DETAILED 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 .
Claim Status
Claims 1-40 are cancelled. Claims 61-62 are new. Claims 41-62 are pending and under examination.
Priority
This application is a continuation of 16/907,199 filed on 6/20/2020, which is a continuation of 15/841,923 filed on 12/14/2017, which is a continuation-in-part of 15/784,112 filed on 10/14/2017, which is a continuation-in-part of 15/609,472 filed on 5/31/2017.
The first application that describes the claimed invention with the processing of claim 41 (product-by-process steps) and terpene is 15/784112 filed on 10/14/2017, and thus, the prior art will be searched based on the priority date of 10/14/2017. It is noted that this processing results in decreased terpene and more other components such as cannabinoids in the cannabis oil extract as compared to not doing step (a) and then (b).
Rejection Withdrawn
The rejection under USC 112(b) over claim 51 is withdrawn per applicant’s amendment to change dependency of the claim.
Maintained Objections
Claim Objections
In claims 44 and 53, cokodok is misspelled and needs to be spelled cekodok.
In claim 59, pine nuts and pinon nuts are synonymous. Only one of these (either pine nuts or pinon nuts) has to be listed in the group of moisture improving textural supplement in the claim.
In claim 59, the word “one” needs to be included between “comprising” and “or more ingredients” in the claim.
In claims 58 and 59, applicant needs to insert “further” between “comprising” and “an ingredient” and between “comprising” and “one or more ingredients selected…” as it is something being added to the cannabis oil extract.
In claim 60, applicant needs to insert “further” between “comprising” and “two or more binding agents” in the claim as it is something being added to the cannabis oil extract.
Appropriate corrections are required.
Notice to Applicant regarding Objections
Applicant did not respond to or amend the claims according to these objections. Therefore, these objections to the claims are maintained.
Maintained Rejections – Modified As Necessitated by Amendments
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 41-42, 45-51, 54-62 rejected under 35 U.S.C. 101 because the claimed invention is directed to compositions of natural products without significantly more. The claim(s) recite(s) cannabis oil extract and distillate (more purified/isolated natural components of cannabis) and natural compounds such as agar, honey, natural sugars, natural proteins, starches, vegetable based materials, nuts, etc. Separating terpenes from other natural compounds in cannabis oil and by further distilling only creates a more isolated form of the natural compounds. Applicant amends the claims to provide product-by-process limitations (MPEP 2113) toward the conditions for the extracting (under subcritical and/or supercritical conditions) and subsequent extracting (under supercritical conditions).The claim further notes that the cannabis oil extract has a terpene content lower than the terpene fraction that was extracted in the process. These product-by-process limitations still provide for the natural products cannabis oil and terpenes that are found in cannabis plants. Note that MPEP 2106.04(b) I and II indicates that isolated DNA was considered a product of nature. Moreno-Chamba et al (Industrial Crops and Products, 2024, volume 210, pages 1-13) teaches cannabinoid and terpene profiles of cannabis sativa (abstract of Moreno, sections 2.3.1-2.4, and table 2). Moreno-Chamba provides that seed oils of cannabis have lower abundance of aromatics (section 4, page 11). The general recitation of beverage is toward a fluid with the intended use of drinking where it could be water or natural juice and the general recitation of foodstuff would include natural fruits and vegetables among other natural foods in non-processed forms. Claims that indicate addition of particles, solids, liquids or cannabis plant matter all include potentially natural particles like natural sands, cells, salts and minerals, solids like natural sand or minerals, liquids like water and cannabis plant matter (any portion or constituent of a cannabis plant). Claim 59 also allows for insects and worms as an option, which are natural organisms. Haze (GrowWeedEasy, downloaded 2025, https://www.growweedeasy.com/bugs-pests-symptoms-marijuana-grow) provides that caterpillars is a common cannabis pest as well as mites, grasshoppers, crickets, gnats and other insects. Thus, insects will have cannabinoids and cannabis oils if they are consuming cannabis plants. In regards to the markedly different characteristic analysis where applicant might attempt to argue different characteristics based on beverage, foodstuff claims 45-51, 54, 59 and 60 with the cannabis oil extract or distillate thereof (the isolated natural items), beverage could just be a combination with water, natural juice or other natural fluid that might be drinkable, foodstuff would include many natural foodstuffs such as naturally occurring plant and animal products (e.g. fruit and vegetables) and particulate comprising the cannabis oil extract or distillate does not dictate structurally or functionally how this makes it different from being combined with other natural particulate that exists in nature. A characteristic/
property/activity/structural form of the combination would have to be asserted that makes either the isolated cannabis oil, distillate of one or more of the combination of natural products markedly different than they would occur in nature MPEP 2106.04(b) II A and B. The closest counterparts are the natural compounds and natural insects that are encompassed in these claims. The beverages, particles and foodstuffs in these claims does not integrate the natural products into a non-natural form/markedly different form. In addition, there is nothing on record to objectively show such combinations of natural products or natural compounds with insects (living organism) would produce a composition or item with significantly more (e.g. a significant activity or property).
Response to Applicant’s Amendments and Arguments Over the Rejection under USC 101
Applicant amends the claims to provide further product-by-process limitations in this claim toward a product (cannabis oil extract). These claims provide the processes by which the terpenes and cannabis oil are extracted, and that the resulting cannabis oil extract with have less terpenes than found in the terpene fraction that was removed. Although these steps in a process of making a cannabis oil extract claim would have weight to patent eligibility, in these product claims they still provide for products of nature, which are found in a cannabis plant (cannabis oil and terpenes). The cannabis oil and terpenes remain products of nature and it is not indicated how either of these has markedly different characteristics than would be found in nature for either the cannabis oil or the terpenes. Additionally, if a terpene fraction was taken by an extraction technique, it would be presumed to both lower the amounts terpenes in the oil fraction as well as have a higher proportion of terpenes existing in this terpene fraction than the cannabis oil extract. This simply changes the concentrations of the natural products, but does not change the structure and/or activities of the natural products themselves. Purifying the product of nature still leaves the product of nature (cannabis oil) and in this case at least some of another product of nature (the terpenes). Applicant does not amend other dependent claims. New claims 61-62 are simply to the product-by-process limitations regarding the terpene fraction that were also provided in claim 41.
Maintained Rejection
Claim Rejections – 35 USC § 112(b)
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 44, 53 and 59 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.
Claims 44 and 53 contains the trademark/trade name “rice krispie” (Rice Krispies). Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of cereal treat and, accordingly, the identification/description is indefinite.
Claim 59 is indefinite for the recitation of “Indian nuts”. It was not found that Indian nuts refers to a particular type of nut or nuts generally found in India. Additionally, there is a company called the Indian Nuts Company (https://www.indiannutscompany.com) and so it is unclear if this could be the source of this name (as in nuts from the Indian Nuts Company). For the purpose of compact prosecution, if there is a nut provided in the prior art, it can meet this limitation.
Claim 59 is indefinite as it presents a group of one or more ingredients with closed Markush language (selected from the group consisting of) and then uses “comprises” when describing the groups of components for each of the items found in that group. This use of “comprises” makes it unclear as it reopens the Markush group of one or more ingredients to other possible items. Applicant may change “comprises” in each of the instances to “is” (for example, “the fiber-starch material is one or more fiber-starch materials….”).
Claim 59 is indefinite for reciting a group of insects and then containing worms, scorpions (arachnid), tarantulas (arachnid), centipedes (arthropods), insect lipids and insect oil as options. These items are not insects as are the other members of the group. They are compounds derived from insects or other types of organisms. It is unclear if “insects” is supposed to be only to insects based on its introduction or may also contain various, diverse items derived from insects or other organisms. If the prior art teaches a lipid or oil compound that can be found in an insect, then it will read on the claim limitation.
Notice to Applicant regarding the Rejections under USC 112(b)
As in the case of the claim objections, the applicant did not respond to the rejections under USC 112(b) with amendments and/or arguments except for amending claim 51. Therefore, these rejections are maintained, but the rejection over claim 51 is withdrawn.
Maintained Rejection – Modified As Necessitated by Amendments
Claim Rejections – 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 41-42, 46, 55, 56, 57, 58 and 61-62 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN107227198A (published on 10-3-2017, with Google English translation).
“Supercritical carbon dioxide extraction” and the “extracting” steps with conditions for those steps are to the product-by-process (MPEP 2113). A materially similar product can be made by a different process. If the prior art teaches the components of the claim “a cannabis oil extract”, then it will read on the claim. It is noted that the claim does not dictate that terpenes are completely removed in step (a) and it does not provide for a percentage/amount of terpenes that would be left in the cannabis oil extract after step (b).
Applicant amends the claims to provide product-by-process limitations (MPEP 2113) toward the conditions for the extracting (under subcritical and/or supercritical conditions) and subsequent extracting (under supercritical conditions).The claim further notes that the cannabis oil extract has a terpene content lower than the terpene fraction that was extracted in the process. These product-by-process limitations still provide for the natural products cannabis oil and terpenes that are found in cannabis plants.
CN ‘198 teaches using a supercritical extraction process in obtaining a cannabis leaf oil from powdered raw material from the cannabis leaf (abstract and embodiments 1-3). CN ‘198 teaches the extraction efficiency of active ingredients like cannabidiol is improved (abstract). CN ‘198 teaches the extraction is done with material that has powder and liquid (abstract). The powder is particles of the plant material/matter. Embodiment 2 provides for cannabis leaf oil with cannabidiol 26.7%, unsaturated aliphatic acid and terpenoid 8.4%. Embodiment 2 qualifies as a distillate as it has cannabidiol at a higher amount based on enhanced extract efficiency. Separating steps are performed after extraction, which would further make this a distillate (see abstract and disclosure of English translation). CN ‘198 teaches “Cannabis leaf oil is extracted using supercritical carbon dioxide, the recovery rate highest of cannabidiol therein can reach 90%, Purity is more than 25%.” (Google English translation, prior to the embodiments). CN ‘198 teaches solvent, which is an ingredient (embodiments 1-3).
Claims 41-42, 46, 47, 48, 51, 55, 56, 57, 58, 59 and 61-62 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Finley WO 2017091764A1.
“Supercritical carbon dioxide extraction” and the “extracting” steps with conditions for those steps are to the product-by-process (MPEP 2113). A materially similar product can be made by a different process. If the prior art teaches the components of the claim “a cannabis oil extract”, then it will read on the claim. It is noted that the claim does not dictate that terpenes are completely removed in step (a) and it does not provide for a percentage/amount of terpenes that would be left in the cannabis oil extract after step (b).
Applicant amends the claims to provide product-by-process limitations (MPEP 2113) toward the conditions for the extracting (under subcritical and/or supercritical conditions) and subsequent extracting (under supercritical conditions).The claim further notes that the cannabis oil extract has a terpene content lower than the terpene fraction that was extracted in the process. These product-by-process limitations still provide for the natural products cannabis oil and terpenes that are found in cannabis plants.
Finley teaches cannabis oil compositions containing vitamin E and methods for preparing them (abstract). Finley teaches the invention provides a method for preparing a cannabis oil composition comprising eluting cannabinoids from cannabis plant material with a solvent to produce an eluate; filtering the eluate with a filter to produce a filtrate; evaporating the solvent from the filtrate with a distiller to produce a distillate; and purging the distillate under conditions sufficient to remove residual solvent (abstract). Thus, there is an extract and a distillate is also formed in Finley. Finley teaches binders including starch paste, gelatin, and tragacanth (paragraph 190). Additionally, Finley provides xanthan gum, pectin, lactose and sucrose as diluents/fillers (paragraph 190). Finley teaches agar as a disintegrant (paragraph 190). Finley provides for oral forms such as lozenges and chewing gums (paragraph 190). Chewing gum and lozenges are food products and can be considered candies or confectioneries. Finley teaches liquids for oral administration like solutions, syrups and suspensions and provides for non-aqueous ingredients listing different oils and also listing sorbitol syrup (paragraph 191). Finley teaches breaking the plant material into finer sized particles (paragraph 96). Finley teaches the cannabis oil compositions can be made into dry powder with suitable carriers and/or lubricant such as lactose or starch (paragraph 189). A dry powder is particles. Table 11 provides for 3.9%, 4.0%, 4.3% and 3.5% of total terpenes while having higher cannabinoid amounts (also see 0.1 to 1% w/w of total terpene in paragraph 154). Thus, amounts of terpenes are found to be low in comparison to other components of the oil.
Response to Applicant’s Arguments over the Rejections under USC 102
Applicant argues that CN ‘198 does not teach the product-by-process steps as now amended into claim 41. However, as noted before product-by-process limitations are only read for the compositional and structural features they offer the product as material similar products may be made by different processes (MPEP 2113). As CN ‘198 provides for a composition of cannabis leaf oil with cannabidiol 26.7%, unsaturated aliphatic acid and terpenoid 8.4%, this can be presumed to have a lower concentration of terpene/terpenoid than a removed terpene/terpenoid fraction that might also be removed without further evidence. CN ‘198 teaches extraction efficiency of active ingredients like cannabidiol is improved, and thus, better extraction of such ingredients in the oil. Note the terpene fraction is not part of the claimed cannabis oil extract of which the terpene fraction is removed from. Applicant argues that inherency cannot be used due to the exclusion of the terpene fraction and formation of the cannabis oil extract having lower terpene content than the extracted terpene fraction. Again, the prior art teaches a cannabis oil extract with higher amount of cannabidiol and a lower percentage of terpenoid. It is construed to have a lower concentration of terpenoid/terpenes than would be found with a terpene extract that was removed in the process without evidence showing otherwise.
Applicant argues as Finley does not provide for the product-by-process steps which were added to claim 41, it cannot teach the claim. Finley provides for prepared cannabis oil compositions with more concentrated cannabinoids and low percentages of terpenes. Without evidence to the contrary, the compositions with such low percentages of terpenes (3.9%, 4.0%, 4.3% and 3.5% of total terpenes) will be considered to have lower concentrations of terpenes than an extracted amount of terpenes. Note the terpene fraction is not part of the claimed cannabis oil extract of which the terpene fraction is removed from. Again, as Finley’s teachings would provide for a more purified form of cannabis oil with less terpene, it meets the limitation of the claim.
Maintained Rejections
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.
The factual inquiries 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.
Claims 44, 53, and 60 in addition to Claims 41-42, 46, 47, 48, 51, 55, 56, 57, 58, 59 and 61-62 are rejected under 35 U.S.C. 103 as being unpatentable over Finley WO 2017091764A1.
Finley teaches the claims as discussed above.
Finley has teachings of items that would be foodstuffs (lozenges and chewing gum), but does not provide an embodiment thereof. Finley provides for compounds that are binding agents of the claims, but does not provide for two or more.
Finley teaches binders including starch paste, gelatin, and tragacanth (paragraph 190). Additionally, Finley provides xanthan gum, pectin, lactose and sucrose as diluents/fillers (paragraph 190). Finley teaches agar as a disintegrant (paragraph 190). Finley provides for oral forms such as lozenges and chewing gums (paragraph 190). Chewing gum and lozenges are food products and can be considered candies or confectioneries.
One of ordinary skill in the art before the time of filing would have included the oil extracts and distillates into orally administered food products like lozenges and chewing gums as Finley notes these items as orally administered forms. One of ordinary skill in the art before the time of filing would also use combinations of diluents/fillers and binders as taught by Finley and provide for a composition with two or more binders of compounds listed in applicant’s claims with the expectation of making an orally administered product. Thus, there was a reasonable expectation of success in using the teachings of Finley to provide for such compositional products and ingredients to make its products for cannabis oils/distillates.
Claims 43, 45, 49, 50, 52, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Finley WO 2017091764A1 and Franklin US 20160243177.
Finley teaches the claims as discussed above.
Finley does not teach making its particles for foods or particles with oil extracts or distillates thereof. Finley does not teach other foods of the claims or beverages.
Franklin teaches cannabis oil mixed with modified starch powder to make cannabis oil powder (abstract). Franklin teaches using this to make consumable products like beverages and baked goods (abstract). Franklin teaches beverages like coffee or tea (paragraphs 30, 31, 93 and 95). Franklin teaches gelatin shots, cookies, brownies, muffins and pancakes (paragraphs 99, 109, 115, 122 and 128). Franklin teaches extracting cannabis oil from cannabis plant material using carbon dioxide extraction (claim 6 of Franklin) and supercritical extraction with CO2 (paragraph 67). Franklin teaches distilling off ethanol and decarboxylation (paragraphs 70 and 72-76). Franklin teaches powderization (paragraph 77). Franklin teaches powders like maltodextrin and other starches, protein isolates, and xanthan gum/guar gum (paragraph 92 and claim 21 of Franklin).
One of ordinary skill in the art before the time of filing would have included cannabis oil extracts and distillates thereof as taught in Finley onto powder particles as taught in Franklin and then included such oils and distillates in various beverages and foods as provided by the prior art. There would be a reasonable expectation of success in combining the teachings of the references and making new orally administered/consumable products being beverages, foodstuffs and powders/particles by the combined teachings of the references that are to making administered products having cannabis oils and distillates for their activities and effects in a subject.
Response to Applicant’s Arguments over the Rejection under USC 103
Applicant argues that any of these additional rejections under USC 103 do not help teach the limitations as in claim 41. As explained above, the rejection over Finley still teaches the applicant’s claimed product (cannabis oil extract). Therefore, these rejections are maintained to teach dependent claims.
Maintained Rejections
Non-Statutory 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 41-42, 46-48, 51, 55-58 and 61-62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 14, 15 and 26 of U.S. Patent No.10517320. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of ‘320 also provide for separating terpenes using a similar procedure to the product-of-process claim of applicant and also provides distillates and inclusion of particles/particulate or cannabis plant matter (ground cannabis). ‘320 also provides for adding bacteria and fungi and vitamin E that would be extra ingredients. Although claims of ‘320 are to a method, they make the extracts and other products of applicant’s claims.
Claims 41-62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 12, 13, 15, 18-74, 77-140 of U.S. Patent No. 11986005. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of ‘005 also provide for separating terpenes using a similar procedure to the product-of-process claim of applicant and also provides distillates and inclusion of particles/particulate or cannabis plant matter (ground cannabis). Although claims of ‘005 are to a method, they make the extracts and other products of applicant’s claims.’005 provides for ingredients, beverages and foodstuffs of the claims.
Claim 41-59 and 61-62 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, 12, 14, 15, 18-21 and 23-25 of copending Application No. 18/669,730 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims of ‘730 also provides for cannabis oil and terpenes using a similar procedure to the product-of-process claim of applicant and also provides distillates and inclusion of particles/particulate or cannabis plant matter (ground cannabis). Although claims of ‘730 are to a method, they make the extracts and other products of applicant’s claims.’730 provides for ingredients, beverages and foodstuffs of the claims. ‘730 provides for maltodextrin and other starches as ingredients. In claim 12 of ‘730, mixing the cannabis extract with starch or maltodextrin (also a starch) would create a particulate.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Terminal Disclaimers
The three terminal disclaimers filed on 1/24/2026 were not approved (see terminal disclaimer review decision from 2/18/2026). Therefore, these rejections are maintained.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
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