Office Action Predictor
Last updated: April 16, 2026
Application No. 18/010,303

METHOD OF EXTRACTION

Non-Final OA §102§103
Filed
Dec 14, 2022
Examiner
KARST, DAVID THOMAS
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Foresta Group Holdings Limited
OA Round
1 (Non-Final)
64%
Grant Probability
Moderate
1-2
OA Rounds
2y 11m
To Grant
78%
With Interview

Examiner Intelligence

Grants 64% of resolved cases
64%
Career Allow Rate
629 granted / 977 resolved
-0.6% vs TC avg
Moderate +14% lift
Without
With
+14.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
58 currently pending
Career history
1035
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
49.3%
+9.3% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
24.6%
-15.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 977 resolved cases

Office Action

§102 §103
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 Applicant’s election without traverse of Group I (claims 1-8, 11, 13, 14, and 17) in the reply filed on 11/26/2025 is acknowledged. Claims 22, 24, 29-33, and 35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/26/2025. Priority Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S .C. 120, 121, 365(c), or 386(c) is acknowledged. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Objections Claims 2-8, 11, 13, and 17 are objected to because of the following informalities: Claims 2-8, 11, 13, and 17 recite “Claim”, which is a capitalized word that is not at the beginning of the claim (see MPEP 608.01(m)) . The Office suggests that Applicant change this to “claim”. Appropriate correction is required. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale , or otherwise available to the public before the effective filing date of the claimed invention. Claim s 1 , 2, 4, 7, 13, and 14 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Bashlin (US 1,059,261, cited in IDS) . Regarding claim 1, Bashlin teaches a process of extracting rosin and other by-products from wood, wherein the process consists essentially in applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products, taking up the latter in solution, and then separating the rosin from the turpentine (1:10-17), which reads on a method for extracting rosin fractions from a resinous wood, said method including the step of treating/contacting the resinous wood with an agent that comprises, or consists essentially of a terpene to thereby extract the rosin fractions from the resinous wood as claimed , Regarding claim 2, Bashlin teaches that the wood is wood reduced to small pieces (1:37-38) , that the resin bearing wood is in comminuted condition, such as chips (2:33-34), and that the wood is chips or comminuted wood (2:50-53), which reads on the method of Claim 1, further including the initial step of at least partly subdividing the resinous wood as claimed. Regarding claim 4, Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27), which reads on the method of Claim 1, further including the step of separating the rosin fraction and the terpene fraction extracted from the resinous wood as claimed. Regarding claim 7, Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27), which reads on the method of Claim 1, further including the subsequent step of heating the resinous wood treated with the agent to at least partly remove residual portions of the agent and/or the terpene fraction therefrom as claimed. Regarding claim 13, Bashlin satisfies the limitation wherein the terpene fraction comprises at least about 65%, at least about 70%, at least about 75%, or at least about 80% pinenes by weight thereof as claimed because claims 1 and 13 do not require that the method is a method for extracting terpene fractions from a resinous wood if the method is a method for extracting rosin from a resinous wood , and Bashlin’s teachings read on the method being a method of extracting rosin fractions from a resinous wood as explained above for claim 1. Also, claims 1 and 13 do not require the limitation “to thereby extract the terpene fractions from the resinous wood” if “to thereby extract the rosin fractions from the resinous wood” is satisfied, and Bashlin’s teachings satisfy “to thereby extract the rosin fractions from the resinous wood” as explained above for claim 1. Regarding claim 14, Bashlin satisfies the limitation wherein the terpene fraction: is substantially free of contaminants; comprises less than about 20%, less than about 10%, less than about 5%, less than about 2.5%, or less than about 1% terpene polymers by weight thereof; and/or comprises less than about 10%, less than about 5%, less than about 2.5%, less than about 1%, or less than about 0.5% synthetic pine oil by weight thereof as claimed because claims 1 and 14 do not require that the method is a method for extracting terpene fractions from a resinous wood if the method is a method for extracting rosin from a resinous wood, and Bashlin’s teachings read on the method being a method of extracting rosin fractions from a resinous wood as explained above for claim 1. Also, claims 1 and 14 do not require the limitation “to thereby extract the terpene fractions from the resinous wood” if “to thereby extract the rosin fractions from the resinous wood” is satisfied, and Bashlin’s teachings satisfy “to thereby extract the rosin fractions from the resinous wood” as explained above for claim 1. 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 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Bashlin (US 1,059,261, cited in IDS) as applied to claims 1 and 2 . Regarding claim 3, Bashlin teaches the method of Claim 2 as explained above. Bashlin teaches that the wood is wood reduced to small pieces (1:37-38), that the resin bearing wood is in comminuted condition, such as chips (2:33-34), and that the wood is chips or comminuted wood (2:50-53), which reads on wherein the period of time between the initial step of subdividing the resinous wood and treating the resinous wood with the agent is greater than 0 weeks. Bashlin does not teach that the period of time between the initial step of subdividing the resinous wood and treating the resinous wood with the agent is no more than about 8 weeks, no more than about 4 weeks, or no more than about 2 weeks. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select , as Bashlin’s wood bearing the rosin and other products, wood reduced to small pieces, wood in comminuted condition, or wood chips , such that the wood is reduced to small pieces, placed in comminuted condition, or formed into wood chips no more than about 8 weeks before Bashlin’s step of applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products. The proposed modification would read on wherein the period of time between the initial step of subdividing the resinous wood and treating the resinous wood with the agent is no more than about 8 weeks as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for a more effective elimination of the rosin and turpentine from Bashlin’s wood and for preventing Bashlin’s wood from degrading before being subjected to Bashlin’s process because Bashlin teaches that the process of extracting rosin and other by-products from wood consists essentially of applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products (1:10-17), that the wood is wood reduced to small pieces to provide for a more effective elimination of the rosin and turpentine by the dissolving action of the combined turpentine and deodorized benzin (1:37-43), that the resin bearing wood is in comminuted condition, such as chips (2:33-34), and that the wood is chips or comminuted wood (2:50-53) , and because wood reduced to small pieces, wood in comminuted condition, and wood chips degrade over time. Regarding claim 8, Bashlin teaches the method of claim 1 as explained above. Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27), which reads on wherein the step of treating the resinous wood with the agent is performed for a period of time of greater than 0 minutes, at a temperature that is greater than room temperature, which is greater than about 20 °C or greater than about 2 5 °C, and at a pressure that is atmospheric pressure, which is about 14 psi to about 15 psi. Bashlin does not teach that the step of treating the resinous wood with the agent is performed for a period of time from about 15 minutes to about 120 minutes, and at a temperature from about 75 °C to about 155 °C. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the p eriod of time and the temperature of Bashlin’s step of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, and taking up the rosin in solution under the action of heat to be for a period of time from about 15 minutes to about 120 minutes, and at a temperature from about 75 °C to about 155 °C. The proposed modification would read on wherein the step of treating the resinous wood with the agent is performed for a period of time from about 15 minutes to about 120 minutes, and at a temperature from about 75 °C to about 155 °C as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing an amount of rosin and other by-products that are extracted from wood in Bashlin’s process because Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27), which means that the period of time and the temperature of Bashlin’s step of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, and taking up the rosin in solution under the action of heat is greater than 0 minutes, and greater than room temperature, which is greater than about 20 °C or greater than about 25 °C, respectively, which means that the period of time and the temperature of Bashlin’s step of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, and taking up the rosin in solution under the action of heat in minutes and °C, respectively, would have affected an amount of rosin and other by-products that are extracted from wood in Bashlin’s process. Claim s 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Bashlin (US 1,059,261, cited in IDS) as applied to claim 4, and further in view of Yaryan (US 915,400) Regarding c laim s 5 and 6 , Bashlin teaches the method of claim 4 as explained above. Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27). Bashlin does not teach that separating the rosin fraction and the terpene fraction is performed at least in part by distillation to produce a distillate that comprises, consists essentially of or consists of the terpene fraction and a residual stream that comprises, consists essentially of or consists of the rosin fraction , and does not teach that the method further includes the step of separating the terpene fraction from the distillate . However, Yaryan teaches a process of removing turpentine and rosin from resinous woods which consists, first, in treating the wood with a hydrocarbon solvent whereby the turpentine and rosin are removed in solution, second, by distilling fr o m this solution the greater part of the solvent and then the turpentine with the remaining solvent, whereby the rosin is recovered, and, third, by passing the mixture of turpentine and solvent through a rectifying column, to separate and recover the turpentine and solvent (2:49-60). Bashlin and Yaryan are analogous art because both references are in the same field of endeavor of a method for extracting rosin and/or terpene fractions from a resinous wood, said method including the step of treating/contacting the resinous wood with an agent. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use step s of distilling from Bashlin’s turpentine, benzin , and rosin, a greater part of Bashlin’s benzin and then Bashlin’s turpentine with the remaining Bashlin’s benzin , whereby Bashlin’s rosin is recovered, and passing Bashlin’s turpentine and Bashlin’s benzin through a rectifying column, to separate and recover Bashlin’s turpentine and Bashlin’s benzin to modify Bashlin’s step of separating the rosin from the turpentine. The proposed modification would read on wherein separating the rosin fraction and the terpene fraction is performed at least in part by distillation to produce a distillate that comprises, or consists essentially of the terpene fraction and a residual stream that comprises, or consists essentially of the rosin fraction as claimed , and the method of claim 5, further including the step of separating the terpene fraction from the distillate as claimed . One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for purifying Bashlin’s rosin and Bashlin’s turpentine because Yaryan teaches that in a process of removing turpentine and rosin from resinous woods, first, the wood is treated with a hydrocarbon solvent whereby the turpentine and rosin are removed in solution, second, the greater part of the solvent is distilled from this solution and then the turpentine is distilled with the remaining solvent, whereby the rosin is recovered, and, third, the mixture of turpentine and solvent is passed through a rectifying column, to separate and recover the turpentine and solvent (2:49-60) , and because Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27). Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bashlin (US 1,059,261, cited in IDS) as applied to claim 1, and further in view of Cook (US 2,757,169). Regarding c laim 11 , Bashlin teaches the method of claim 1 as explained above. Bashlin teaches that the process of extracting rosin and other by-products from wood consists essentially of applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products, taking up the latter in solution, and then separating the rosin from the turpentine (1:10-17). Bashlin does not teach that the resinous wood is treated in a counter-current/counter-flow manner with the agent. However, Cook teaches an extraction process that is an improved method for extracting resinous material from wood (1:10-12), wherein the process is suitable for countercurrent extraction techniques (3:31-33), where in the countercurrent extraction techniques, a quantity of wood is passed through a number of extraction stages and treated in each stage with, for example, an acetone-benzene portion (3:33-36), wherein the extract solutions are maintained separate from one another (3:36-38). Bashlin and Cook are analogous art because both references are in the same field of endeavor of a method for extracting rosin from a resinous wood, said method including the step of treating/contacting the resinous wood with an agent. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to perform Bashlin’s step of applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products as a countercurrent extraction, where in Bashlin’s wood bearing the rosin and other products is passed through a number of extraction stages and treated in each stage with Bashlin’s solvent embodying a mixture of refined turpentine and deodorized benzin , wherein Bashlin’s solvents in the number of extraction stages are maintained separate from one another, as suggested by Cook. The proposed modification would read on wherein the resinous wood is treated in a counter-current/counter-flow manner with the agent as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying effectiveness of Bashlin’s process of extracting rosin and other by-products from wood because Cook teaches that an extraction process that is an improved method for extracting resinous material from wood (1:10-12) is suitable for countercurrent extraction techniques (3:31-33), where in the countercurrent extraction techniques, a quantity of wood is passed through a number of extraction stages and treated in each stage with, for example, an acetone-benzene portion (3:33-36), wherein the extract solutions are maintained separate from one another (3:36-38), and because Bashlin teaches that the process of extracting rosin and other by-products from wood consists essentially of applying a solvent embodying a mixture of refined turpentine and deodorized benzin to the wood bearing the rosin and other products, taking up the latter in solution, and then separating the rosin from the turpentine (1:10-17). Allowable Subject Matter Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 17, Bashlin (US 1,059,261, cited in IDS) teaches the method of claim 1 as explained above. Bashlin teaches that the process of extracting rosin and other by-products from wood (1:10-12) consists of applying a mixture of refined turpentine and decolorized benzin to rosin bearing wood, taking up the rosin in solution under the action of heat, separating the rosin from the turpentine, then extracting the residual turpentine from the wood, and conserving the wood as freed from rosin, turpentine, and other by-products for use in making paper or other pulp (1:18-27), which reads on wherein the rosin fraction: is substantially free of contaminants. Bashlin does not teach that the rosin fraction: has a Gardner color number of no more than about 8, has an acid value between about 160 to about 175, and comprises an abietic acid content in the range from about 15% to about 35%, about 15% to about 25%, or about 15% to about 20% by weight thereof. The prior art of record do not teach , suggest , or provide guidance on modifying Bashlin’s process, such that Bashlin’s rosin has a Gardner color number of no more than about 8, has an acid value between about 160 to about 175, and comprises an abietic acid content in the range from about 15% to about 35%, about 15% to about 25%, or about 15% to about 20% by weight thereof. Also, Bashlin’s rosin would not inherently have the claimed Gardner color number, acid value, and abietic acid content because they would depend on structure of the resinous wood and rosin and on process conditions. Furthermore, the prior art of record do not teach or suggest selecting the rosin fraction in the method of claim 1 to have a Gardner color number of no more than about 8, to have an acid value between about 160 to about 175, and to comprise an abietic acid content in the range from about 15% to about 35%, about 15% to about 25%, or about 15% to about 20% by weight thereof . Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT DAVID KARST whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7732 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday 8:00 AM-5:00 PM . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Mark Eashoo can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1197 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DAVID T KARST/ Primary Examiner, Art Unit 1767
Read full office action

Prosecution Timeline

Dec 14, 2022
Application Filed
Dec 16, 2025
Non-Final Rejection — §102, §103
Mar 27, 2026
Response Filed

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Prosecution Projections

1-2
Expected OA Rounds
64%
Grant Probability
78%
With Interview (+14.1%)
2y 11m
Median Time to Grant
Low
PTA Risk
Based on 977 resolved cases by this examiner. Grant probability derived from career allow rate.

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