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 of Group II, claims 25, 26, 28-30, 32, 34, 38, and 41-43 in the reply filed on October 14, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-6, 8, 10, 16, and 19-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 14, 2025.
Claim Objections
Claim 29 is objected to because of the following informalities: “group consisting of…oils or flavonoids” should recite “and”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 32 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph”. MPEP § 2173.05(p)(II) (citations omitted). Claim 32 depends from claim 25 which is an apparatus claim; however claim 32 recites “further comprising drying the biomass…” which is a step of using the thermal chamber of the apparatus. Therefore confusion arises whether claim 32 is a method or an apparatus claim.
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.
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.
Claim(s) 25, 26, 28-30, 32, 34, 38, and 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over Russell (WO 2015/049585 A2; see IDS).
Russell teaches an “apparatus for extracting an oil from plant material”, which “includes an extraction chamber for plant material” wherein the “plant material is exposed to a heated gas stream with a temperature sufficient to volatilize on oil from the plant material” (abstract; see p.1 line 20-p.2 line 18). The “oil” refers to “oils, saps, resins, oleoresins, lipids, terpinoids or otherwise volatilizable constituents… from plant materials” (p.1 lines 16-17). The apparatus comprises a gas moving device which propels gas streams through the system, one of which is heated. “A heater is disposed such that the gas stream flows through the heater, and the heater is operable to heat the gas stream to a temperature sufficient to cause volatilization of an oil to be extracted.” (Page 2 lines 22-24). An “extraction chamber has a receiving area for receiving plant material for extraction, the extraction chamber in communication with the heater such that the heated gas stream is directed through the receiving area, and the heated gas stream volatizes the oil from the plant material such that the volatilized oil is disposed in the heated gas stream” (p.2 lines 24-27; see Fig.1 and accompanying text)). Thus the extraction chamber is a “thermal chamber” wherein the plant material is received and is heated.
The gas moving device sends a second gas stream to a gas stream mixer which has “a first gas inlet in communication with the extraction chamber so as to receive the gas stream, the gas stream being a first gas stream, the gas stream mixer further having a second gas inlet receiving a second gas stream having a temperature less than the temperature of the first gas stream” (p.7 lines 17-20; p.10 lines 3-7). The mixture of the heated gas stream which carries volatilized oil from the extraction chamber and a collection solvent is “rapidly cooled to liquefy the oil into entrained droplets” (abstract; see p.1 lines 26-28, p.27 lines 2-7), i.e., condensed. The “gas stream mixer is a venturi mixer” (p.13 lines 17-18; see Fig.1 no.9, claim 116) comprising a Venturi section where the warmer first gas from the extraction chamber is “violently mixed with a cooler second gas stream” (p.27 lines 25-29) to result in agglomeration of the oil droplets (p.27 line 29-p.28 line 6). Thus in the Venturi section of the gas stream mixer the circulating gas stream acts as a motive fluid which creates a pressure drop (p.28 lines 20-21) as it mixes with the heated gas stream. The mixer 9 comprises a discharge port (see Fig.1).
Regarding the vacuum pressure in claim 41, Russell notes the drop in pressure in the mixed gas stream past the Venturi mixer: “the pressure drop that results from directing the first and second gas stream 8a, 8b through the gas stream mixer 9” (p.28 lines 20-21). The “gas stream may be at or near atmospheric pressure, …or in a state of partial vacuum” (p.50 lines 2-4 (emphases added)). “Partial vacuum” and “near atmospheric pressure” indicates a value between 15-29 inHg in claim 41, the atmospheric pressure being about 29.82 inHg.
Regarding the motive fluid, Russell teaches “the gas stream may be altered from a standard air mixture by the addition of an inert gas, a non-oxidizing gas, and/or a reducing gas” such as carbon dioxide, “for avoiding combustion, increasing extraction, or altering the extraction process” (p.50 lines 5-7).
“An agglomeration chamber is connected to the gas stream mixer so as to receive the aggregate gas stream, the agglomeration chamber having an outlet connected to the inlet of the gas moving device” (p.14 lines 16-28), i.e., for recovery of the motive fluid. The small plant oil droplets grow into larger droplets “to be more effectively collected in downstream sections of the system” (p.28 lines 4-5).
Regarding claims 26, 28, and 30 which recite the biomass, it is noted that these do not comprise a part of the apparatus system of claim 25. In other words the claims are drawn to how the apparatus system is to be used. 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. MPEP § 2111.02. Here Russell does not limit the plant material to any specific plants or plant parts (p.23 line 23-p.24 line 2). Previously dried plant material may be used (p.23 line 28).
Regarding claim 43, Russell teaches a splitter 2 which serves as a gas/liquid separator (p.29 lines 8-9).
Russell does not specifically teach using a suction connection as in claim 25.
However it would have been prima facie obvious for one having ordinary skill in the art before the effective filing date to use a suction connection between the extraction chamber or the thermal chamber and the eductor or the Venturi section of the gas steam mixer as recited in claim 25. The skilled person would have motivated to do so in order to control the feed rate of the volatilized oil from the extraction chamber.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to H. S. PARK whose telephone number is (571)270-5258. The examiner can normally be reached on weekdays.
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/H. SARAH PARK/Primary Examiner, Art Unit 1614