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 .
Claims 1-20, are pending in this application.
Claims 11-14, are non-elected.
Election/Restriction
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
6. Claims 1-20, are drawn to more than one inventive concept.
Group I, claims 1-10, 15-20, drawn to a process of extracting trioxane
Group II, claims 11-14, drawn to a system for extracting.
In the instant, the system can be used to practice another process, such as, in US 10,414,709. Also, it is a different subject matter, in a different class and subclasses.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other inventions.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
In a telephone call to Michael Tobin on 9/16/25, to make an election, group I, claims 1-10, 15-20, was elected. There was no indication if it was made with or without traversal. Therefore, it is deemed made without traversal.
In accordance with the decisions in In re Weber, 198 USPQ 328 (CCPA 1978) and In re Haas, 198 USPQ 334 (CCPA, 1978), it is improper for the Office to refuse to examine that which applicants regard as their invention, unless the subject matter lacks unity of invention.
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 1-6, 9-10, 15-20, 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.
Extractants are not disclosed in the claims, and require reading the specification and external sources into the claims, contrary to several precedent decisions by the US courts. The claims invite a POSA to ascertain the extractants and make them using any means/procedure known to the artisan. There is no incorporation of US publications where the extractants and enablements thereof, may be found. Adding claim 7, to claim 1, will overcome the rejection.
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 15-20, 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.
Liquid extract and organic phase are removed and separated, respectively, claim 15. But there is no addition of a solvent/extractant in the claim. Therefore, claims 15-20, are 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. Deleting the claims will overcome the rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-10, 15-20, are rejected under 35 U.S.C. 103(a) as being unpatentable over Lanier et al., US2022/0072448 (effective filed date 5/29/2020), in view of Wimalaratne, WO2020/168421; Tegen et al., US 10,414,709; Lazarjani et al., J. Cannabis Res (2021) 3:32 (15 pages).
Lanier et al., teaches extraction of cannabinoids from plant (biomass), wherein the solvent is ethyl acetate, hexane, heptane or combination thereof, and may comprise water, a base or acid. The prior art teaches the liquid extract can be combined with conduit contact technology to enhance purity, yield, throughput, etc. See the entire document, particularly [0003], [0014], [0021], [0034], [0036]-[0038].
The prior art does not teach olive oil, methyl chloride, petroleum ether, methyl t-butyl ether, chloroform, are extractants. However the claims are still obvious from the prior art in view of the following:
Wimalaratne teaches extraction of cannabinoids from biomass, wherein the solvent is chloroform, ethyl acetate, hexane, dichloromethane (methyl chloride) or combination thereof. The extract is concentrated and isolated. See the entire document, particularly [0003], [0023], [0031]-[0033].
Tegen et al., teaches extraction of cannabinoids from plant/biomass, wherein the solvent is chloroform, ethyl acetate, hexane, heptane, dichloromethane (methyl chloride) or combination thereof. The organic phase is separated from water, the extract is further isolated through solvent contact system, and trichome was removed by extraction. The plant may be wet or dry. See the entire document, particularly C2 to C4, C7-C8
Lazarjani et al., teaches extraction of cannabinoids from plant (biomass), wherein the solvent is olive oil, petroleum ether, methyl t-butyl ether, chloroform, hexane, dichloromethane (methyl chloride) or combination thereof, pp 6, C1, ¶2 and C2, ¶2-3. The organic phase is separated from water, concentrated, and cannabinoids are isolated. Trichome is removed by water extraction (solventless extraction, pp. 2, C2, ¶2), and the plant may be wet or dry. The prior art teaches water activity level between 0.55 and 0.65, to minimize the risk by mold or fungal infection and to preserve the quality of the product, pp. 4, C1, ¶2. Water activity level of at least 0.55% can be 10% in instant claim 15. Therefore, a POSA would have known and be motivated to claim the water activity in claims 1, 15, at the time the invention was made, with reasonable expectation of success. The prior art teaches several extraction methods and advantages thereof, pp. 4, C1, ¶3 to pp. 9, C1, ¶2. See the entire document, particularly tables 2-3.
Having known the teachings by the prior arts as set forth above, a POSA would have known and be motivated to claim the combination of the solvents to avoid the prior arts. Also, the motivation is because the solvents are known common solvents for extracting cannabinoids; icy water is well-known for removing trichomes from cannabinoids’ plants;
brine wash is a common technique for the purification process that removes water-soluble impurities from cannabinoids’ crude extract. Google, https://www.google.com/search?q=exraction+of+cannabinoid+from+plant+with+olive+oil+methyl+chloride+petroleum+ether+chloroform+methyl+terta+butyl+ether+heptane+hexane+ethyl+acetate, visited 9/23/25. Google, https://www.google.com/search?q=extraction+of+cannabinoid+with+brine, visited 9/23/25.
Removing and separating steps, claims 1, 15, and claims 2-5, 10, 17-20, relate to recovery after the product is formed. Under the US patent practice recovery per se after the product is formed is uninventive, Ex parte Deutschmann, 114 USPQ 556 (1957). Centrifugation, claims 10, 18, is a common recovery technique. The steps and claims are conventional techniques well-known in the art. They are motivated by recovery step(s) known in prior arts. The motivation is also because recovery is a routine practice in the art, for improving the purity and yield of a product.
Therefore, the invention is not allowable over the combination of the prior arts and knowledge well-known in the art.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Taofiq A. Solola, whose telephone number is (571) 272-0709.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Andy Kosar, can be reached on (571) 272-0913. The fax phone number for this Group is (571) 273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the Group receptionist whose telephone number is (571) 272-1600.
/TAOFIQ A SOLOLA/Primary Examiner, Art Unit 1625
September 24, 2025
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