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 .
Detailed Action
Restriction/Species Election
The election without traverse of Group I, claims 1-5 and 16 in the remarks submitted 10/14/2025 was acknowledged.
The election of the following species was also acknowledged. The elected species include:
-cannabidiol (cannabinoid)
-oleic acid (fatty acid)
-ethanol (C2-4 alcohol)
-ascorbyl palmitate (antioxidant)
Claims 6-15 and 17-20 were withdrawn in the prior office action.
Rejections
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.
KSR Rationales
The MPEP in section 2143, subsection I gives examples of Rationales for supporting a conclusion of obvious. These rationales are non-exhaustive and include (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Claim(s) 1-5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Athenion (EP3421096, published 01/02/2019), in view of Fasinu (Pharmacotherapy, Vol. 36, No. 7, 2016), Bandelin (Bandelin, SONOPULS Ultrasonic Homegenisers, Brochure, url= https://bandelin.com/en/products/lab/sonopuls-ultrasonic-homogenisers/?srsltid=AfmBOopCRhpKruhf1I3UzAG4donTQygZPXd0b69sCWAwXFk2Jl2Jv9m6, accessed 12/04/2025).
Claim 1 is drawn to a method of solubilizing a cannabinoid comprising creating a first composition composed of a cannabinoid in a range of 10% to 45% by weight of the first composition and at least one medium-chained triglyceride in the range of 55% to 90%, wherein the two components are mixed at a temperature range of 15oC to 40oC, then creating a second composition comprising at least one non-hydrogenated phosphatidylcholine in a range of 60% to 85%, at least one non-hydrogenated lysophosphatidylcholine in a range of 5% to 30%, at least on C2-C4 alcohol in the range of 3% to 30%, and at least one saturated or unsaturated C14 to C20 fatty acid in the overall range of 1% to 15%, wherein the ratio of non-hydrogenated phosphatidylcholine to one non-hydrogenated lysophosphatidylcholine is in a range of 15:1 to 2:1, followed by mixing the two compositions under stirring and using ultrasonic treatment, and wherein the ratio of first composition to second composition is 9:1 to 3:2, followed by heating the mixture to a final temperature of 100oC to 130oC and then allowing the final mixture (solubilisate) to cool down to room temperature. Claim 1 also specifies that the resulting solubilisate is neither an emulsion or a suspension.
Dependent claims 2-3 are drawn to embodiments wherein the C14 to C20 fatty acid is oleic acid (claim 2), the C2 to C4 alcohol is ethanol (claim 3).
Dependent claims 4-5 are drawn to embodiments further comprising at least on antioxidant in the range of 0.01% to 10% (claim 4) and the antioxidant is ascorbyl palmitate (claim 5).
Dependent claim 16 is drawn to an embodiment wherein the final temperature is held for a range of 1 to 2 hours.
Athenion on p. 4, para. [0022] discloses a method for solubilizing a cosmetic agent shown below.
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The method provides mixing a phosphatidylcholine, a lysophosphatidylcholine, a medium-chained triglyceride, a C2 to C4 alcohol, a saturated or unsaturated C14 to C20 fatty acid in ranges that overlap with the instant ranges.
Athenion in para. [0025] defines a solubilisate as “the composition of the at least one cosmetic agent to be solubilized and the solubilizing agents as defined accord to the invention. Further, addition of a solvent or a diluent shall not be covered by this term. The solubilisate according to the invention is produced first by the solubilization method according to the invention, then a specific cosmetic preparation is produced with said solubilisate, and finally said cosmetic preparation is packaged into a suitable container for the respective cosmetic product.” Similar language is found in the instant specification p. 9-10. The specific paragraph is recited below.
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Athenion further differentiates its solubilisate from a suspensions and emulsions in para. [0028], shown below.
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Regarding claim 2, Athenion in para. [0048] contemplated oleic acid as a saturated or unsaturated C14 to C20 fatty acid. Athenion in reference claim 2 also specifies oleic acid.
Regarding claim 3, Athenion in para. [0045] contemplates ethanol as one C2 to C4 alcohol. Reference claim 3 also specifies ethanol.
Regarding the antioxidant limitation in claims 4 and 5, Athenion in para. [0061]-[0062] contemplates the addition of an antioxidant in ranges that overlap with the claimed range. Athenion includes ascorbyl palmitate and specifically says “Preferred are ascorbyl palmitate…”.
Athenion in para. [0001] states “The present invention relates to a method for solubilizing poorly water-soluble cosmetic agents…”.
Athenion does not discuss cannabidiol or mixing using ultrasonic frequency. This is addressed by the combination of Fasinu and Bandelin.
Fasinu is a review of cannabidiol preparations as therapeutic agents (title). Fasinu on p. 784, sec. Pharmacokinetics of Cannabidiol, para. 2 states “Oral delivery of an oil-based capsule formulation of CBD has been assessed in humans. Probably due to its poor aqueous solubility, the absorption of CBD from the gastrointestinal tract is erratic, and the resulting pharmacokinetic profile is variable.”
Fasinu on p. 782, right col., states “[Cannabidiol] has shown beneficial anticonvulsant properties through novel mechanism not involving the classic cannabinoid receptors, and many of the adverse effects of Δ9-THC appear to be absent. A significant amount of preclinical data and supporting anecdotal evidence are available in humans regarding the effectiveness of cannabinoids in the treatment of epilepsy and especially severe seizure syndromes in children…”.
Regarding the use of ultrasonic treatment, Bandelin is broadly drawn to a line of ultrasonic homogenizers which are used to more finely mix compositions. Bandelin on p. 11, sec. Ultrasonic homogenizer vs. ultrasonic bath states “Compared to ultrasonic baths, ultrasonic homogenisers can be used to carry out difficult processes, such as the production of stable emulsions, the disruption of cells, the acceleration of chemical processes or the extraction of substances, as these devices deliver highly concentrated, extremely high energy densities. The emitted sound energy can be regulated in a controlled manner.”.
Regarding claim 16, the claim simply holds the final temperature (100oC to 130oC) for a length of time. Similarly, claim 1 claims ratios of the first composition to second composition. These limitations are well within the skillset of one of ordinary skill. One of ordinary skill could hold the temperature of the mixing for any length of time. Athenion also states “Adding in any sequence…” which implies that one of ordinary skill could modify the method to include the specific ratios claimed and to mix the compositions as claimed.
The MPEP section. 2144.05, subsection II(A) states
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum of workable ranges by routine experimentation." Application of Aller, 220 F.2d 454, 456, 105 USPQ 233, 235-236 (C.C.P.A. 1955). "No invention is involved in discovering optimum ranges of a process by routine experimentation." Id. at 458, 105 USPQ at 236-237. The "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." Application of Boesch, 617 F.2d 272, 276, 205 USPQ 215, 218-219 (C.C.P.A. 1980).
Since Applicant has not disclosed that the specific limitations recited in instant claims are for any particular purpose or solve any stated problem, and the prior art teaches that parameter magnitudes that are encompassed by instant claims, often vary according to the sample being analyzed and various matrices, solutions and parameters appear to work equally as well, absent unexpected results, it would have been obvious for one of ordinary skill to discover the optimum workable ranges of the methods disclosed by the prior art by normal optimization procedures known in the art.
Bandelin on p. 5 shows a product history dating back to 1964. This indicates that the use of ultrasonic frequency is well known within the art.
Athenion teaches a method of solubilizing a cosmetic ingredient that has poor aqueous solubility. Said method includes the individual components which are the medium-chained triglyceride, the non-hydrogenated phosphatidylcholine, the non-hydrogenated lysophosphatidylcholine, alcohol, and fatty acid. The Athenion method also teaches heating of the mixture. Where the Athenion method differs from the instant claims is that that instant claims specifies making two separate compositions comprising the ingredients listed above before mixing the two compositions via heating and ultrasonic frequency. Additionally, the Athenion reference does not mention cannabidiol.
The Bandelin reference addresses the ultrasonic frequency limitation. The use of ultrasonic frequency is well-known within the art and one of ordinary skill would at least be able to use the technology to predictably create a homogenized mixture.
Fasinu discusses CBD as an effective pharmaceutical compound. Fasinu also states that CBD is limited by its poor aqueous solubility. Athenion explicitly states that the method of its invention is intended for the solubilization of compounds with poor aqueous solubility. Therefore, one of ordinary skill would find it obvious to apply the method in Athenion to CBD in order to better dissolve CBD for other applications.
As the nature of the invention is a method of mixing components, the use of ultrasonic frequency as discussed in Bandelin would also be obvious since Bandelin discusses methods of mixing components.
Therefore, it would have been prima facie obvious at the time of the effective filing date for one of ordinary skill in the art to have applied the method of Athenion to a compound with poor aqueous solubility such as cannabidiol (CBD) with a reasonable assumption of success. The combination of ultrasonic frequency would have also been prima facie obvious at the time of the effective filing date as Bandelin indicates that ultrasonic frequency is a known technique to dissolve and/or solubilize components into homogenous mixtures.
One of ordinary skill would find motivation to apply the method of Athenion and the ultrasonic frequency mixing in Bandelin to CBD as Athenion states the method is specifically for solubilizing compounds with poor aqueous solubility.
Response to Arguments
Applicant’s arguments are not persuasive.
Applicant argues that the “method of Athenion could not be simply transferred to a pharmaceutical cannabinoid since it did not yield satisfactory results. Modifications of the method had to be found that are not taught by Athenion.” Applicant lists the modifications, below.
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These modifications are all modifications that one of ordinary skill would find obvious, especially in the pursuit of applying a known method to a different compound that is desired to be solubilized. For example, the method taught in Athenion does not exclude making two separate compositions that are then mixed, especially because Athenion’s method states “Adding in any sequence”. This teaching implies that the solubilization agents can be mixed together entirely separate from the first composition, and then added. The differing weight percentages, final heating temperature, and holding the final temperature are also known techniques within the art. Similarly, ultrasonic treatment, which is taught by Bandelin, is also a technique that is well known within the art. The synthesis of these techniques are all within the skillset of one of ordinary skill.
Regarding the emphasis of non-hydrogenated phosphatidylcholines and non-hydrogenated lysophosphatidylcholines, Athenion contemplates components that applicant has elected which are oleic acid, ethanol, and ascorbyl palmitate. The election of a non-hydrogenated lysophosphatidylcholine would also be within the skillset of one of ordinary skill. The lysophosphatidylcholines of the instant disclosure are contemplated by Athenion as shown below.
Instant specification, p. 17
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Athenion, para. [0043]
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If applicant is arguing that the combination of phosphatidylcholines and lysophosphatidylcholines that are contemplated in the reference do not work, then applicant’s own invention would also not function. Applicant has not shown how the reference method fails where the instant claims succeed.
Applicant also states that the “Office Action fails to state why a galenic expert that has received the task to develop a patient-friendly dosage form for cannabinoid medications would refer to a method exclusively for cosmetics and then develop this method to a liquid oral dosage form. There is no rationale for such an approach…”. KSR rationale F, which states “Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art”, addresses this. Athenion is indeed directed at methods to create solubilisates for cosmetic products. However, the method very clearly is a method to enhance solubility of a poorly-soluble compound. Athenion teaches creating a solubilisate to enhance its solubility is an effective way to increase solubility of a poorly-soluble compound. It would be obvious to apply this method to a non-cosmetic compound such as a cannabinoid.
Conclusion
No claims allowed.
THIS ACTION IS MADE FINAL. 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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/L.G./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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