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 .
DETAILED ACTION
Claims 1-20 are pending in the application. Claims 1-20 are rejected.
Election/Restrictions
Applicant’s election without traverse of the species of (1) a mixture of choline chloride and glucose and (2) caffeine in the reply filed on December 4th, 2025 is acknowledged.
As per MPEP 803.02, the examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species combination is not allowable. MPEP 803.02 states:
Following election, the Markush claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability. […]
If the Markush claim is not allowable, the provisional election will be given effect and examination will be limited to the Markush claim and claims to the elected species, with claims drawn to species patentably distinct from the elected species held withdrawn from further consideration. […]
As the elected species has been found not allowable, the Markush-type claims have been rejected and claims to the nonelected invention held withdrawn from further consideration. The elected species are not allowable under 35 USC 112(a) and 112(b) where the rejections below address subject matter outside the scope of the elected species in the interest of compact prosecution; however, subject matter that has been fully examined with respect to the Markush claim 1 is the subject matter of the elected species. Nevertheless, the Examiner has additionally searched and examined a scope (detailed in the Allowable Subject Matter section below) that is free of the prior art.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on March 11th, 2024 and November 29th, 2023.
Claim Rejections - 35 USC § 112(a)
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 1-13 and 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.
Claim Scope (MPEP 2163(II)(A)(1)
MPEP 2163 outlines the methodology for determining adequacy of written description. MPEP 2163(II)(A)(1) instructs “For Each Claim, Determine What the Claim as a Whole Covers”.
The instant claims are directed to a method of extracting a bioactive compound from a plant material comprising several steps including mixing the plant material with a natural deep eutectic solvent. The basis of the instant rejection, however, is based on the generic term “macroporous resin” and subsequent “recovering” step of instant claim 1. The limitation of “have been removed” is rejected as indefinite below. Regardless, the step of loading involves applying three components to a macroporous resin: extracts of a plant material, a bioactive compound and NaDES. Subsequently, claim 1 recites “recovering plant extract” from the resin “wherein the bioactive compound and NaDES have been removed from the plant extract.” The step as recited implies that the “plant extract” and “bioactive compound” were previously part of the same mixture but during the “loading” and “recovering” steps, the components are separated. The identity of the macroporous resin is not limited in any claim covered by this rejection except where claim 13, which recites that the macroporous resin is non-polar. The specification contains the following description on page 9:
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Notably, the instant generic term is not merely limited to commercially available macroporous resins but coverage would extend to any macroporous resin that could be synthesized.
Disclosed Support (MPEP 2163(II)(A)(2))
MPEP 2163(II)(A)(2) instructs “Review the Entire Application to Understand How Applicant Provides Support for the Claimed Invention Including Each Element and/or Step”. The specification generally discusses the intent of the elected embodiment (where the bioactive compound is caffeine) on pages 7 and 8 where it is desirable to remove caffeine from natural sources including yerba mate. Regarding macroporous resins, the specification discloses examples on page 10 as follows:
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.
The specification discusses general steps beginning on page 17 including the possible use of the columns above in paragraph [0069] and elution in paragraph [0070]. The specification discloses static adsorption and desorption property testing on pages 22 and 23 and provides results beginning on page 29. Tables 5(A) and 5(B) disclose absorbent and desorption capacities where the specification states the following on page 32:
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Pages 32-35 disclose a procedure involving HDP200 where the following paragraph appears to correspond to a “plant extract” where a bioactive compound has been removed:
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Example 5 on pages 36-39 contains an analogous larger scale procedure using HDP200.
As further noted in MPEP 2163(II)(A)(2), “Such a review is conducted from the standpoint of one of ordinary skill in the art at the time the application was filed (see, e.g., Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir. 1993)) and should include a determination of the field of the invention and the level of skill and knowledge in the art.” In this situation, a person of ordinary skill in the art would have been familiar with macroporous resins and their applications with eutectic solvent extractions. Regarding macroporous resins in general, dos Santos et al. (Journal of Food Composition and Analysis 2022, 114, 104703) provide a review of macroporous resins in obtaining bioactive compounds in food. The authors state the following premise in the abstract:
[…] There are currently several resins on the market (copolymers of styrenedivinylbenzene, acrylic, sulfonic, or cyanamide); however, a lack of information in the literature regarding the efficiency of analyte recovery and the different physicochemical characteristics of the MPRs means that no broad correlations have been made. […]
The authors provide the following conclusion on page 8:
It is concluded that the great diversity of commercial resins on the market enables numerous adsorption/desorption processes for compounds of different polarities present in food matrices, such as polyphenols, terpenes, and glycosides. In general, it can be said that it is possible to use D101 or XAD-2 resins in extracts to obtain non-polar fractions, XAD-7, XAD-1180, XAD-761, or EXA-45 for intermediate polarity molecules, and EXA-118 or X5 for polar fractions, but one must bear in mind the evaluation and application of ideal isotherm equations for better interpretation of the analysis results.
The instant claims, however, are directed to a specific embodiment involving removal of one component (the bioactive compound). Dos Santos et al. teach the following on page 4:
Another way of evaluating the sorption process is when it comes to the quantity of species to be adsorbed. When a single component is being adsorbed on the surface of the resin, it is referred to as monocomponent adsorption. However, in practice, the occurrence of this type of system is uncommon, as cases, where different species compete for the surface of the resin, are more frequent, known as multicomponent adsorption. In this way, it is possible to conceptualize that adsorption is a phenomenon that depends on the surface area and the volume of the pores. The pore structure limits the size of the molecules that can be adsorbed, and the available surface area limits the amount of material that can be adsorbed (Ruthven, 1984).
Accordingly, the instant claims entail a process that the art recognizes as less common, i.e. where one component can be selectively removed.
Regarding applicable to caffeine, a person having ordinary skill in the art would recognize significant variability in macroporous resins. For instance, Cai et al. (Separation and Purification Technology 2019, 227, 115723) teach the extraction of caffeine from tea and provide the following adsorption and desorption properties:
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Furthermore, the property of being nonpolar does not correlate with the results observed above since Supelco (Amberlite XAD-2 Polymeric Adsorbent, 1997) teaches that XAD-2 (having the highest adsorption) is hydrophobic and Hailan (Macroporous Adsorption Resin D101, obtained from Macroporous Adsorption Resin D101, obtained from https://www.hailanresin.com/products/macroporous-adsorption-resin-d101.html on March 29th, 2026) teaches that D101 (having a lower adsorption) is non-polar.
Determination of Sufficient Support (MPEP 2163(II)(A)(3))
MPEP 2163(II)(A)(3) instructs “Determine Whether There is Sufficient Written Description to Inform a Skilled Artisan That Inventor was in Possession of the Claimed Invention as a Whole at the Time the Application Was Filed”. This section of the MPEP further provides the following guidance:
Possession may be shown in many ways. For example, possession may be shown by describing an actual reduction to practice of the claimed invention. Possession may also be shown by a clear depiction of the invention in detailed drawings or in structural chemical formulas which permit a person skilled in the art to clearly recognize that inventor had possession of the claimed invention. An adequate written description of the invention may be shown by any description of sufficient, relevant, identifying characteristics so long as a person skilled in the art would recognize that the inventor had possession of the claimed invention.
In this situation and as discussed above, Applicant claims a generic approach of using any type of macroporous resin and has disclosed that one particular resin (HDP200) achieved results that fall within the disclosed desirable ranges (as recited in instant dependent claims 11 and 12). The disclosure is thereof limited in scope relative to the claims (which are not limited by structure) and does not demonstrate that Applicant was in possession of the structural attributes across the full genus that would function in the instantly claimed method and produce the instantly recited results. MPEP 2163 (II)(A)(3)(a)(ii) discusses support for a generic claim as follows:
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above).
The same section notes the following:
Satisfactory disclosure of a "representative number" depends on whether one of skill in the art would recognize that the inventor was in possession of the necessary common attributes or features possessed by the members of the genus in view of the species disclosed. For inventions in an unpredictable art, adequate written description of a genus which embraces widely variant species cannot be achieved by disclosing only one species within the genus. See, e.g., Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. Instead, the disclosure must adequately reflect the structural diversity of the claimed genus, either through the disclosure of sufficient species that are "representative of the full variety or scope of the genus," or by the establishment of "a reasonable structure-function correlation." Such correlations may be established "by the inventor as described in the specification," or they may be "known in the art at the time of the filing date." See AbbVie, 759 F.3d at 1300-01, 111 USPQ2d 1780, 1790-91 (Fed. Cir. 2014)
In this situation, Applicant has failed to provide “disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus.” The original disclosure discloses one example of a macroporous resin that can achieve separation to a desirable level (as recited in dependent claims 11 and 12) and the instant claims seek to cover the use of any macroporous resin that might achieve the same result. As noted above, the instant generic term is not limited to commercially available macroporous resins but would cover any macroporous resin that could be synthesized where the instant specification provides no disclosure of additional structures that could be prepared and be expected to similarly to the one commercial resin HDP200. At least since the art (in view of Dos Santos et al.) recognizes that monocomponent adsorption is uncommon, the disclosure of one example would not convince a person having ordinary skill in the art that Applicant was in possession of the genus that would be operable in the claimed method as it relates to the selective removal of caffeine.
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 1-20 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.
The term “removed” in claim 1 is a relative term which renders the claim indefinite. The term “removed” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant claims embrace a method where a plant material, bioactive compound and NaDES are loaded onto a macroporous resin. Subsequently, a “plant extract” is recovered from the resin wherein “the bioactive compound and NaDES have been removed from the plant extract.” Given the change in tense from “loading,” and “recovering” to “have been removed,” the claim appears to be embracing methods where the “removal” occurs via the preceding steps. There would appear to be several possible interpretations of “removed” including:
the bioactive compound is entirely removed and the obtained plant extract contains no bioactive compound;
the bioactive compound is partially removed to the point of being undetectable in the obtained plant extract;
the bioactive compound is partially removed to the point of having a measurable difference in concentration relative to the crude extract solution;
the bioactive compound is partially removed to a particular (undefined) degree; and
the bioactive compound is partially removed in any amount.
Interpretation (1) appears inconsistent with the application as filed at least in view of dependent claims 2, 11 and 12 where the bioactive compound is caffeine (in claim 2) and where dependent claims 11 and 12 recite the recovered plant extract contains less than a certain weight percent of caffeine. The specification generally discusses embodiments where the bioactive compound is caffeine and the embodiments of claims 11 and 12 would (when the bioactive compound is caffeine) embrace incomplete removal when the plant extract contains a non-zero amount of caffeine. Accordingly, disclosure of the plant extract having some amount of bioactive compound remaining suggests that “removal” need not be complete.
Interpretations (2), (3) and (5) each fail to meet the standard set forth in MPEP 2173:
The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. […]
For instance, interpretations (2), (3) and (5) are each dependent upon the limit of detection. Tasic et al. (Sensors 2022, 22, 9185) provide a review of electrochemical sensors for caffeine determination and note the number of papers per year in Figure 1 on page 3, which is generally increasing in the years leading up to the instant filing. The review discusses various developed methods having different limits of detection. See, for instance, Table 1 on page 12. If the test for infringement is merely some non-zero presence of the bioactive compound (in some discarded fraction) or some non-zero difference in concentration of the bioactive compound, it is unclear how a person of ordinary skill in the art should navigate infringement. For instance, a person of ordinary skill in the art could (1) use the most sensitive method available to them based on equipment in their possession, (2) use the most sensitive method available based on published LODs, or (3) test the various known methods in the claimed systems to determine which would provide the best LOD. The situation would be further complicated based on the continued development of new methods that would result in lower LOD such that a previously undetectable amount or difference of bioactive compound might be detectable at a later time.
Regarding the specification and a detection limit, the disclosed examples utilize a gradient elution whereby (in Table 6(B)) caffeine does not elute with 20% EtOH but does elute with 70% EtOH. Table 6(B), however, reports that the water elution contains a non-zero amount of caffeine. Accordingly, the embodiment described in Table 6(B) could be argued to fall within the scope of claim 1 even if the 20% EtOH elution step were skipped since a non-zero amount of caffeine was removed with the water elution. If Applicant argues that such an embodiment (skipping the 20% EtOH elution) would not fall within the scope of claim 1, it is unclear how much caffeine needs to be removed in order to meet the limitation of claim 1. If Applicant argues that such an embodiment would fall within the scope of claim 1, a person of ordinary skill in the art would be dependent upon detection limits to monitor trace amounts of caffeine being removed (and subject to the issues above regarding currently available methods of detection). For instance, it is not readily apparent whether the undetected caffeine level in the water elution of Table 7(B) is merely below a detection limit or an actual complete absence.
Interpretation (4) appears to be the most consistent with the specification where the specification discusses decaffeination on pages 8-9, i.e. where Applicant intends for the method to be applicable to the removal of caffeine for a specific purpose. The claims, however, are not limited to this specific purpose. For instance, instant claim 1 embraces the inverse operation where caffeine is the desired plant extract and the additional bioactive compounds found in a biological source are removed. Cai et al. (Separation and Purification Technology 2019, 227, 115723) disclose such a method where the authors use deep eutectic solvents (2.3. Extraction of caffeine from CDT using different DESs, page 2) followed by treatment with a macroporous resin (2.5. Recovery of caffeine using macroporous resins, page 2). The potential embodiments falling with the scope of claim 1 therefore form a type of continuum where different components of a biological source can be considered “the bioactive substance” and where varying levels of certain components in “the plant extract” are not necessarily limited since a person of skill in the art would seek different levels for different applications. Furthermore, the application of different macroporous resins would be expected to result in different levels of removal. Cai et al. teach several resins in Figure 4 (page 6) having adsorption capacities of caffeine ranging from less than 2.5 mg/g up to 29.06 mg/g. The specification contains no metrics (besides those in the proposed amendment below) to determine which embodiments would constitute infringement where, for instance, the bioactive compound is caffeine and a sufficient quantity has been removed to fall within the scope of the claims.
Dependent claims 2-20 are rejected as indefinite for the same reason as discussed relative to claim 1. Claims 11 and 12, while reciting a level of caffeine in the recovered plant extract, do not define the bioactive compound and therefore suffer from the same issues when the bioactive compound is anything other than caffeine.
The broadest limitations that would clarify the issues above and be supported by the originally filed disclosure would appear to be the union of claims 2 and 11, i.e. “wherein the bioactive compound is caffeine and the recovered plant extract contains less than 0.05% caffeine by weight.”
Comment on Prior Art / ISR
The International Search Report for PCT/US2023/031506 cited several references. The scope of examined subject matter is limited to the elected species as noted above and the additional scope in the Allowable Subject Matter section. To the extent that a reference could be argued to extend to the subject matter under examination, the Examiner finds that the ISR does not appear to differentiate between the “plant extract” and the “bioactive compound” as separate entities where one is separated from the other. The ISR states that the reference by Cai et al. applies to instant claim 2. Cai et al. teach the following method on page 6:
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The only material stated to be obtained from the resin is a sample of increased purity caffeine. The prior art does not state that different fractions were obtained from the resin or that, for instance, the additional components were separated from the NaDES. It would appear possible that the caffeine sample could be considered the “plant extract” and some additional component of the prior art “impurities” could be an instantly recited bioactive compound; however, the prior art does not disclose which components were removed.
Allowable Subject Matter
The following proposed amendment to claim 1 would overcome the rejections and correspond to subject matter that the Examiner finds to be free of the prior art:
A method of extracting a bioactive compound from a plant material, the method comprising:
obtaining a plant material;
mixing the plant material with a natural deep eutectic solvent (NaDES);
obtaining a crude extract solution comprising extracts of the plant material, the bioactive compound, and NaDES;
loading the crude extract solution onto an HDP200 macroporous resin; and
recovering plant extract from the HDP200 macroporous resin, wherein the bioactive compound and NaDES have been removed from the plant extract,
wherein the bioactive compound is caffeine and the recovered plant extract contains less than 0.05% caffeine by weight.
The closest prior art would appear to be Cai et al., which does not teach obtaining a fraction having the content of caffeine recited in instant claim 11. Furthermore, the prior art as a whole provides insufficient guidance or motivation on the selection of an HDP200 resin specifically for use with a caffeine containing system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P COUGHLIN whose telephone number is (571)270-1311. The examiner can normally be reached Monday - Friday, 10 am - 6 pm EST.
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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