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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 2, 2026 has been entered.
Status of Claims
Claims 1 and 3-24 are pending. Claim 2 is canceled. Claims 1, 4-7 and 24 are amended. Claims 8-16, previously withdrawn as being drawn to a non-elected invention or species, are examined herein as to all species
Claims 1-7 and 17-24 are examined on their merits in light of the elected species of octyldodecanol.
Rejections Maintained
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
The rejection of claims 1-7 and 17-24 under 35 U.S.C. 103 as being unpatentable over CN 104232308 (12/24/2014)(“CN”) in view of Imbert et al. FR 3091993 (published 7/31/2020 and filed 1/29/2019) and Nortier et al. WO 2020/087127 (published 5/7/2020, filed 2/5/2019) is maintained.
CN teaches a supercritical extraction method of sandalwood root which comprises the steps of freeze drying the sandalwood root, crushing the sandalwood root with a pulverizer, conducting supercritical carbon dioxide extraction of sandalwood root, collect the root extract and then centrifuging the extract. (See Abstract and claims 1 and 2). CN thus teaches the supercritical carbon dioxide extraction of sandalwood root to obtain the sandalwood extract as called for in instant claim 1. The extraction temperature is 50 degrees to 65 degrees Celsius. (See CN claim 3). The extraction pressure is 35 MPa (which is 300 bar). (See CN claim 3).
The supercritical fluid is carbon dioxide is called for in instant claim 1. 50 degrees to 65 degrees Celsius overlaps with the between 55 and 65 degrees Celsius called for in instant claim 6. 300 bar falls within the between 250 and 400 bar called for in instant claim 6.
50 degrees to 65 degrees Celsius overlaps with the between 45 and 75 degrees Celsius called for in instant claim 20 and overlaps with the between 55 and 65 ˚C called for in claim 21. 300 bar falls within the between 150 and 700 bar called for in instant claim 22. 300 bar also falls within the between 250 and 400 bar called for in instant claim 22.
CN does not teach performing the extraction using supercritical carbon dioxide in the presence of a co-solvent or evaporating the co-solvent. CN also does not teach ethanol as a co-solvent or solubilizing the crude extract with octyldodecanol. CN does not teach starting with spent sandalwood. These deficiencies are made up with the teachings of Imbert et al. and Nortier et al.
Imbert et al. (Imbert) teaches a process or obtaining an extract of patchouli leaves and its cosmetic uses. (See Abstract). Imbert teaches that the patchouli extract is obtained through a process of using supercritical carbon dioxide and an aqueous alcoholic co-solvent of water and ethanol. The amount of ethanol is 50 to 96% ethanol. It is the 96% water called for in instant claims 1 and 3. 50-96% ethanol in water overlaps with the 95-96% called for instant claim 1. This is 50% water as called for in instant claim 1a). Imbert teaches that these extracts are useful for skin care and other cosmetic uses.
Imbert teaches that the mass ratio between carbon dioxide and the hydro-alcoholic solution of ethanol is approximately 15. Indeed, Imbert teaches that it is well known to use supercritical carbon dioxide and it is advantageous because it does not damage the extract. (See [0028] on page 8). Imbert teaches that ratios of supercritical carbon dioxide to the amount of raw material involved (dried patchouli leaves) are preferably between 25 and 55. (See [0036] on page 9). Between 25 and 55 overlaps with the between 20 and 40 called for in claims 5 and 18 and also overlaps with the between 25 and 35 called for in claim 19.
Indeed, Imbert teaches that the supercritical carbon dioxide is a results-effective variable and as such it would be no more than routine experimentation to experiment to arrive at the claimed ratios of supercritical fluid to co-solvent in instant claims 4 and 17.
Imbert teaches a subsequent step in which the hydro-alcoholic solvent is evaporated. (See [0030] on page 6). This reads on the evaporation of the extract called for in instant claim 1 d). This leaves a crude extract which is in pasty form as called for in instant claim 1d). (See [0040]) on page 10).
Imbert teaches a subsequent step in which the crude extract is in pasty form and a next step the crude pasty extract is solubilized in octyldodecanol and in the solubilization step in the solubilized solution is found between 2 and 6% crude extract of Patchouli. 2% is very close to the 1.5% crude extract in solubilized extract called for in instant claims 7 and 24. (See [0042]). Imbert teaches that octyldodecanol is a physiologically acceptable solvent and acceptable liquid carrier for the molecules of interest that is suitable for the subsequent cosmetic use of the components. (See [0045]). Octyldodecanol is called for in instant claim 24.
Nortier et al. teaches a process and apparatus for the continuous steam distillation of sandalwood to produce high quality sandalwood oil with improved efficiency. (See Abstract). Nortier teaches that spend sandalwood is continuously and plentifully produced as a valuable by-product of its distillation processes as it is used in the manufacture of incense. (See [0009]). Spent sandalwood is depleted sandalwood as called for in instant claim 1.
Nortier teaches that sandalwood, in addition to acting like feedstock for the production of the essential oil, is very valuable for varying and the manufacture of incense. Sandalwood are slow growing and take up to 60 years to grow and the process by which they are harvested completely destroys the tree. (See [0005]). There is therefore a need to maximize the use of the harvested trees.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following the CN method of supercritical carbon dioxide extraction at 50 degrees to 65 degrees Celsius and 35 MPa (300 bar) to use a 50 to 96% ethanol in water co-solvent in light of the advantages taught by Imbert of the method having a solvent mixture that is totally neutral, non-toxic, non-flammable and able to be used at a fairly low temperature so the method does not denature any of the extract components. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to then evaporate the hydroalcoholic ethanol solution in order to obtain a pasty crude extract as taught by Imbert. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to then solubilize the crude pasty extract with octyldodecanol to achieve 2% crude sandalwood extract as taught by Imbert in order to have a physiologically acceptable solvent and acceptable liquid carrier for the molecules of interest that is suitable for the subsequent cosmetic use of the components as taught by Imbert. There would have been a reasonable expectation of success because CN and Imbert teaches specific processes for the extraction of natural products from plant material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following the CN method of supercritical carbon dioxide extraction at 50 degrees to 65 degrees Celsius and 35 MPa (300 bar) to use spent sandalwood and add 50 to 96% ethanol in water co-solvent in light of the advantages taught by Imbert of the method having a solvent mixture that is totally neutral, non-toxic, non-flammable and able to be used at a fairly low temperature so the method does not denature any of the extract components in light of the teachings of Nortier that spent sandalwood is very plentifully produced in its process and is valuable since it is capable of being used as incense. There would have been a reasonable expectation of success because CN and Nortier are directed to sandalwood specifically and processes involving processing sandalwood plant material.
Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because the prior art is suggestive of the claimed invention.
Response to Arguments
Applicants’ comments of February 2, 2026 have been fully reviewed and are found to be unpersuasive for the reasons described below.
Applicants note the amendments to the claims and point to the support in the originally filed claims.
Applicants argue that CN104232308 (“CN”) fails to teach or suggest using to use a depleted sandalwood as raw material, to use ethanol at a concentration between 90 and 100% volume/volume in water as a polar co-solvent and in a weight ratio of supercritical fluid carbon dioxide to ethanol between 0.050 and 0.080.
Applicants argue that claim 1 possesses a distinguishing feature and solves the technical problem over CN, Imbert and Nortier, neither disclose the distinguishing feature “depleted sandalwood” nor provide a skilled person with a motivation to use the depleted sandalwood. Applicants assert that one of ordinary skill in the art would not have had a reasonable motivation to combine CN, Imbert and Nortier as these references pertain to fundamentally different plant materials, extraction goals and end-use applications. CN focuses on supercritical CO2 extraction of fresh sandalwood root for general extract recovery, Imbert targets volatile fragrance compounds from patchouli leaves for cosmetic use, and Nortier describes steam distillation of sandalwood for incense production, without any mention of cosmetic applications or semi/non-volatile compounds.
Applicants argue that Imbert described an extract derived from a different part of the plant (the leaves) and a different plant than sandalwood in patchouli. These plants have different chemical compositions, affecting how they respond to extraction and solubilization.
Applicants point out that the currently amended claims distinguish over Imbert et al. by introducing specific and narrowly defined quantitative parameters that are neither disclosed nor suggested in the cited reference. Particularly, the amended claims recite an extraction method using supercritical carbon dioxide in the presence of ethanol with a weight ratio of supercritical carbon dioxide to ethanol between 0.050 and 0.080. Applicants note that routine optimization is not appropriate here because the general conditions of a claim are not entirely disclosed in the prior art as depleted sandalwood is not being used in the prior art.
Applicants’ arguments have been carefully reviewed and are not found to be persuasive. With respect to Applicants’ assertion that the prior art is not using depleted sandalwood, the rejection applied above does utilize spent sandalwood which is depleted sandalwood. Additionally, there is a design need and market pressure to solve a problem where there are a finite number of solutions as Nortier explains that sandalwood is a previous resource which must be preserved because it is so valuable. Specifically, Nortier teaches that sandalwood, in addition to acting like feedstock for the production of the essential oil, is very valuable for varying and the manufacture of incense. Sandalwood are slow growing and take up to 60 years to grow and the process by which they are harvested completely destroys the tree. (See [0005]). There is therefore a need to maximize the use of the harvested trees. Therefore, the use of routine optimization for those recognized results-effective variables is appropriate as described in the rejection above.
Applicants’ arguments that the extraction conditions taught by CN are not useful because CN does not teach or suggest the use of a polar co-solvent, such as ethanol during the supercritical extraction process is not found to be persuasive because these teachings are found in the Imbert prior art reference, namely the use of ethanol in combination with supercritical carbon dioxide in an extraction process. Applicants’ arguments that the supercritical carbon dioxide extraction conditions taught by CN are not useful because CN does not teach spent sandalwood are also not found to be persuasive. Imbert teaches that its extraction conditions are relevant to general raw material and refers to the relative amounts of supercritical carbon dioxide and dried patchouli leaves as the ratio between the supercritical carbon dioxide and the raw material (in its instance dried patchouli leaves). Thus Imbert suggests in its teachings that its parameters and conditions in its extraction process are relevant to more than just dried patchouli leaves and could be used with other raw plant material. (See [0036] on page 9).
Applicants’ arguments that process conditions for the use of ethanol in an extraction in Imbert are not useful because patchouli leaves are being extracted instead of spent sandalwood are not found to be persuasive. Respectfully, just because a particular prior art reference is missing an element of the claimed invention, does not negate the valid and instructive teachings that it does have. If this were the case, nothing requiring more than one prior art reference would ever render any claimed invention obvious.
Additionally, Applicants’ arguments do not give the ordinary skilled artisan the credit that they are due. The ordinarily skilled artisan is a skilled formulator and would be familiar with commonly used extraction processes and techniques for natural products, including spent natural products. A skilled formulator would not need to have each modification laid out for them but would have considerable skill in knowing how to apply the teachings of the references, especially when all of the claimed elements of the methods are there and there is motivation to combine the teachings, as in this instance.
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 410, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 409, 82 USPQ2d at 1396.
Applicants’ argument that one of ordinary skill in the art would not have had a reasonable motivation to combine CN, Imbert and Nortier as these references pertain to fundamentally different plant materials, extraction goals and end-use applications is not persuasive because there is nothing in the different plant materials, extraction goals and end-use applications that teaches away or discourages a person of ordinary skill in the art from combining the teachings of CN, Imbert and Nortier. CN and Imbert teach processes for the extraction of natural products from plant material. CN and Nortier are directed to sandalwood specifically and processes involving processing sandalwood plant material.
Additionally, Applicants’ argument that one of ordinary skill in the art would not have had a reasonable motivation to combine CN, Imbert and Nortier as these references pertain to fundamentally different plant materials, extraction goals and end-use applications is not persuasive because it does not address the express motivations that are explicitly laid out in the obviousness rejection.
As described in the obviousness rejection it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following the CN method of supercritical carbon dioxide extraction at 50 degrees to 65 degrees Celsius and 35 MPa (300 bar) to use a 50 to 96% ethanol in water co-solvent in light of the advantages taught by Imbert of the method having a solvent mixture that is totally neutral, non-toxic, non-flammable and able to be used at a fairly low temperature so the method does not denature any of the extract components. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to then evaporate the hydroalcoholic ethanol solution in order to obtain a pasty crude extract as taught by Imbert. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to then solubilize the crude pasty extract with octyldodecanol to achieve 2% crude sandalwood extract as taught by Imbert in order to have a physiologically acceptable solvent and acceptable liquid carrier for the molecules of interest that is suitable for the subsequent cosmetic use of the components as taught by Imbert. There would have been a reasonable expectation of success because CN and Imbert teaches specific processes for the extraction of natural products from plant material.
It would also have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following the CN method of supercritical carbon dioxide extraction at 50 degrees to 65 degrees Celsius and 35 MPa (300 bar) to use spent sandalwood and add 50 to 96% ethanol in water co-solvent in light of the advantages taught by Imbert of the method having a solvent mixture that is totally neutral, non-toxic, non-flammable and able to be used at a fairly low temperature so the method does not denature any of the extract components in light of the teachings of Nortier that spent sandalwood is very plentifully produced in its process and is valuable since it is capable of being used as incense. There would have been a reasonable expectation of success because CN and Nortier are directed to sandalwood specifically and processes involving processing sandalwood plant material.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights