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
The Amendments filed on 5/26/2026 has been received and entered.
Claims 6-8, 11, 15, 20-22, 24-26, 29, 31-32, 34-36, 38-39, 46-47, and 73 are pending. Claims 31-32, 34-36, and 38 are examined on the merits. Claims 6-8, 11, 15, 20-22, 24-26, 29, 39, 46-47, and 73 are withdrawn.
Election/Restrictions
Claims 6-8, 11, 15, 20-22, 24-26, 29, 39, 46-47, and 73 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/26/2026.
Applicant's election with traverse of Group II (Claims 31-32, 34-36 and 38) in the reply filed on 5/26/2026 is acknowledged. The traversal is on the ground(s) that there is no lack of unity of invention. This is not found persuasive because the composition is anticipated by IDS NPL Doc. 25. Therefore, there is lack of unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/18/2025, 6/11/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 34 is 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.
Claim 34 recites a ratio of dried plant material to water. A ratio has no units. What is g/mL? The units need to be consistent for the ratio for the ratio to be meaningful. What is Applicant trying to claim? The weight in grams or volume in mL?
Claim Rejections - 35 USC § 103
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.
Claim(s) 31-32, 34-36, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Vilijoen et al. (2002. South African J Botany, 68: 100-105) in view of Asl et al., (Mass Transfer-Advances in Sustainable Energy and Environment Oriented Numerical Modeling, INTECH, Subcritical Water Extraction, 2013. Ch 17, pages 459-487) and Gescher et al. (2011, J Ethnopharmacology, 134: 468-474).
Vilijoen et al. teaches a process of extracting oil from Myrothamnus sp. By hydrodistillation for 3 hours at 230 degree C (Materials and Methods, Essential il analysis).
However, Vilijoen et al. does not teach dried plant material, subcritical water extraction, temperature from about 120-220 degree C, weight ratio of aqueous botanical extract to water miscible organic solvent from 1:1 to 1:10.
Asl et al. teaches a method od extracting constituents from plant materials with subcritical water extraction (SWE) that uses temperatures between 100-347 degree C and pressure high enough to maintain the liquid state (page 459, Introduction, paragraph 1). SWE is the cleaner, faster, and cheaper than the conventional extraction methods (page 459, Introduction, paragraph 2). Temperatures between 125-175 degree C will be the best condition for extraction of essential oils (page 462, 3.1 Effect of temperature).
Gescher et al. teaches a method of using dried plant material of Myrothamnus, pulverized then extracted in cold acetone/water (7:3 v/v).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use subcritical water extraction, temperature from about 120-220 degree C because Asl et al. teaches a method of extracting constituents from plant materials with subcritical water extraction (SWE) that uses temperatures between 100-347 degree C and pressure high enough to maintain the liquid state (page 459, Introduction, paragraph 1). SWE is the cleaner, faster, and cheaper than the conventional extraction methods (page 459, Introduction, paragraph 2). Temperatures between 125-175 degree C will be the best condition for extraction of essential oils (page 462, 3.1 Effect of temperature). One would have been motivated to make extraction method for the expected benefit of cleaner, faster, and cheaper than the conventional extraction methods. Absent evidence to the contrary, there would have been a reasonable expectation of success in making the claimed invention from the combined teachings of the cited references.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to dried plant material because the plant needs to be collected and dried for later process as taught by Gescher et al., who teaches a method of using dried plant material of Myrothamnus pulverized, then extracted in cold acetone/water (7:3 v/v). One would have been motivated to make a dried material for the expected benefit of extracting dried plant material of Myrothamnus. Absent evidence to the contrary, there would have been a reasonable expectation of success in making the claimed invention from the combined teachings of the cited references.
The references also do not specifically teach performing the process in the time span and temperature range claimed by applicant. The process in the time span and temperature range is clearly a result effective parameter that a person of ordinary skill in the art would routinely optimize. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, optimization of general conditions is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for an artisan of ordinary skill to determine the optimal process in the time span and temperature range to use in order to best achieve the desired results. Thus, absent some demonstration of unexpected results from the claimed parameters, this optimization of ingredient amount would have been obvious at the time of applicant’s invention.
Conclusion
No claim is allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERYNE CHEN whose telephone number is (571)272-9947. The examiner can normally be reached on Monday-Friday 9-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand U Desai can be reached on 571-272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Catheryne Chen Examiner Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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