Prosecution Insights
Last updated: April 19, 2026
Application No. 18/503,883

TERPENE EXTRACTION APPARATUS AND PROCESS

Non-Final OA §103§112
Filed
Nov 07, 2023
Examiner
NGUYEN, TAM M
Art Unit
1771
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Tandem Technology Corporation
OA Round
1 (Non-Final)
78%
Grant Probability
Favorable
1-2
OA Rounds
2y 9m
To Grant
88%
With Interview

Examiner Intelligence

Grants 78% — above average
78%
Career Allow Rate
746 granted / 963 resolved
+12.5% vs TC avg
Moderate +11% lift
Without
With
+10.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
68 currently pending
Career history
1031
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
51.2%
+11.2% vs TC avg
§102
16.7%
-23.3% vs TC avg
§112
18.7%
-21.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 963 resolved cases

Office Action

§103 §112
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 Objections Claim 27 is objected to as being improperly dependent because c laim 27 recites: “ The terpene extraction process of claim 19 further comprising: a hygrometer…”. Claim 19 is directed to an apparatus (“A terpene extraction apparatus comprising…”). Therefore, claim 27 is of a different statutory class ( process ) than the claim upon which it depends ( apparatus ), and is thus improperly dependent. 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 appl icant regards as his invention. Claims 19-27 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. Regarding claim 19, the phrase "when" on line 18 renders the claim indefinite because it is unclear whether the limitation(s) following the word are part of the claimed invention. See MPEP § 2173.05(d). Claim 19 recites multiple “ designed to ” limitations (e.g., “designed to… move… measure… compare… stop”), and claims 20–21 further recite “designed to decrease…” and “designed to cause… precipitate…”. The claim language does not clearly set forth what structure of the claimed apparatus (e.g., controller, sensor placement, valving logic, program steps, or specific mechanical arrangement) performs the recited functions, and instead reads as intended use / functional result language without clear structural boundaries. Accordingly, the metes and bounds of the apparatus are unclear. Claim 19 recites transferring heat from the second gas into coolant to cool the second gas, and also recites “ measure a water vapor content of the second gas .” The claim fails to specify where in the apparatus the water vapor content is measured (e.g., upstream of the cold trap, within the cold trap, downstream of the cold trap outlet), and whether the measurement is of the second gas before or after cooling/condensation/freezing. Because the water vapor content would materially differ depending on measurement location and cooling state, the scope of claim 19 is indefinite. Claim 24 recites that “the flow path between the inlet and the outlet has an interior surface and an exterior surface ” and that coolant cools the second gas “via the interior surface and the exterior surface.” The claim does not clearly define what constitutes the “interior surface” and “exterior surface” of the “flow path” (e.g., whether these are opposing sides of a wall, the inside/outside of a tube, or surfaces of different components). As drafted, a person of ordinary skill cannot reasonably determine the boundaries of these surfaces or how cooling “via” those surfaces is achieved, rendering claims 24–26 indefinite C laim 27 is indefinite because it recites “ vapor content ” whereas claim 19 recites “ water vapor content .” The scope is unclear as to whether claim 27 measures total vapor content or specifically water vapor content, and the relationship of the hygrometer to the “water vapor content measuring device” of claim 19 is ambiguous (i.e., whether it is the same device, an additional device, or a different measurement altogether) 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 19–27 are rejected under 35 U.S.C. §103 as being unpatentable over Wirtz et al. (US 2022/0241699 A1) in view of Singh (US 7,707,741 B2). Wirtz discloses a terpene extraction system including a reactor housing containing plant biomass and downstream cold trap assemblies for condensing and capturing water and terpene vapors. A reactor/housing containing plant biomass is disclosed in ¶¶[0038]–[0044] , [0059]–[0063] , and FIGS. 7–9 , wherein plant biomass is heated and agitated to generate a water and terpene vapor mixture . The reactor includes inlets and outlets for gas and vapor flow, and is operated with vacuum and/or sweeping gas to move vapors downstream ( ¶¶[0046]–[0049], [0063] ). Wirtz discloses cold trap assemblies downstream of the reactor for receiving the vapor stream and condensing/freezing water and terpenes ( ¶¶[0049]–[0056], [0064]–[0068] , FIGS. 10–16, 25–29 ). Wirtz further discloses gas flow paths through the cold traps, coolant systems for heat transfer, and the precipitation of terpenes as liquids or solids ( ¶¶[0050]–[0055], [0066]–[0068] ). Wirtz discloses controller-based automation , including sensors, valves, and programmed control of extraction operations ( ¶¶[0057]–[0059] , FIG. 17 ). It is reminded that claims 19 - 27 drawn to an apparatus system which includes a manner of operating disclosed system, neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP §2114 and 2115. Further, process limitations do not have a patentable weight in an apparatus claim. See Exparte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states "Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim. Wirtz does not disclose measuring water vapor content of the exiting gas and stopping extraction based on a predetermined moisture threshold. Singh discloses a gas-drying system in which a non-reactive gas is flowed through a cavity, moisture content is measured, compared to a predetermined value, and the process is stopped once sufficient dryness is achieved. Singh teaches measuring moisture content of a gas exiting a cavity using a dew point hygrometer, which directly corresponds to water vapor content (col. 3, line 6 through col. 4, line 49 ; FIG. 3 and its descriptions (element 330)). Singh teaches repetitively measuring the dew point of the exiting gas and comparing the measured value to a predetermined dew point temperature corresponding to a desired moisture level (FIG. 4, and its descriptions ( steps 440–460). Singh further teaches stopping gas flow (i.e., discontinuing the drying/extraction operation) when the measured value is less than or equal to the predetermined value, optionally after remaining below the threshold for a predetermined time (FIG. 4, and its descriptions; steps 470–510). Singh explicitly discloses automation via a controller operably coupled to the hygrometer to perform the comparison and stopping function . (Col. 6, lines 26-36). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Wirtz to incorporate Singh’s moisture-based endpoint control into Wirtz because one of ordinary skill would incorporate Singh’s dew point / moisture measurement and stop-criteria control into the Wirtz terpene extraction system to determine when the extraction/drying transfer is complete and to avoid unnecessary continued operation (e.g., continued sweeping/vacuum operation), thereby improving efficiency, reducing processing time, and enabling repeatable batch completion based on a measurable exhaust property. This is a predictable use of known process-control techniques (moisture/dew point based termination) applied to a vapor-handling system where water content is a relevant completion signal. Regarding c laim 20 , Singh teaches that dew point (water vapor content) decreases over time as drying proceeds and reaches/maintains a target threshold. Regarding c laim 21 , Wirtz teaches condensing/freezing the water and terpene vapor mixture in cold traps, which inherently causes terpenes to condense/precipitate as liquid and/or solid depending on temperature and composition. Regarding c laims 22–23 , Wirtz teaches plant biomass and explicitly contemplates cannabis source plant biomass, thereby teaching biomass primarily plant mass (claim 22) and Cannabaceae family plants (claim 23). Regarding c laims 24–25 , Wirtz teaches cold trap structures with cooled walls and internal cooling structures (e.g., jacketed cooling and internal cooling paths such as coolant tubes/immersion cooling elements) that cool the vapor stream via surfaces bounding the flow path. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Wirtz by implement ing cooling on multiple sides/surfaces of the flow passage (including internal and external cooling surfaces) to increase heat transfer and condensation/freezing efficiency, a well-known engineering optimization for condensers/cold traps. Regarding c laim 26 , Wirtz teaches use of temperature sensors (e.g., thermocouples) at multiple locations in the system for monitoring cold trap operation and process control, and Singh teaches controller-based automation and monitoring associated with measured gas properties. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Wirtz by provid ing temperature-measurement structures representative of surfaces associated with the cold trap flow path to improve control of condensation/freezing performance. A “thermowell” is a known, routine mechanical implementation for obtaining representative temperature data of a surface or zone while protecting the sensor, and selection of thermowells in place of or in addition to thermocouples is an obvious design choice. Regarding c laim 27 , Singh expressly teaches a dew point hygrometer (a hygrometer) for measuring moisture content of the exiting gas, thereby teaching the hygrometer element. As applied to Wirtz, the combined system includes such a hygrometer for measuring water vapor content. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT TAM M NGUYEN whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1452 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon - Frid . 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, FILLIN "SPE Name?" \* MERGEFORMAT Prem C Singh can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-273-6381 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TAM M NGUYEN/ Primary Examiner, Art Unit 1771
Read full office action

Prosecution Timeline

Nov 07, 2023
Application Filed
Nov 28, 2023
Response after Non-Final Action
Dec 18, 2025
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
78%
Grant Probability
88%
With Interview (+10.9%)
2y 9m
Median Time to Grant
Low
PTA Risk
Based on 963 resolved cases by this examiner. Grant probability derived from career allow rate.

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