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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/286,266 application filed on October 10, 2023. Claims 1-20 are pending. Claims 1-9 are examined, on the merits, in this Office action. The examined claims are directed to an apparatus.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, in the reply filed on March 2, 2026 is acknowledged. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 12/27/2024 and 06/10/2025. Please refer to the signed copy of the PTO-1449 form attached herewith.
Claim Interpretation
The examined claims are apparatus claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus/system claims, functional features are considered/not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
The recited liquid, ethanol and gas, for example, are considered materials potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus rather than structural components of the apparatus. These are merely potential materials for which the apparatus is designed. .
According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
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.
Claims 1-9 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 pre-AIA the applicant regards as the invention.
Claims 1 and 9, or portions thereof, follow, with the underlined portions either causing or intended to assist in an understanding of the indefiniteness rejections.
Claim 1: An automatic extraction device for extracting a liquid substance from plant material, comprising:
a mixing tank, in liquid connection with the ethanol reservoir, comprising:
an entrance for providing the plant material;
a mixer, and
an exit for extracting a mixture of the ethanol and the liquid substance,
an evaporation system, in liquid connection to the mixing tank's exit, for evaporating the ethanol;
a condenser, for condensing the evaporated ethanol, the condenser comprising:
an entrance in gas connection with the evaporation system;
a housing having a maximum external volume of at most 1 liter; and
an internal array of heatsinks, located inside the housing, providing surface-to- volume ratio of 4- 0.5 [l/mm]; and
a collecting tube, in liquid connection to the mixing tank, for collecting the condensed ethanol.
The automatic aspect of the extraction device is unclear. For example, no control device is recited.
Claim 1 recites the limitation "the ethanol reservoir." There is insufficient antecedent basis for this limitation in the claim.
The phrase “a maximum external volume of at most 1 liter” is repetitive or unclear. That is the difference between maximum and ‘at most’ is unclear.
The meaning of “surface-to-volume ratio of 4-0.5 [l/mm]” with the stated units, is unclear. Does this refer to a surface area or a length? If the units are liters and mm, this ratio appears to be a ratio of volume to length. Claim 3 has a similar issue.
Also, the difference between “in liquid connection” and “in gas connection” is unclear.
Claim 9: The automatic extraction device of claim l, wherein the evaporation system comprises:
a vessel for receiving the mixture, the vessel being made from a thermoplastic polymer; and
at least one heating element placed in a distance from an external wall of the vessel,
wherein the distance is determined based on the Tg of the thermoplastic polymer and the power provided by the at least one heating element, as to cause the ethanol in the vessel to be heated to 80-140 C.
The abbreviation Tg should be introduced.
The language “as to cause as to cause the ethanol in the vessel to be heated to 80-140 C, is unclear.
The claim does not mention a controller but requires a certain temperature result, which is an operation rather than a structural feature, so it’s unclear how one of ordinary skill would understand how the structures operate independently to cause the intended result.
Claims 2-9 depend on claim 1.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gade (WO2018215520) (IDSes of 12-27-2024 & 06-10-2025).
Note that these are apparatus claims. In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure. The analysis considers the alternate concepts of the various potential embodiments in a particular reference.
Regarding claims 1-4, Gade discloses an automatic extraction device for extracting a liquid substance from plant material (Abstract, Fig. 1), comprising:
a mixing tank 2 (extraction chamber), in liquid connection with the ethanol reservoir (p. 37, lines 17-31), comprising:
an entrance for providing the plant material (p. 5, lines 19-21);
a mixer (p. 24, lines 4-5, where a stirrer is noted), and
an exit 4 for extracting a mixture of the ethanol and the liquid substance (Fig. 2; also, p. 38, lines 20-26, where an exit is implied),
an evaporation system 7 (Figs. 1, 2; evaporation chamber), in liquid connection to the mixing tank's exit, for evaporating the ethanol (p. 38, lines 26-33; step VIII);
a condenser 9, for condensing the evaporated ethanol (p. 29, line 16 – p. 32, ln. 12; p. 39, lines 14-21), the condenser comprising:
an entrance in gas connection with the evaporation system (Figs. 1, 2; tube from evaporation chamber to condenser 21);
a housing having (Fig. 1); and
internal heatsinks 19, 29 located inside the housing (pp. 30, 34; Figs. 3, 10a; condenser heat sink, thermoelectric element heatsink).
Therefore, Gade discloses the claimed invention, except
an internal array of heatsinks, and
a collecting tube, in liquid connection to the mixing tank, for collecting the condensed ethanol, and the specific condenser housing {a maximum external volume of at most 1 liter} and heat sink dimensions {surface-to- volume ratio of 4- 0.5 [l/mm]}.
Gade mentions two different heatsinks which in some contexts could be interpreted as an array. An array is the duplication of this known structure and would be expected to provide additional heat exchange benefits and efficiencies compared to a single heatsink. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an array of heatsinks since this amounts to the mere duplication of parts with no patentable significance unless a new and unexpected result is produced.
Gade also mentions an agitated state, which suggests the possibility of a mixer with the chamber (p. 24, lines 4-5).
With respect to the surface to volume ratio, Gade mentions the use of a corrugated heat sink (p. 30, lines 2-3), which increases the surface area to volume ratio and demonstrates its importance.
Regarding the limitations on the condenser’s external volume, Gade describes dimensions on p. 12, lines 13 to page 13, line 29, stating that the total device should be preferably quite small (i.e. less than 20L in total, less than 20 cm wide, less than 30 cm deep and less than 46 cm high), implying small individual components, including the condenser’s volume.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a suitable condenser dimension and heat sink surface to volume ratio in view of Gade’s suggestions for size limitations and the importance of adequate surface area to volume ratio for improved efficiency and effectiveness of the heat sinks, where one can choose the specific dimensions through routine experimentation and optimization, and based on engineering choice.
Regarding the collecting tube in fluid communication with the mixing tank for collecting the condensed ethanol, as noted above, Gade returning the solvent liquid into the extraction chamber (p. 39, lines 20-21).
To one of ordinary skill in the art when the claimed invention was effectively filed, it would have also been obvious to consider the use of a traditional collecting tube for collecting the condensed ethanol to effectively extract and retain the plant material and to raise the associated concentration level in a reliable manner.
Additional Disclosures Included: Claim 2: The surface-to-volume ratio provided by the internal array of heatsinks is 2-1 [l/mm] (claim 1 analysis; engineering choice); Claim 3: The surface-to-volume ratio provided by the internal array of heatsinks is 2-1 [l/mm] (claim 1 analysis; engineering choice); and Claim 4: The automatic extraction device further comprises an ethanol supply in fluid connection to the mixing tank and the condenser (Fig. 2).
Regarding claim 5-8, Gade discloses the automatic extraction device of claim l, except wherein the housing comprises two portions configured to form a sealed housing, and wherein a first group of heatsinks from the array is connected to a first portion of the housing and a second group of heatsinks from the array is connected to a second portion of the housing.
However, providing two portions is tantamount to either duplicating know features or making separable what was previously integrated.
It would have been an obvious expedient to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate known structures since the expected result would be improved control and performance and easier maintenance. Alternately, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the housing into two portions since it may be desirable to obtain better access to different portions of the housing such as for improved maintenance and control.
Additional Disclosure Included: Claim 6: When assembled, the first group of heatsinks is configured to intertwine with the second group of heatsinks (it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to intertwine the heat sinks as an engineering choice and for reduced heat loss); Claim 7: The condenser further comprises an external ventilation system (pp. 21, 23, 25, mentioning passive air, an air fan 23 and the pumping of air; alternately, it would have been obvious to employ an external ventilation system to efficiently ventilate the device or as a back up to internal ventilation); and Claim 8: The automatic extraction further comprises a controller configured to control at least the mixer and the evaporation system (pp. 6, 8, 9, 33, 38, 39, 44, where Gade teaches a flow controller and microcontroller; it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a controller that can control at least the mixer and the evaporation system).
Regarding claim 9, Gade discloses or suggest the automatic extraction device of claim l, except wherein the evaporation system comprises:
a vessel for receiving the mixture, the vessel being made from a thermoplastic polymer; and
at least one heating element placed in a distance from an external wall of the vessel,
wherein the distance is determined based on the Tg of the thermoplastic polymer and the power provided by the at least one heating element, as to cause the ethanol in the vessel to be heated to 80-140 C.
However, a vessel for receiving the mixture is an obvious expedient. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ some type of polymer since Gade mentions that the storage chamber is made of a polymeric material, such as polyethylene (PE), or a glass material, such as Pyrex (Gade, p. 33, lines 7-8). Polyethylene is a thermoplastic polymer.
Gade mentions that the extracted compounds are recovered within the evaporation chamber by separating the solution, or mixture, into different phase, where this may be obtained by heating the liquid mixture of extracted compounds and solvent reactant to a temperature at which the solvent reactant enters the gaseous phase (p. 9, lines 7-10). Gade also includes heating elements and control systems to efficiently control the evaporation system (p. 9, lines 25-30; p. 15, lines 4-10; p. 21, lines 11-14; p. 28, lines 8-19). A heating element may be in thermal contact with a larger portion of the external surface wall of the evaporation chamber (p. 28, lines 12-14).
Thus, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to employ a at least one heating element placed at a distance from an external wall of the vessel and to heat the ethanol in the vessel to an appropriate temperature, such as recited in the claim, where one can determine the distance from the wall based on the nature of the thermoplastic vessel or, for example, its glass transition temperature.
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAYDEN BREWSTER/Examiner, AU 1779
Prosecution Insights