DETAILED ACTION
Summary
Applicant’s amendment dated 7 July 2026 is acknowledged. Claims 1-2, 4, 6, 10-17, 19-21, 23-25, and 35-38 are pending. Claims 19-21 and 23-25 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
New grounds of rejection set forth below are necessitated by applicant’s amendment dated 7 July 2026. For this reason, this action is properly made final.
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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-2, 4, 6, 10-17 and 35-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites that that the polymer comprises a polymerization product of a crosslinking monomer having at least two polymerizable functional groups and “substantially no non-crosslinking monomer”. This is not supported by the specification. In three places, the specification discloses polymers prepared “without” non-crosslinking monomers (cur spec: [0047], [0048], [0231]) but the specification does not disclose “substantially no” crosslinking monomer. Note that “substantially no” implies that some small range of non-crosslinking monomer is allowable in the composition, which is not disclosed in the specification as filed. Claims 2, 4, 6, 10-17 and 35-36 are also rejected because they depend upon, and therefore include Claim 1. Claim 37 is not rejected because it recites “no non-crosslinking monomer” as is disclosed in the specification. Claim 38 is not rejected because it recites EGDMA as the only monomer (supported by cur spec: [0046]) which fully excludes non-crosslinking monomers
Claim Rejections - 35 USC § 102
Claims 1-2, 4, 6, 10 and 36-38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HEARN (US-20120052757-A1).
Regarding Claim 1 and Claim 37, HEARN teaches molecularly imprinted polymers (Abstract) formed from polymerizing monomers in the presence of a template molecule ([0091]). HEARN teaches that its template molecule may contain a phenolic hydroxyl groups ([0103]) which satisfies the requirement of a hydroxyphenyl group. HEARN teaches that its template is resveratrol ([0007]) or one of its analogues ([0136]). Resveratrol contains three hydroxyphenyl groups and has a molecular weight of 228.24 (Table 2, compound 14):
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HEARN further teaches many other template compounds which have a hydroxyphenyl group and a molecular weight within the recited range (Table 2, Table 3).
HEARN teaches that its imprinted polymers are formed from monomers and crosslinking agents ([0091]), teaches that some of its preferred monomers include monomers with multiple polymerizable groups such as N,N'-(pyridine-2,6-diyl)-acrylamide and N,N' -(pyridine-2,6-diyl )-bis(2-methacrylamide) ([0128]), teaches several preferred crosslinking agents which all have multiple polymerizable groups ([0129]) and further teaches that the monomer and crosslinking compounds may be the same compound ([0131]). The multifunctional monomers can be interpreted as crosslinking monomers as they contain more than one polymerizable functional group. HEARN exemplifies an imprinted polymer formed with a resveratrol template and only EGDMA ([0473], Table 12) which HEARN characterizes as a crosslinking agent ([0129]) which satisfies the requirement of substantially no non-crosslinking monomer in Claim 1 and no non-crosslinking monomer in Claim 37.
HEARN teaches that its imprinted polymers have applications in extracting bioactive compounds from a range of bioprocessing feedstocks and wastes (Abstract). HEARN teaches that its imprinted polymers selectively a mixture comprising polyphenols such as resveratrol and A-type procyanidins from a peanut meal extract ([0545]), but HEARN does not specifically teach that its imprinted polymer is for producing an enriched cannabinoid extract from a crude cannabis extract. But the claim is directed to an imprinted polymer and the clause “for producing an enriched cannabinoid extract from a crude cannabis extract” is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The imprinted polymers taught by HEARN which satisfy the structural limitations of the claim are presumed suitable of the intended use of producing an enriched cannabinoid extract from a crude cannabis extract. While HEARN teaches that its exemplary compositions which contain only crosslinking monomers are not successful in binding resveratrol, this does not mean that is not suitable for the intended use of binding cannabinoids, as cannabinoids are less polar than resveratrol.
Regarding Claim 2, modified HEARN teaches the invention of Claim 1 where HEARN teaches functional monomers with multiple acryl groups ([0127]) and crosslinking agents with either multiple acryl groups or multiple vinyl groups ([0129]) including EDGMA ([0129]) which has two acryl groups.
Regarding Claim 4, modified HEARN teaches the invention of Claim 1. HEARN specifically teaches ethylene glycol dimethacrylate (EGDMA) and trimethacryloylpropane trimethacrylate ([0129]).
Regarding Claim 6, modified HEARN teaches the invention of Claim 1. HEARN specifically teaches ethylene glycol dimethacrylate (EGDMA) ([0129]).
Regarding Claim 10, modified HEARN teaches the invention of Claim 1. The resveratrol template above satisfies the recited structure where R1 is H, R2 is H, R3 is HO-Phenyl-C=C- which is an organic group, R4 is H and R5 is H.
Regarding Claim 36, modified HEARN teaches the invention of Claim 1. HEARN teaches its crosslinking agent can be ethylene glycol dimethacrylate (EGDMA) or divinylbenzene ([0129]). These are the same two crosslinkers disclosed in the instant specification immediately after disclosing that the crosslinker is a preferably a diolefin (cur spec: [0231]).
Regarding Claim 38, modified HEARN teaches the invention of Claim 1. HEARN specifically teaches ethylene glycol dimethacrylate (EGDMA). HEARN teaches an example containing an imprinted polymers based on only EGDMA with no functional monomer ([0473]).
Claim Rejections - 35 USC § 103
Claims 13, 16-17 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over HEARN (US-20120052757-A1).
Regarding Claim 13, modified HEARN teaches the invention of Claim 10. HEARN teaches and exemplifies catechin as a template (Table 3; p. 30; [0504]) which satisfies Claim 10 where R3=OH, R4=H, R5=H, and R1 and R2 form a six-membered ring substituted with -OH and -Ph(OH)(OH) which is an aryl which is substituted with two -OH groups. HEARN does not exemplify a catechin template in the same example that uses no non-crosslinking monomer, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of HEARN and use a catechin template and no non-crosslinking monomer together based on the teachings of the specification.
Regarding Claim 16, modified HEARN teaches the invention of Claim 1. HEARN teaches that flavanols can be used as a template ([0143](c)). Flavanol is a synonym for flavan-3-ol. HEARN also exemplifies catechin (Table 3; p. 30; [0504]) which is a flavan-3-ol. HEARN does not exemplify a catechin template in the same example that uses no non-crosslinking monomer, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of HEARN and use a flavan-3-ol template, such as catechin, and no non-crosslinking monomer together based on the teachings of the specification.
Regarding Claim 17, modified HEARN teaches the invention of Claim 16 where HEARN teaches catechin (Table 3; p. 30) and exemplifies catechin ([0504]).
Regarding Claim 35, modified HEARN teaches the invention of Claim 10. HEARN teaches and exemplifies catechin as a template (Table 3; p. 30; [0504]) which satisfies Claim 10 where R3=OH, R4=H, R5=H, and R1 and R2 form a six-membered ring substituted with -OH and -Ph(OH)(OH) which is an organic group. That this R1/R2 ring closure is a 6-membered ring satisfies the (a) option recited by the claim. HEARN does not exemplify a catechin template in the same example that uses no non-crosslinking monomer, but it would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the examples of HEARN and use a catechin template and no non-crosslinking monomer together based on the teachings of the specification.
Claims 1-2, 4, 6, 10-14 and 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over MURRAY (WO-0177672-A2) as evidenced by CELA-PEREZ (Journal of Chromatography A. 1429 (2016) 53-64).
The MURRAY (WO-0177672-A2) reference is in the IDS dated 21 June 2023.
The CELA-PEREZ (Journal of Chromatography A, 1429 {2016} 53-64} reference is in the IDS dated 21 June 2023.
Regarding Claim 1 and Claim 37, MURRAY teaches a molecularly imprinted polymer for detecting a narcotic in a fluid ([0002]) where the polymer has been templated with a narcotic ([0036]). MURRAY teaches that its polymer is formed from polymerizable functional monomers, including crosslinking agents, in the presence of a narcotic template ([0041]).
MURRAY teaches that any narcotic molecule can be employed in the practice of its invention, including cannabinoids ([0046], Claim 7), specifically mentioning cannabinol ([0021]). MURRAY does not teach the chemical structure of cannabinol. Here CELA-PEREZ is used as evidence to disclose the inherent chemical structure of the cannabinol taught by MURRAY. CELA-PEREZ teaches that cannabinol (CBN) has the following structure (Fig. 1):
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This structure has a hydroxyphenyl group and a molecular weight of 310.4 g/mol which is within the range of 150-450 g/mol that is recited by the claim.
MURRAY teaches many monomers ([0047]) for its imprinted polymer including some which have at least two polymerizable groups, including 1,3,divinylbenzoic acid and N,N' -bis(methacryloyl)-pyridine-2,6-dicarboxamide as preferred monomers ([0047], Fig. 4). MURRAY includes many multifunctional monomers in its longer suitable list including a number of dienes and di(meth)acrylates ([0047]). These multifunctional monomers can be interpreted as crosslinking monomers as they contain more than one polymerizable functional group. MURRAY further teaches many crosslinking agents ([0049]). MURRAY teaches that any ratio of simple and crosslinking monomers can be used that provides a structure with appropriate integrity ([0050]). MURRAY does not exemplify a polymer formed without a non-crosslinking monomer but it would be obvious to one of ordinary skill in the art to modify the examples of MURRAY and include simple and crosslinking monomers that both have multiple polymerizable groups based on the teachings of the specification. Inclusion of only multifunctional monomers satisfies Claim 37 and also satisfies Claim 1 because no non-crosslinking monomers also satisfies the requirement of substantially no non-crosslinking monomers.
The recitation that the imprinted polymer is for producing an enriched cannabinoid extract from
a crude cannabis extract is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). MURRAY teaches that its imprinted polymer selectively binds the narcotic ([0036]), which can be a cannabinoid. It is interpreted that following desorption, the cannabinoid is enriched in its solvent as it would no longer contain other compounds which did not adsorb to the imprinted polymer. It is presumed that an imprinted polymer which selectively adsorbs cannabinoids would be suitable for the intended use of producing an enriched cannabinoid extract from a crude cannabis extract.
Regarding Claim 2, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches many multifunctional monomers and crosslinking agents which contain vinyl groups or acryl groups ([0047], [0049], Fig. 4).
Regarding Claim 4, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches methacrylic anhydride ([0047] (p. 13)) and EGDMA ([0049]).
Regarding Claim 6, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches EGDMA ([0049]).
Regarding Claim 10, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches cannabinol (CBN) as a cannabinoid template. CBN (structure above) satisfies the structure recited in Claim 10 where R2=H, R3=pentyl, R4=H and R1 and R5 together form a six membered ring substituted with two methyl groups, which are organic group, wherein this six membered ring is fused to a further ring which is substituted with a methyl group.
Regarding Claims 11-12, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches cannabinol (CBN) as a cannabinoid template which has R3=pentyl which is a saturated alkyl group and satisfies both Claim 11 and Claim 12.
Regarding Claim 13, modified MURRAY teaches the invention of Claim 10 where MURRAY teaches cannabinol (CBN) as a cannabinoid template. CBN (structure above) satisfies the structure recited in Claim 10 where R2=H, R3=pentyl, R4=H and R1 and R5 together form a six-membered ring substituted with two methyl groups, which are alkyl group, wherein this six membered ring is fused to a further 6-membered ring which is substituted with a methyl group which is an alkyl group which meets all of the required limitation of the claim.
Regarding Claim 14, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches a cannabinoid template
Regarding Claim 35, modified MURRAY teaches the invention of Claim 10 where MURRAY teaches cannabinol (CBN) as a cannabinoid template where R3=pentyl, which satisfies both the (b) and (c) options recited by the claim.
Regarding Claim 36, modified MURRAY teaches the invention of Claim 1 where MURRAY teaches divinylbenzene (DVB) and ethylene glycol dimethacrylate (EGDMA) crosslinkers ([0049]). These are the same two crosslinkers disclosed in the instant specification immediately after disclosing that the crosslinker is a preferably a diolefin (cur spec: [0231]). MURRAY also teaches structures which satisfy the plain meaning of diolefin including many linear and branched alkyldienes (1,3-butadiene, 1,9-decadiene, 1,6-heptadiene, 1,4-hexadiene, etc)([0047]).
Regarding Claim 38, modified MURRAY teaches the invention of Claim 1. MURRAY teaches ethylene glycol dimethacrylate (EGDMA) as a crosslinker ([0049]). MURRAY teaches that any ratio of simple to crosslinking monomers can be used which provides a structure of appropriate integrity ([0050]), that includes using only a crosslinking monomer. MURRAY does not exemplify templated polymers using only EGDMA, but it would be obvious to modify the examples of MURRAY to form templated polymers using EGDMA based on the teachings of the specification.
Claim Rejections - 35 USC § 103
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over MURRAY (WO-0177672-A2) as evidenced by CELA-PEREZ (Journal of Chromatography A. 1429 (2016) 53-64) as applied to Claim 14 above, and further in view of KALIVRETENOS (WO-2020186077-A1).
Regarding Claim 15, modified MURRAY teaches the invention of Claim 14 where MURRAY teaches a cannabinoid template. MURRAY generally teaches a cannabinoid class of templates (([0046], Claim 7), but does not specifically teach cannabidiol. KALIVRETENOS, in an invention of molecularly imprinted polymers for the extraction of cannabinoids (Title, Abstract), teaches that cannabidiol is a cannabinoid of particular interest for research and commercialization ([0004]) which is available for different medicinal indications and/or recreational uses. KALIVRETENOS teaches the structure of cannabidiol (CBD) (above [0006]) :
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which has two hydroxyphenyl groups and a molecular weight of 314.5 g/mol which is within the recited range of 150-450 g/mol, satisfying Claim 1. It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of MURRAY with the teachings of KALIVRETENOS and use cannabidiol as the template cannabinoid as cannabidiol is a cannabinoid of particular interest research, commercialization, medicinal use and/or recreational use.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4, 6, 10-17 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It is noted that withdrawn Claims 30-31 have been cancelled. Claims 19-21 and 23-25 remain withdrawn from consideration.
The amendment to the specification addresses informalities not pointed out by the examiner. This amendment has been reviewed, does not introduce new matter and has been accepted.
The amendments to Claims 4, 6, 10 and 15 resolve informalities noted in the previous office action. The objections to these claims have been withdrawn.
The amendment to Claim 2 removes the indefinite use the term “stryryl” as a noun. The rejection under 35 USC 112(b) has been withdrawn.
The amendments to Claims 10-13 have removed the use of the indefinite term “preferably”. These rejections under 35 USC 112(b) have been withdrawn.
The amendment to Claim 11 removes R1 from its limitation which could not satisfy this limitation due to limitations in Claim 10. The rejection under 35 USC 112(d) has been withdrawn.
The amendment to Claim 1 recited that the polymer is a product of substantially no non-crosslinking monomer is not supported by the specification. A rejection under 35 USC 112(a) for this claim and many of its dependent claims has been added above.
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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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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