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 triglyceride as a non-volatile oil in the reply filed on 2026 February 24 is acknowledged. Due to no prior art, a search of the whole scope of a non-volatile molecule has been done. Claims 1, 11-15, and 21-34 are examined on the merits.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2025 March 12, 2025 July 16, and 2026 February 24 were submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 11, 14, 15, 29, 30, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 10669248. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 is drawn to a process of decarboxylating THCA to THC from a composition having a surface area to volume ratio is greater than 1000 is described. Examples 1-3 (column 16, line 56 to column 18, last line) show that that non-volatile molecules are not volatilized when the decarboxylation occurs. In claim 12 of US 10669248, the composition is not limited by form and the same surface area to volume ratio is recited.
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Claims 1, 11, 14, 15, 29, 30, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 7, and 9-11 of U.S. Patent No. 10822320. Although the claims at issue are not identical, they are not patentably distinct from each other because the specified claims of US 10822320 encompass the elected claims. Examples 1-3 (column 18, line 56 to column 20, line 38) show that that non-volatile molecules are not volatilized when the decarboxylation occurs.
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Claims 1, 11-15, 21, 23, 24, and 29-32 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11643402. Although the claims at issue are not identical, they are not patentably distinct from each other because specified claims of US 11643402encompass the elected claims. Example 2 describes that decarboxylation occurs (column 13, lines 8-34). Although not explicitly stated, claim 1 implies that the non-volatile compounds are not volatilized because THC is prepared. TURNER (Journal of Natural Products, 1980, 43(2), 170-234) describes that 360 non-cannabinoids are present in Cannabis sativa (page 172, last paragraph to page 173, second paragraph). Based on the teachings of Turner the non-volatile compounds are not affected by the process of claim 1.
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Claims 1, 11, 12, 14, 15, 21, 22, 24, and 29-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12291781. Although the claims at issue are not identical, they are not patentably distinct from each other because specified claims of US 12291781 encompass the elected claims. Example 2 describes that decarboxylation of THCA occurs (page 19, lines 11-40). TURNER (Journal of Natural Products, 1980, 43(2), 170-234) describes that 360 non-cannabinoids are present in Cannabis sativa (page 172, last paragraph to page 173, second paragraph). Based on the teachings of Turner the non-volatile compounds are not affected by the process of claim 1.
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Conclusion
Claims 1, 11-15, 21, 23, 24, and 29-34 are not allowed.
Claims 22 and 25-28 are 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: WHITTLE (GB 2391865, published 2004 February 18) does not describe a composition with a surface area to volume ratio greater that 1000 per meter (page 24, lines 20-24).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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