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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/4/26 has been entered.
Claims 94,97,105,113,115 are amended. Claims 94,97,102-105,113-115 are pending.
The previous 112 first and second paragraph rejections are withdrawn due to the amendment. The amendment necessitates new 112 rejection.
Claim Rejections - 35 USC § 112
Claims 94,97,102-105,113-115 are 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.
In claim 94, the limitations “ about 35% ethanol , first extraction step removes at least 80% of vanillin originally present in the vanilla beans and the pressure of 250-450,temperature of 35-55 degrees C and ratio of 10:1 to 50:1 and second extract fraction contains less than 1%” are not supported by the original disclosure. In the response, applicant points to page 6 lines 21-23 of the WIPO publication where the marc is described at “ substantially or completely spent of vanillin” and page 10 describes “ the mars as at least partially, substantially or completely spent of the target compound e.g. vanillin”. It’s not clear what WIPO publication applicant is referring to. The support for the amendment needs to come from the specification. The specification does not disclose the percent now claimed. Translating the qualitative description to a numerical number is not supportive evidence for the numerical ranges now claimed if the ranges are not disclosed. There is no disclosure to lead one to the conclusion that “ substantially or completely spent of vanillin” equates to the same as “ removing at least 80% of vanillin” or the second fraction contains less than 1%. Numerical ranges cannot be added unless the ranges are explicitly disclosed. The qualifier of “ about” cannot be added to the claim unless it’s specifically disclosed. Page 10 discloses 35% ethanol, not about 35%. The all-encompassing ranges on pressure, temperature and CO2 to feed mass ratio are not disclosed in the specification. Applicant points to pages 14-18 of the published application. However, the specification discloses ratio, temperature and pressure to specific steps on extraction on the marc. There is no disclosure of the broad ranges now claimed in general second extraction step. For instance, paragraph 0118, the marc discloses extraction of the marc in three steps with different temperatures, pressure and ratio at each steps disclosed in table 1. The same is found in other examples. There is no disclosure of general ranges for temperature, pressure and ratio. None of the samples shows pressure of 250 and ratio of 50:1. There is no disclosure to show that applicant is in possession of the method which covers all the temperatures, pressure and feed ratio in the ranges recited in claim 94. There is no disclosure of second extract fraction comprising
Lipid soluble fraction enriched in pyrones and dicarbonyl compounds. Page 11 only discloses that the second extract fraction comprises the lipid soluble fraction.
Claims 94, 102, 103 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.
In claim 94, the limitation “ enriched in pyrones and dicarbonyl compound” is vague and indefinite because it’s unclear what would quantify as “ enriched”. Line 2, the first occurrence of “ on” is unclear; it’s unclear what is intended by “” on on”. It’s believed it’s a typo error.
In claim 102, the limitation “ third extraction step performed on the second marc” is vague and indefinite. It’s unclear what second marc the claim is referring to. There no second marc recited in claim 94.
Claim 103 has the same problem as claim 102.
Claim Rejections - 35 USC § 103
Claim(s) 94,97,102-105,113-115 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maestro ( 2007/0071710) in view of Clark ( 2013/0064946) and Shiraishi ( JPH 04214799A).
For claims 94,105 Maestro discloses an extraction process comprising a first extraction on a feedstock of Vanilla planifolia pod to obtain a first extract and residue and a second extraction step on the residue to produce a second extract. The first extraction is a solvent extraction in which the solvent can be chosen from methanol, ethanol, etc.. Since Maestro discloses extracting vanilla ground material to yield vanilla oleoresin, it’s obviously inherent all the vanilla is extracted and very little is present in the residue. Maestro discloses the liposoluble fraction comprises pyranones and dicarbonyl compounds. Any amount is considered enriched since the claim does not define the amount. ( see paragraphs 0035, 0103-0108)
For claims 97,114,115 Maestro discloses the residue vanilla ground material is extracted a second time to obtain a second extracted fraction. Thus, it’s obvious the first extraction does not completely extract the compound present in the vanilla material. Since Maestro discloses extracting the same materials as the claimed method, it’s obviously inherently that the same compounds are present. Furthermore, Maestro discloses the extract of vanilla consists of liposoluble fraction comprising dicarbonyl compounds and pyranones. Since vanillin is extracted from the vanilla beans, it’s obviously inherent the residue is substantially spent of vanillin( see paragraphs 0022-0025,0103-0108) . The vanilla oleoresin extract obtained in Maestro is again extracted to yield liposoluble fraction of vanilla. Thus, the second extraction comprises extracting lipid soluble fraction from the residue ( marc). Since Maestro discloses extracting the same materials as the claimed method, it’s obviously inherently that the same compounds are present. Furthermore, Maestro discloses the extract of vanilla consists of liposoluble fraction comprising dicarbonyl compounds and pyranones. ( see also paragraphs 0114-0118)
For claim 102, Maestro discloses a third extraction step. ( see paragraph 0114-0118)
For claim 113, Maestro discloses formulation comprising the active compound obtained from the extraction method. Maestro discloses the extract of vanilla consists of liposoluble fraction comprising dicarbonyl compounds and pyranones. Maestro does not disclose the present of vanillin in the liposoluble fraction. ( see paragraphs 0022-0031)
Maestro does not disclose the super critical CO2 extraction with parameter and the amount of alcohol as in claim 94, third extraction removing compound from second marc as in claim 103, SCCO2 extraction as in claims 104,105 and the concentration of ethanol as in claim 105.
Clark discloses that supercritical fluid extraction is a known extraction method for selectively extracting one material from a solid or liquid. Supercritical fluids have a significant capacity to dissolve substances. The ability of a supercritical fluid for selectively dissolving a substance during extraction process is influenced by the specific conditions of pressure and temperature within the supercritical fluid regions at which the extraction is performed. By selecting a supercritical solvent with proper critical temperature, the extraction process may be conducted at a relatively low temperature, thus minimizing and possibly avoiding denaturation or decomposition of heat-liable compounds and loss of volatile components. Because of the ability to remove substantially all of the extraction fluid from the material extracted, SFE is often a preferred alternative to liquid extraction using organic solvents. Supercritical CO2 extraction is known in food processing industry. ( see paragraphs 0003-0013)
Shiraishi discloses a method of obtaining a vanilla extract by extracting vanilla beans with supercritical carbon dioxide. The supercritical CO2 extraction is performed at 70-300 Kg/c2 ( 68.6-294 bar) at temperature of 20-80 degrees C. Shiraishi discloses at pressure exceeding 300kg/cm2, the extraction rate of oils and fats other than the aroma component increases. ( see top of page 3)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use SCCO2 extraction as taught in Clark in the second and third extraction steps in the Maestro process when desiring to remove more selective compounds from the material being extracted. One would have been motivated to use SCCO2 for better result of more completely removing extraction fluid and minimizing decomposition and loss of volatile components. Clark teaches that the conditions of the SCCO2 extraction can be changed to target different substances. Thus, it would have been obvious to one of ordinary skill in the art to change the condition of each extraction step depending on the substances targeted. It would have been obvious to one of ordinary skill in the art to follow the guideline of Shiraishi and optimize depending on the compounds targeted. It would have been within the skill of one in the art to determine the feed ratio of carbon dioxide to properly saturate the material being extracted. The concentration can be determined through routine experimentation since extraction using supercritical carbon dioxide is known in the art. It would have been obvious to change the concentration of alcohol depending on the degree of the extraction desired. Generally, difference in concentration does not support patentability is absence of showing of criticality or unexpected result. It would have been obvious to repeat extraction on the residue after second extraction when desiring to ensure complete removal of wanted compounds before discarding the used material. Since Maestro discloses extracting vanilla ground material to yield vanilla oleoresin, it’s obviously inherent all the vanilla is extracted and very little is present in the residue. It would have been obvious to one skilled in the art to extract as much as possible of the intended compound.
Response to Arguments
Applicant's arguments filed 5/4/26 have been fully considered but they are not persuasive.
In the response, applicant argues that Maestro teaches recombining extracted fractions and relies on molecular distillation for compositional refinement. Applicant states nothing in Maestro suggests intentionally removing vanillin to a defined extent and then subjecting to further extraction under narrowly defined supercritical conditions. This argument is not persuasive. Maestro method is to extract vanilla to yield vanilla oleoresin. Thus, it would have been readily apparent to one skilled in the art to extract as much of the vanillin as possible from the vanilla bean to obtain desirable yields. The claimed range includes removing all vanillin from the vanilla bean because at least 80% means 80-100%. The goal of the extraction in Maestro in to yield vanilla oleoresin. Thus, it would have been readily apparent to one skilled in the art to remove all the vanillin from the vanilla bean to obtain the ultimate yield. As to the supercritical carbon dioxide, the parameters of temperature and pressure are typical of the supercritical CO2 as shown in Shiraishi. It would have been within the skill of one in the art to determine the feed ratio of carbon dioxide to properly saturate the material being extracted. The concentration can be determined through routine experimentation since extraction using supercritical carbon dioxide is known in the art. Applicant argues Maestro only discloses CO2 extraction as an alternative extraction solvent. Maestro never applies supercritical CO2 to a vanillin depleted marc. Maestro does not disclose a second supercritical CO 2 extraction. But, Maestro does teach extracting the residue which is the same as marc. The steps are described in paragraphs 0105-0107. Maestro teaches extracting the residue remained after a first extraction. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use SCCO2 extraction as taught in Clark in the second and third extraction steps in the Maestro process when desiring to remove more selective compounds from the material being extracted. One would have been motivated to use SCCO2 for better result of more completely removing extraction fluid and minimizing decomposition and loss of volatile components, especially in view of Maestro disclosure that supercritical CO2 can be used. As shown in Shiraishi, different solvents target different compounds in the vanilla beans. Thus, it would have been obvious to one skilled in the art to use SCCO2 in subsequent extraction. Applicant argues that Clark does not teach vanillin or vanilla beans. The Clark reference is only relied upon for the teaching of SCCO2. The new prior to Shiraishi shows that SCCO2 targets the oil component in the vanilla bean. Thus, one would have been especially motivated to use SCCO2 in subsequent extraction steps to extract the oil soluble fraction of the vanilla beans. Applicant argues the rejection is based on hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, the motivation to incorporate a SCCO2 step is not gleaned from applicant’s disclosure. Clark and Shiraishi teach the benefits of using SCCO2 extraction. One skilled in the art would have been motivated to incorporate the teaching to obtain the benefits disclosed in Clark. Applicant further argues that using the office action’s logic, the ordinary skilled person would need to purposely substitute the advantageous molecular distillation step for a supercritical carbon dioxide extraction step which was not suggested by Maestro. This argument is not persuasive. The molecular distillation step is a post extraction step on the liposoluble fraction. The step is not part of the extraction process. The claimed language doesn’t exclude additional step. There is no suggestion to substitute the molecular distillation step with the supercritical carbon dioxide extraction.
Conclusion
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July 14, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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