as the controller controls the speed of rotation of the screw (“controller 80 may increase the speed of rotation of the screw”, ¶ 0035 of Cohen) and the speed of rotation affects the heat (“variations in the rotational speed of the screw can be used to control the magnitude of dissipation and associated heating”, ¶ 0008 of Schmekel), the controller controls operation of the apparatus with regards to processing conditions with respect to heat to which the plant material is subjected.
Hu further discloses that the rotation speed may be adjusted (“the rotation speed . . . can be adjusted accordingly”, ¶ 0057). As such, adjusting the rotational speeds of the different stages of the apparatus of the combination such that the rotational speeds (i.e., the processing conditions with respect to heat to which the plant material is subjected) such that the speeds different between the first and second stage amounts to determining the workable ranges of the rotational speed and may be accomplished by routine experimentation. As such, configuring the controller to control the apparatus such that the processing conditions with respect to heat to which the plant material is subjected in the first stage are different from the processing conditions with respect to heat to which the plant material is subjected in the second stage would have been obvious to one having ordinary skill in the art at the time the Application was filed (MPEP § 2144.05(II)).
Conclusion
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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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