DETAILED ACTION
Claims 1-21 are pending and under consideration in this 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 .
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. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/198,747, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
In particular, App. No. 16/198,747 fails to support or enable the use of a mobile rendering vehicle for destruction of controlled substances as recited in instant claims 7-9 and 11-15. Accordingly, claims 7-9 and 11-15 are not entitled to the benefit of the filing date of the 16/198,747 application.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 5-9, and 11-21 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 has been amended to recite the term “controlled substances” in place of the previous “cannabis related waste materials.” Controlled substances is considerably broader than cannabis related waste material. Neither the claims nor the specification as filed support a method for disposal of any substance beyond cannabis related waste materials. In making the amendment, Applicant pointed to paragraphs [0003], [0008], [0033], and [0045] as supporting the amendments to claim 1. However, while paragraphs [0003] and [0008] mention that cannabis is a controlled substance, none of the cited paragraphs actually support rendering the broad range of controlled substances for disposal beyond cannabis related waste material.
Claims 2-4 and 10 are limited to cannabis related materials and are thus supported by the application as filed. The remaining claims are not limited to cannabis related waste materials and are thus broader than the originally disclosed invention.
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.
Claims 1, 5-9, and 11-21 are 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.
Claim 1 recites the term “controlled substances”. This term is not defined in the specification. Further, one of ordinary skill in the art would understand that what constitutes a “controlled substance” is depends on the laws in any given jurisdiction, which can vary and are subject to change. Accordingly, it is unclear what substances are covered by the term “controlled substances.” Claims 5-9 and 11-21 depend from claim 1 and fail to resolve the ambiguity in the term and are thus also indefinite.
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.
Claims 1-5, 7, 10, 12-13, 18, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Colorado Department of Revenue – Marijuana Enforcement Divisions, 1 CCR 212-2, Permanent Rules Related to the Colorado Retails Marijuana Code, September 9, 2013 (“Colorado”, cited in IDS of 10/10/22).
Regarding claim 1, Colorado describes laws that include the disposal of marijuana wastes, which are considered controlled substances (see e.g. R 307 on page 41). Colorado law suggests that the marijuana can under grinding and mixing with non-marijuana waste, which is a physical alteration that will result in smaller particle sizes (see e.g. R 307 E on page 41). The ground waste can then be combined with items like compost activators, which will result in a chemical alteration of the waste (see e.g. R 307 E(f)). Under Colorado law, all waste must be made unusable and unrecognizable (see e.g. R 307 D on page 41). Although Colorado law does not describe the actual process of disposal, given the suggested methods of disposal, prior to the effective filing date of the application, it would have been obvious to a person of ordinary skill in the art to physically and chemically alter the marijuana waste as suggested by the law.
Regarding claim 2, Colorado law suggests the method specifically for cannabis related waste (see e.g. R307 on page 41).
Regarding claim 3, Colorado law suggests that the marijuana waste can be combined with other items as well as compost activators, which would be a pre=compost blend (see e.g. R 307 E on page 41). Colorado further suggests that this pre-compost blend is subsequently transformed into compost (see e.g. R 307 F(2)).
Regarding claim 4, Colorado suggests that the process be used for retail marijuana product waste (see e.g. R 307 D). Prior to the effective filing date of the invention, it would have been obvious to a person having ordinary skill in the art that this provision would apply to cannabis plant products, infused products, mixed packaging, and all other types of marijuana waste.
Regarding claim 5, Colorado suggests grinding the marijuana waste, which is considered the same as the recited pulverization (see e.g. R 307 E).
Regarding claim 7, Colorado suggests that the waste can be moved to a separate facility, such as a composting facility (see e.g. R 307 F). This would necessarily require receiving the substances at a mobile vehicle for rendering, and is thus a mobile rendering vehicle.
Regarding claim 10, Colorado suggests adding Bokashi and other compost activators to the waste (see e.g. R 307 E(1)(f)). One of ordinary skill in the art would understand that Bokashi composting is generally performed inside of a vessel under anaerobic conditions, and is therefore an in-vessel digestion of the waste.
Regarding claim 12, Colorado teaches that the waste material should be physically processed prior to the waste leaving the facility, meaning that the physical alteration would take place while the mobile rendering vehicle is onsite (see e.g. R 307 F).
Regarding claim 13, Colorado suggests that once the composting has begun and the waste is no longer recognizable or usable, the substances can be transferred to a separate facility for disposal (see e.g. R 307 F (1)-(2)).
Regarding claim 18, Colorado requires weighing the waste prior to disposal (see e.g. R 307 H(1)).
Regarding claim 20, Colorado suggests composting the waste, which afterward would render the waste non-retrievable (see e.g. R 307 F(2)).
Regarding claim 21, Colorado suggests composting the waste, which would result in breaking down the chemicals in marijuana that have psychoactive properties, resulting in waste that has no psychoactive properties (see e.g. R 307 F(2)).
Claims 6, 8-9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Colorado as applied to claims 5 and 7 above, and further in view of EP 1236657 A1 (“Storey”).
Regarding claim 6, Colorado teaches the limitations of claim 5 as described above. Colorado further suggests that the marijuana waste is ground prior to composting (see e.g. R 307 E). Colorado is silent as to the method of grinding the waste. However, Storey teaches a similar method for disposing of waste, including plant waste or packaging of the type that would be covered by the Colorado marijuana laws (see e.g. paragraph [0010]). Storey teaches that the green waste is ground using a thresher device, which is a type of high speed rotor (Id.).
Regarding claim 8, Colorado teaches the limitations of claim 7 as described above. Colorado suggests moving the waste off the premises to a separate facility, but does not describe how the waste is loaded onto the vehicle for moving (see e.g. R 307 F). However, Storey teaches that a lifter can be included on the vehicle for lifting a waste containing receptacle to the interior portion of the vehicle (see e.g. paragraph [0018]). The lifter of Storey includes a lift arm that raises, or hoists, the receptacle to the opening for waste addition (Id.). One of ordinary skill in the art would understand that the lifter system of Storey enables movement of large bins of waste that would be difficult to add to the vehicle absent a lift system. Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person having ordinary skill in the art to include a lifting device as taught by Storey on the mobile rendering vehicle in order to lift large bins of waste.
Regarding claim 9, Storey teaches that the substances can be physically altered using a thresher device or shredder that is located within the vehicle (see e.g. paragraph [0010] describing that the waste processing device can be a thresher and paragraph [0016] describing that the waste processing device is part of the vehicle).
Regarding claim 14, Storey teaches that, after processing the waste, it is added to a compartment for transportation to a separate facility (see e.g. paragraph [0023]). The compartments in the vehicle of Storey are considered to be payload compartments as recited in claim 14.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Colorado as applied to claim 7 above, and further in view of US20220274895 (“McConell”).
Regarding claim 11, Colorado teaches the limitations of claim 7 as set out above, but is silent as to the use of image data from one or more cameras on the mobile rendering vehicle to verify receipt and alteration of the substances. However, McConell teaches mobile vehicle for waste collection and composting similar to the method suggested by Colorado (see e.g. paragraph [0268]). McConell teaches that the system can include one or more cameras for capturing image data for the purposes of waste stream identification and reporting (see e.g. section C1-C photo imaging). Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to include cameras on the mobile rendering vehicle as taught by McConell in order to facilitate identification, receipt, and reporting of the controlled substances waste.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Colorado in view of Storey as applied to claim 14 above, and further in view of McConell.
Regarding claim 15, Colorado in view of Storey teach the limitations of claim 14 as set out above. Storey is silent as to any mechanism for removing waste from the vehicle. However, McConell teaches a similar vehicle for movement of waste for disposal (see e.g. paragraph [0268]). McConell teaches that the vehicle has a movable trolley on the floor to enable waste to be added to or removed from the vehicle (see e.g. paragraph [0136]). McConell teaches that the movable trolley enables movement of the waste onto and off the vehicle without the need for manually lifting the waste or bins (see e.g. paragraph [0241]). Accordingly, prior to the effective filing date of the invention, it would have been obvious to include the moveable trolley on the floor of the vehicle as taught by McConnell to avoid the need for manual lifting of the waste upon unloading.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Colorado as applied to claim 1 above, and further in view of Dresbøll, et al. "Structural changes of plant residues during decomposition in a compost environment." Bioresource Technology 97.8 (2006): 973-981 (“Dresbøll”).
Regarding claim 16, Colorado suggests that the marijuana waste can be composted, but is largely silent as to how composting for chemical alteration is achieved (see e.g. R 307 E). Dresbøll teaches a method for composting of plant material, including cannabis (see e.g. page 974, second column, first full paragraph, starting “Decomposition studies…”). Dresbøll teaches that a liquid is added to the plant material to start the decomposition (Id.). Accordingly, prior to the effective filing date of the invention, it would have been obvious to add liquid to saturate the waste material with liquid as taught by Dresbøll in order to facilitate decomposition of the waste into compost as suggested by Colorado.
Regarding claim 17, Dresbøll teaches that the liquid is water (see e.g. page 974, second column, first full paragraph, starting “Decomposition studies…”).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Colorado as applied to claim 1 above, and further in view of JP 4480790 (“Moriei”, machine translation used for citations).
Regarding claim 19, Colorado teaches the limitations of claim 1 as set out above. Colorado further suggests that the waste material can be converted to compost, but is silent as to the use of a liquid for dust and/or odor control (see e.g. R 307 E). Moriei teaches a method for composting organic waste, such as that referred to by Colorado (see e.g. paragraph [0001]). Moriei teaches that a specific liquid can be added to the waste during composting to prevent odors during fermentation (see e.g. paragraph [0008]). Accordingly, prior to the effective filing date of the application, it would have been obvious to use an odor control liquid as taught by Moriei during composting in order to prevent odors that occur during fermentation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 10,876,061. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the ‘061 patent recites obtaining a plurality of cannabis related waste materials, which are controlled substances; pulverizing the waste materials, which is a physical alteration; denaturing and sterilizing the material, which is a chemical alteration; and that the products are rendered unrecognizable and unusable.
Regarding claim 6, claim 9 of the reference patent recites that the pulverization uses a high speed rotor.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,318,510. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 3 of the ‘510 patent depends from claim 1 and therefore includes all limitations from claim 1. These limitations include obtaining a plurality of cannabis related waste material, which are controlled substances; and physically altering the material. Claim 3 of the ‘510 patent further recites heating the material to sterilize and denature the waste material, which is a chemical alteration. The result is that the waste material is unrecognizable and unusable.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 and 29 of U.S. Patent No. 11,484,920. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 17 of the ‘920 patent depends from claim 1 and therefore includes all limitations from claim 1. These limitations include obtaining a plurality of cannabis related waste material, which are controlled substances; and physically altering the material. Claim 17 of the ‘920 patent further recites heating the material to breakdown the cannabinoids, which is a chemical alteration. The result is that the waste material is unrecognizable and unusable.
Also regarding claim 1, claim 29 of the ‘920 patent depends from claim 1 and therefore includes all limitations from claim 1. These limitations include obtaining a plurality of cannabis related waste material, which are controlled substances; and physically altering the material. Claim 29 of the ‘920 patent further recites transforming the waste into compost, which is a chemical alteration that would render the material unrecognizable and unusable.
Conclusion
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736