DETAILED ACTION
Claims 1-9, submitted on May 22, 2024, are pending in the application and are rejected for the reasons set forth below. No claim is allowed.
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 . 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.
Claim Rejections – 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a) and 112(b):
(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.
(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.
Claims 1-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter that was not described in the spec-ification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The instant application is a continuation of several prior applications, dating back to application no. 14/467,565, filed on August 25, 2014. The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., a continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP 211.05. The disclosure of the ‘565 application has been reviewed, and the following subject matter has been found to lack written support therein.
Claim 1 is drawn, in pertinent part, to a “fluid composition comprising … a plurality of terpenes and terpenoids, said terpenes comprising at least beta-caryophyllene, limonene, and myrcene, wherein a sum of the beta-caryophyllene, limonene, and myrcene is at least 25% of the total amount of terpenes and terpenoids present in the composition” (emphasis added). On the other hand, the closest disclosure in the ‘565 application is of “a composition comprising a terpene formulation, wherein the terpene formulation consists of beta-caryophyllene, limonene, myrcene, and at least one other terpene, … wherein the terpene formulation is the only source of terpenes in the composition, and wherein the beta-caryophyllene, limonene, and myrcene together comprise at least 25% (wt./vol.) of the terpene formulation” (emphasis added; see the specification of the ‘565 application at p. 5). Changing from “consisting of” (the disclosure of the ‘565 application) to “comprising” (in the instant claims) is a substantial change in breadth. See MPEP 2111.03 for a discussion of “comprising” versus “consisting of.” See also MPEP 2163.05, which explains that “omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention. … A claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.” Changing from “consisting of” to “comprising” changes the scope of the claims in a manner that is prohibited in MPEP 2163.05. Claim 6 likewise states that “the fluid composition include[s]…” and claim 7 is drawn to a compo-sition wherein “the terpene[s] include…” The word “include” (or “includes” or “including”) is synonymous with “comprising” as explained in MPEP 2111.03, so these claims are also broader in scope that is provided for in the written description of the ‘565 application.
The concentration of “at least 2%” referred to in claims 3 and 9 also lacks written descrip-tion in the ‘565 application.
Claims 4-5 are drawn to a “cartridge adapted to attach to an electronic device capable,” but the ‘565 application lacks any written description of this claim limitation.
Claims 1-9 therefore lack written support at least for the foregoing reasons.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particu-larly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims refer to certain concentrations, but it is unclear whether the percentages are by weight, by volume, or some other measure.
Claims 2-3, 6, and 8-9 require a “fruit ester,” but there is no mention of a “fruit ester” in any prior application or the instant application. The ‘565 application discloses that the composi-tion may include “esters” and that such esters “often have a pleasant fruity odor” and “are responsible for the aromas of many fruits, including apples, bananas, and strawberries” (see the specification of the ‘565 application at p. 22). It is not clear whether this disclosure is the same thing as a “fruit ester.” The term “fruit ester” is undefined in the ‘565 application, as well as the specification of the instant application.
Claim Rejections – 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufac-ture, 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 1-3 are rejected under 35 U.S.C. 101 because they are drawn to products of nature.
See US 2003/0021883 A1 by Skiff, discussed in more detail below. This reference discloses that grapefruit oil, which is a natural product, meets the limitations of the instant claims.
Claim Rejections – 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2003/0021883 A1 by Skiff.
See Table 2, which discloses that grapefruit oil comprises 2.60% beta-caryophyllene (referred to simply as “caryophyllene”), 2.51% myrcene, and 75.04 limonene. Several of the acetates mentioned in Table 2 appear to be a “fruit ester” within the meaning of the claims.
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 possi-ble 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 provi-sions 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 accompa-nied 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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,884,895 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the ‘895 Patent is directed to a composition comprising up to 30% beta-caryophyllene, up to 45% limonene, and another terpene such as myrcene. These concentrations overlap with the concentration ranges of the instant claims, so a prima facie case of obviousness exists. See MPEP 2144.05(I) (“In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”). The written description portion of the Patent explains that this composition may be in “container holding a pressurized composition that is configured for aerosol dispersal” (col. 6, ll. 1-5), which appears to suggest the cartridge of the instant claims. The Patent also appears to suggest adding fruit esters (col. 15, ll. 7-10) and cannabinoids (col. 7, ll. 22-28) to the composition.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,275,914 B2. Although the claims at issue are not identical, they are not patentably distinct from each other for substantially the same reasons discussed above.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,378,499 B1. Although the claims at issue are not identical, they are not patentably distinct from each other for substantially the same reasons discussed above.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/671,916 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Claim 1 of the ‘916 Application (submitted May 22, 2024) is directed to an electronic inhalation device comprising, among other things, a cartridge containing a fluid that is inhalable when vaporized, the fluid comprising a plurality of cannabinoids comprising at least THC or CBD, wherein the cannabinoids are present in at least 70% of the fluid in the cartridge; and a plurality of terpenes comprising at least beta-caryophyllene, limonene, and myrcene. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Theodore R. Howell whose telephone number is (571)270-5993. The exam-iner can normally be reached Monday - Thursday, 8:00 am - 7:00 pm (Eastern Time). 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, Amy L. Clark can be reached at (571)272-1310. 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.
THEODORE R. HOWELL
Primary Examiner
Art Unit 1628
/THEODORE R. HOWELL/ Primary Examiner, Art Unit 1628
June 15, 2026
Prosecution Insights