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 . Notice of Pre-AIA or AIA Status
Final Rejection
The Status of Claims:
Claims 72-81 are pending.
Claims 72-81 are rejected.
Calms 82-99 are withdrawn from consideration.
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 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.
Claim Rejections - 35 USC § 112
In view of the revised claim 72, a new 112 rejection seems necessary in the following.
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 72-81 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Zinc Chloride or Hydrochloric acid or Sulfuric acid or Zinc Bromide or Boron Trifluoride or Boron Trifluoride Diethyl Ethereate, p-toluenesulfonic acid monohydrate, and a combination thereof , does not reasonably provide enablement for any catalyst. The specification does not enable any skilled process chemist or pilot-plant operator to make the invention commensurate in scope with these claims. “The factors to be considered [in making an enablement rejection] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art and the breadth of the claims”, In re Rainer, 146 USPQ 218 (1965); In re Colianni, 195 USPQ 150, Ex parte Formal, 230 USPQ 546. The three issues here are the lack of guidance in the specification, the limited working examples, and the unpredictability of the catalytic arts.
a) Determining if Δ8-THC is prepared from an industrial hemp (CBD) by adding a catalyst under any conditions, it would require an isomerization process with a reasonable quantity of experimentation. b) The direction concerning some " catalysts " is found in a paragraph# 163, page 32. c) There are 2 working examples of using P-Tosic and ZnCl2 catalyst as for representing the " catalyst ", page 48. d) The nature of the invention is a chemical process used to convert CBD to Delta-8 THC by isomerization. This requires chemical catalysis.
f) The artisan using Applicants' invention to prepare the claimed compounds would be a process chemist or pilot plant operator with a BS degree in chemistry and several years of experience. As suggested by Applicants in the application, he would know how to use " P-Tosic and ZnCl2 catalyst for isomerization, but be unaware of any other catalyst to use.
g) Chemical reactions are well-known to be unpredictable, In re Marzocchi, 169 USPQ 367, In re Fisher, 166 USPQ 18. Additionally, catalytic processes, such as are present here, are inherently unpredictable. The U.S. District Court District of Connecticut held in MOBIL OIL CORPORATION v. W.R. GRACE & COMPANY, 180 USPQ 418 that “there is an inherent mystery surrounding the unpredictability of the performance of catalysts; a mystery which is generally recognized and acknowledged by chemists in the cracking art. This is one more reason why the presumption of patent validity "should not be disregarded especially in a case of this sort where the intricate questions of [bio]chemistry involved are peculiarly within the particular competence of the experts of the Patent Office.” Merck & Co. v. Olin Mathieson Chemical Corp., 253 F.2d 156, 164, 116 USPQ 484, 490 (4th Cir. 1958)". "The catalytic action can not be forecast by its chemical composition, for such action is not understood and is not known except by actual test, Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 368-369 (1928). Also see, Application of Grant, 304 F.2d 676, 679, 134 USPQ 248, 250-251 (CCPA 1962); Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176, 181, 148 USPQ 522, 525-526 (2d Cir. 1966), cert. denied 385 U.S. 821, 151 USPQ 757 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 268, 152 USPQ 446, 450-451 (2d Cir. 1967); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 132-133, 118 USPQ 122, 128-129."
h) The breadth of the claims includes the presently unknown list of catalysts embraced by limitation " a catalyst ” generally ". Thus, the breadth of the claims is too broad.
Claim Rejections - 35 USC § 103
Applicants’ arguments filed 5/5/26 have been fully considered, and are not
persuasive.
2113 Product-by-Process Claims
PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATION OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 77 F.2d 695,698,227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive prereacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
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 rejection of Claims 72-81 under 35 U.S.C. 103 as being unpatentable over Tegen et al (US 2020/0255389 A1) in view of Elmes et al (US 2022/0008379 A1), which has a provisional application No. 63/049,310 filed on July. 8, 2020 and MR.HEMPFLOWER ( Delta-8 THC vs. delta-9 THC — what’s the difference between these two hemp cannabinoids?, September 1, 2020 , p.1-9) is still maintained.
Applicants argue the following issues:
Claims 72-81 are rejected under 35 U.S.C. §103 are allegedly unpatentable over Tegen et al. (US 2020/0255389 Al) in view of Elmes et al (US 2022/0008379 Al) and Mr. Hempflower (Delta-8 THC vs. delta-9 THC - what's the difference between these two hemp cannabinoids?, September 1, 2020 , p.1-9). Applicant respectfully traverses this rejection.
Independent claim 72 is amended herein to recite: An industrial hemp derived oil comprising about 73.59% to about 99.73% 11-8 tetrahydrocannabinol (THC), wherein the oil has less than 0.3% delta -9 THC, and wherein the oil is produced by distilling a crude residue, wherein the crude residue is prepared by adding a catalyst and an organic solvent to a CBD distillate or isolate from the industrial hemp to form a reaction mixture; allowing the reaction mixture to reflux; quenching the reaction mixture; and evaporating the organic solvent to form the crude residue.
Tegen's Example 9 is cited for a delta-8 THC oil having 96.5% delta-8 THC and 2.5% delta-9 THC. The Examiner asserts it would have been obvious to use column chromatography repeatedly to reduce the amount of delta-9 THC to below 0.3% as claimed by Applicant. The secondary references are not cited regarding independent claim 72.
Mr. Hempflower is cited for teaching the dosage in the dependent claims.
at the outset, Tegen's Example 9 uses 15g of CBD as starting material- and not industrial hemp. Although Tegen's specification states the starting material may comprise hemp, Tegen does not teach or suggest a highly pure 11-8 THC oil using industrial hemp as a starting material. Additionally, Tegen does not teach or suggest how to make such a highly pure delta-8 THC oil.
Specifically, Tegen uses column chromatography and not distillation. Therefore, Tegen does not teach or suggest the claimed limitations of distilling a crude residue, wherein the crude residue is prepared by adding a catalyst and an organic solvent to a CBD distillate or isolate from the industrial hemp to form a reaction mixture; allowing the reaction mixture to reflux; quenching the reaction mixture; and evaporating the organic solvent to form the crude residue. The secondary references do not cure this deficiency.
Thus, Applicant submits that a presumption of prima facie obviousness has not been established for claims 72-81 over the cited art. Applicant respectfully requests withdrawal of the present rejection.
Regarding, the first argument, applicants’ arguments have been noted.
However, the revised claim 72 is directed to a product-by-process claim, which is not concerned about how to prepare the final product, regardless of using either the distillation process or the column chromatography for the product. The primary prior art Tegen et al does disclose 96.5% delta 8-THC in spite of a little difference in the percentage of delta 9-THC from the claimed limitation. Even so, Tegen et al does teach that the crude product was then subjected to column chromatography(see page 57, a paragraph#0899). From these passages, it does suggest that the impurity of delta 9-THC can be further removed for improving the purity of the product of delta 8-THC. Therefore, if the skilled artisan in the art had desired to improve the purity of delta 8-THC, it would have been obvious to be motivated to apply it to column chromatography repeatedly, thereby achieving the oil with less than 0.3% A-9 THC.
Regarding the second arguments, the examiner has recognized that Tegen et al does not specify whether Tegen’s et al product is derived from synthetic cannabidiol (CBD) or industrial hemp. Even so, it does mention that industrial hemp refers to varieties of the Cannabis plant that have a low content of DELTA 9-THC (see page 1, a paragraph#0006). From this passage, it follows that there is a high chance or motivation that Tegen could have used the natural industrial hemp having varieties of the Cannabis plant containing CBD that have a low content of DELTA 9-THC for the purpose of production of a pure Delta-8 THC oil instead of using the synthetic CBD or other kind of CBD as the starting material.
Furthermore, the claim 72 has been amended to include the limitations of “distilling a crude residue, wherein the crude residue is prepared by adding a catalyst and an organic solvent to a CBD distillate or isolate from the industrial hemp to form a reaction mixture; allowing the reaction mixture to reflux; quenching the reaction mixture; and evaporating the organic solvent to form the crude residue”. However, these limitations do not have any patentable weight over the prior art because the claims are not directed to the process claims, but they are directed to the product-by-process claims. Therefore, applicant’s arguments are not persuasive.
Conclusion
Claims 72-81 are rejected.
Calms 82-99 are withdrawn from consideration.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached on 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached 8:00-5:00.
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, Andrew Kosar can be reached on 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 5/19/2026
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