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 .
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and the fee set forth in 37 CFR 1.1 7(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/08/2026 has been entered.
Status of Claims
Claim 1 has been amended. No new claim has been added. Claims 1-10 are pending. Claims 1-10 are examined herein.
Response to Arguments
Applicant's Remarks/Arguments and Amendments to Claims both filed 09/08/2026 have been fully considered.
It is noted that claim 1, an independent claim from which all of its dependent claims ultimately depend, has been amended to recite “pumping the inert gas between vessels to change pressures within the system to aid in the movement of at least one of the solvent, plant extracts, and desired compounds, wherein the mixing, the recovering, and the pumping are each performed without removing the inert gas from the system” in the context of a method of extracting desired compounds from a mixture as claimed.
Applicant argues that: the claim 1 and its dependent claims are not anticipated nor prima facie obvious over cited prior art(s), Cumings et al. (US 9,926,512 B2), this is because the cited prior art does not teach or suggest the amended features of “pumping the inert gas between vessels to change pressures within the system to aid in the movement of at least one of the solvent, plant extracts, and desired compounds, wherein the mixing, the recovering, and the pumping are each performed without removing the inert gas from the system” in the context of a method of extracting desired compounds from a mixture as claimed. In contrast See Remarks, pages 4-5.
In response, the applicants’ arguments direct a newly amended claim limitation which is a new issue. Therefore, the arguments are considered moot. Applicant's amendment necessitated a modified/new ground(s) of rejection presented in this Office action.
Upon further consideration and search, a modified/new ground of rejections/objections to claims 1-10 are presented in the instant Office action.
MODIFIED REJECTIONS
Claim Objections
Claims 1-2 and 4-10 are objected to because of the following informalities:
Claim 1 recites “the system” in lines 6 and 9. It is respectfully suggested to amend the limitation to “the cannabinoid extraction system” for consistent recitation of claim limitation.
Claim 1 recites “the movement” lines 6-7 which lacks an antecedent basis. It is respectfully suggested to amend the limitation to “movement” of define “movement” earlier in the claim.
Claim 2 recites “adding an inert gas” line 1. It is respectfully suggested to amend the limitation to “the adding the
Regarding claim 4, it is respectfully suggested to amend the limitation to, for example:
“The method as claimed in claim 1, wherein the recovering the solvent comprises moving the mixture to a solvent separator, wherein the solvent separator comprises
Claim 5 recites “pumping the inert gas” line 1. It is respectfully suggested to amend the limitation to “the pumping the inert gas” since the limitation refers to step of pumping the inert gas recited in claim 1.
Claim 6 recites “pumping the inert gas” line 1. It is respectfully suggested to amend the limitation to “the pumping the inert gas” since the limitation refers to step of pumping the inert gas recited in claim 1.
Claim 7 recites “pumping the inert gas” line 1. It is respectfully suggested to amend the limitation to “the pumping the inert gas” since the limitation refers to step of pumping the inert gas recited in claim 1.
Claim 8 recites “adding the inert gas” line 1. It is respectfully suggested to amend the limitation to “the adding the inert gas” since the limitation refers to step of adding an inert gas recited in claim 1.
Claim 8 recites “the system” in lines 2-3. It is respectfully suggested to amend the limitation to “the cannabinoid extraction system” for consistent recitation of claim limitation.
Claim 9 recites “adding the inert gas” line 1. It is respectfully suggested to amend the limitation to “the adding the inert gas” since the limitation refers to step of adding an inert gas recited in claim 1.
Claim 9 recites “the gas to be pulled” line 2. It is respectfully suggested to amend the limitation to “the inert gas to be pulled” for consistent recitation of claim limitation.
Claim 10 recites “removing the solvent” line 1. It is respectfully suggested to amend the limitation to “the recovering
Appropriate corrections are required.
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 1-10 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 regard(s) as the invention.
Claim 1 recites “mixing a solvent with plant matter having one or more desired compounds to form a mixture;” and “recovering the solvent from the mixture, leaving a residual liquid;” in lines 3-5.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements (i.e., process steps). See MPEP § 2172.01. The omitted elements are: the connecting step(s) between the step of “mixing a solvent with plant matter having one or more desired compounds to form a mixture;” and the step of “recovering the solvent from the mixture, leaving a residual liquid;” recited in lines 3-5. It is unclear and indefinite to one skilled in the art how to directly recover the solvent from the mixture from the previous step of “mixing a solvent with plant matter”. The specification recites that the mixture is transported to an extraction vessel, subsequently, there are fluid and thermal communications between the extraction vessel with the solvent evaporator, thereby recovering a solvent and leaving a residue liquid (Fig. 1; paragraph [0010]).
Claim 1 recites “pumping the inert gas between vessels” in line 6. This is considered indefinite for the following reason: It is unclear what the recitation “vessels” is referring to. It is also unclear where the vessels are located and how functioning/operating “pumping the inert gas between vessels” in the context of a cannabinoid extraction system.
Claim 1 recites “plant extract” in line 7. This is considered indefinite for the following reason: It is unclear where the “plant extract” resulted from, or where the “plant extract” originated from in the context of the method recited. In addition, it is also unclear what is the relationship between “plant matter” and “plant extract” in the context of method as claimed.
Claims 2-10 are also rejected under 35 U.S. §112 by virtue of its dependence on claim 1.
Claim 3 recites “plant extracts” in line 2. This is considered indefinite for the following reason: It is unclear where the “plant extract” resulted from, or where the “plant extract” originated from in the context of the method recited. In addition, it is also unclear what is the relationship between “plant matter” and “plant extract” in the context of method as claimed.
Claim 4 recites “moving the mixture to a solvent separator” in line 2. This is considered indefinite for the following reason: It is unclear apparatus(es) of the mixture being housed (e.g., a mixer, or an extraction vessel) prior to moving the mixture to a solvent separator.
Claim 7 recites “the extraction vessel” in lines 2-3 which lacks an antecedent basis. It is noted that the extraction vessel is recited in claim 3, not in claim 1, therefore, the dependency of claim 7 needs to be amended as being dependent on claim 3.
Allowable Subject Matters
Claims 1-10 in the instant application are allowed if previously presented objections to claims 1-2 and 4-10 and 35 U.S.C. 112(b) rejections to claims 1-10 are resolved.
The following is a statement of reasons for the indication of allowable subject matter. A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 1-10. The concept of a method, comprising;
adding an inert gas to a cannabinoid extraction system;
mixing a solvent with plant matter having one or more desired compounds to form a mixture;
recovering the solvent from the mixture, leaving a residual liquid; and
pumping the inert gas between vessels to change pressures within the system to aid in the movement of at least one of the solvent, plant extracts, and desired compounds,
wherein the mixing, the recovering, and the pumping are each performed without removing the inert gas from the system (claim 1), is considered novel.
The closest prior art to Cumings et al. (US 9,926,512 B2) discloses a method/an apparatus for extracting desired components from plant material including cannabis (Abstract), wherein the method comprises (Fig. 1 and Fig. 9; Note: Fig. 9 shows apparatus matched in the process diagram shown in Fig. 1; col. 6, line 60 thru col. 7, line 50): (i) adding an inert gas of nitrogen (claim 2) (165, Fig. 1) to a cannabis extraction system (a cannabinoid extraction system) (the entire system shown in Fig. 1 or Fig. 9); (ii) mixing a solvent (a solvent from a solvent vessel 110, Fig. 1) with plant matter having one or more desired compounds (source material in an extraction vessel 120, Fig. 1) to form a mixture (a mixture of the solvent and the plant source material in the extraction vessel 120, Fig. 1); (iii) recovering the solvent from the mixture through a solvent transfer line (135, Fig. 1) to the solvent vessel (110, Fig. 1), leaving a residual liquid in a collection vessel (130, Fig. 1); and (iv) the inert gas input (110n, Fig. 9) enters the top space of the solvent vessel (110, Fig. 9) above the solvent contained in the vessel, thus adding pressure to the headspace above the liquid solvent (col. 9, lines 1-10). Cumings discloses the inert gas needs to be relieved before product (desired plant extracts) recovery begins. But Cumings reference does not provide any guidance which would have led one skilled in the art to conduct the specific step of “pumping the inert gas between vessels to change pressures within the system to aid in the movement of at least one of the solvent, plant extracts, and desired compounds, wherein the mixing, the recovering, and the pumping are each performed without removing the inert gas from the system” in the context of a method for extracting desired components from plant material using a cannabinoid extraction system as claimed.
Other pertinent prior art to Sherwood et al. (WO 2021/118539 A1) discloses a method for extracting at least one chemical compound from plant material, comprising: a) preparing a feedstock by at least one of chopping, cutting, treating, pelletizing, and grinding the plant material; b) preheating the feedstock to a first temperature at atmospheric or sub-atmospheric pressure for a preselected time to form a preheated feedstock; c) heating the preheated feedstock to a second temperature at sub-atmospheric pressure in an evaporation chamber to form a heated feedstock; d) flowing a heated motive gas through the evaporation chamber to drive the at least one chemical compound from the heated feedstock, thereby forming a pregnant motive gas; and e) condensing a portion of the pregnant motive gas to recover the at least one chemical compound, wherein the motive gas comprises at least one gas selected from the group consisting of helium, argon, an inert gas other than helium and argon, air, nitrogen, CO2, and superheated steam.
Other pertinent prior art to Ortiz et al. (US 2021/0230645 A1) discloses a method of processing plant material, the method comprising: providing a slurry of plant material; providing an inert gas; adding the slurry and the inert gas to a tank; applying heat and pressure to the slurry inside the tank to generate a processed plant material; removing the processed plant material from the tank; and drying the processed plant material in a dryer to produce a dried product comprising cannabidiol (CBD).
Other pertinent prior art to Leveson et al. (US 2016/0243460 A1) discloses a method to thermally fractionate and recover compounds from plant based material, the method comprising: (i) loading macerated plant material into a plurality of channels; (ii) introducing a sweeper gas flow along the length of each channel; (iii) externally heating each channel in accordance with a temperature controlled ramp; (iv) directing gas exiting the channels in a first temperature range to a first condenser; and (v) directing the gas exiting the channels in a second temperature range to a second condenser; whereby the first condenser provides a first compound and the second condenser provides a second compound.
Other pertinent prior art to Thomas (US 2018/0078874 A1) discloses a method for extracting an oil from plant material, the method comprising: (i) providing a system for extracting an oil from plant material, the system comprising a gas moving device, an extraction chamber, a collection chamber, and a liquid collector; (ii) providing plant material in the extraction chamber; (iii) volatilizing oil from the plant material, the oil being extracted into the gas stream; (iv) contacting the gas stream with a collection solvent such that at least some of the oil is captured by the collection solvent; and (v) collecting a portion of the oil and collection solvent from the gas stream.
The combination of cited prior arts, set forth above, alone or in a combination, do not provide any guidance which would lead one to conduct a method, comprising; (i) adding an inert gas to a cannabinoid extraction system; (ii) mixing a solvent with plant matter having one or more desired compounds to form a mixture; (iii) recovering the solvent from the mixture, leaving a residual liquid; and (iv) pumping the inert gas between vessels to change pressures within the system to aid in the movement of at least one of the solvent, plant extracts, and desired compounds, wherein the mixing, the recovering, and the pumping are each performed without removing the inert gas from the system, as recited in claim 1 of claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached on 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772
