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 .
Status of the Claims
Claims 1-13 are pending and under consideration.
Priority
This application is a divisional application of 16/642,592 filed on 2/27/2020, which is a national stage entry of PCT/EP18/73242 filed on 8/29/2018, which claims priority from US provisional application 62/552,593 filed on 8/31/2017 and EP17198347.1 filed on 10/25/2017.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/23/2026 has been considered by the examiner.
Objections/Rejections Withdrawn
The objections over claims 1, 5 and 9 are withdrawn per applicant’s corrections to the claims.
The rejections under USC 112(b) over claims 7-12 are withdrawn per applicant’s amendments to the claims.
As these rejections are withdrawn, applicant’s arguments to these rejections are now moot.
Maintained Rejections
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, 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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to products of nature without significantly more. The claim(s) recites an extract, which is noted in the claim to be an essential oil that is made by product by process steps in the claim where the steps lead to isolation/extraction of the essential oils. Claims 8-12 provide for more particular types of essential oils based on plants/plant parts and compounds present in the essential oil, but these amount to natural essential oils that have naturally occurring compounds. Although applicant is claiming a these by having a concentration range, this concentration does not change the structure of the other natural components of the essential oil including the specified naturally occurring ingredients ((z)-jasmone, sabinene, eucalyptol, hexyl acetate, coffee furanone). Mere isolation of natural products (or in this case increased concentration of one component to or higher than the amount listed) does not change the structure of the natural components themselves. In Ass'n for Molecular Pathology v. Myriad Genetics, Inc. (2013), isolated DNA was not patent eligible simply because it was isolated from surrounding material. Additionally, note that Menon et al (Journal of Essential Oil Research, 2002, volume 14, pages 84-86, abstract) sees different essential oil components simply based on the location where the black pepper is grown. Thus, the concentrations do not necessarily have to be based on the process itself, but on the type, natural environment, or origin of the plant used. In regard to claim 12 where the extract is from roasted coffee beans, the record does not show that roasting would alter the essential oil of the coffee beans or its coffee furanone into a structural form that was not like that in nature. In regard to claim 13, these are to compositions that can contain the essential oil, but although these might be provide for functional purposes (e.g. fragrance/perfuming, compositions to wash hair or body, etc.), they do not define the compositions by other ingredients besides comprising the essential oil of claim 1. Thus, these compositions can amount to mixtures of all natural products with forms that only rely on each natural product for its natural activity. For example, aromatic water can amount to the essential oil in water for the natural odor properties of the essential oil that would offer its naturally fragrant scent. Thus, there are not markedly different characteristics captured by the product by process claims and claims with concentrations and compositions do not appear to offer significantly more to the products of nature.
Response to Applicant’s Arguments to the Rejection under USC 101
The closest naturally occurring component are the natural compounds extracted from the plant material. They are natural compounds that are being isolated for their natural properties. Thus, the claimed compositions are compositions of natural products that are found in naturally occurring plants. It is not shown how the “isolated” natural compounds or natural compound mixtures became markedly different from their natural forms (e.g. structural difference) or whether the extract mixture of natural compounds provided allows for significantly more than what would be found in nature. It is noted that claims 8-12 provide for concentrations of species of natural compound obtained from naturally occurring plant materials. The isolation of a natural compound does not make the product of nature patentable unless it has a markedly different characteristic than the natural compound(s) or some combination provides significantly more to the natural products than would be expected from their natural properties/activities. For example, at least 7% w/w jasmone in claim 8 can be isolated to up to 100% jasmone (still in its natural form) or is present with other naturally occurring plant compounds from the extraction. The claims do not provide for any structural differences to the compositions or provide any unique characteristics/properties that wouldn’t be expected from the natural compounds themselves. That is, a natural characteristic of a compound like jasmone is the scent it provides. See MPEP 2106 including 2106.04(b) I and II- noting natural items including isolated DNA and single stranded DNA fragments. “When a law of nature or natural phenomenon is claimed as a physical product, the courts have often referred to the exception as a “product of nature”. For example, the isolated DNA of Myriad and the primers of Ambry Genetics were described as products of nature by the courts. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 580, 106 USPQ2d 1972, 1975 (2013); University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 758-59, 113 USPQ2d 1241, 1243 (Fed. Cir. 2014). As explained in those decisions, products of nature are considered to be an exception because they tie up the use of naturally occurring things, but they have been labeled as both laws of nature and natural phenomena. See Myriad Genetics, Inc., 569 U.S. at 590-91, 106 USPQ2d at 1979 (claims to isolated DNA held ineligible because they “claim naturally occurring phenomena” and are “squarely within the law of nature exception”); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948) (claims to bacterial mixtures held ineligible as “manifestations of laws of nature” and “phenomena of nature”). Step 2A of the Office’s eligibility analysis uses the terms “law of nature” and “natural phenomenon” as inclusive of “products of nature”.” In the same right, natural compounds in the plant extract material are still considered natural phenomenon. Applicant might want to either show that a unique extract combination of extracted ingredients after microwave extraction enhances olfactory properties with actually adding such concentration and compositional elements to the claims or claim a composition/perfumed article with the extract as one part of it provide cosmetic forms that are considered markedly different (shampoo, deodorant, bath gel, shower gel) and/or include cosmetically acceptable excipients if the specification has written support for such an item.
Claim Rejections - 35 USC § 102
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 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 1-7, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lourie, (St Louis, 2015, Essential Oils: Eucalyptus, https://www.stlmag.com/health/essential-oils%3A-eucalyptus/).
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
Lourie teaches “Typically, about 70 to 95 percent of eucalyptus oil is 1,8-cineole (eucalyptol), a compound that’s anti-bronchitic, anti-inflammatory, antiseptic and antifungal.”. Lourie teaches “And eucalyptus’ antibacterial and antiseptic qualities make it a common ingredient in today’s cleaning products and common cough and cold medicines and ointments like Vic’s Vapor Rub” and teaches using it to clean catheter tubes. Thus, Lourie provides a plant essential oil with high amount of eucalyptol (a desirable ingredient).
Claims 1-7, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito JP2007245095A (with English translation).
Ito teaches a plant biomass treating system using microwave capable of treating a great deal of plant biomass and continuously performing an essential oil extraction by saving energy, and also effectively utilizing a residue of essential oil extraction (abstract). Ito teaches a conveying means that conveys the plant biomass is provided in the microwave extraction device so configured as to prevent the plant biomass from being excessively heated by the microwave (abstract). Ito teaches embodiment 1 with extracting an essential oil from plant biomass. In embodiment 4, Ito teaches improving extraction efficiency of essential oil from plant biomass. Ito teaches “the temperature in the extraction device 12 during extraction is usually not lower than the boiling point of the solvent and not higher than 200 ° C., but is preferably maintained at 35 ° C. to 160 ° C., more preferably 75 ° C. to 120 ° C” (embodiment 1). Ito teaches 10 W to 20 kW and frequency of 0.5 to 10 GHz (English translation). Ito teaches uses in cosmetics and fragrances (English translation).
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Temraz et al (Natural Product Communications, 2009, volume 4, pages 1729-1732).
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
Temraz teaches essential oil from Jasminum pubescens (abstract). Temraz teaches 8.4% of (Z)-jasmone (page 1729 and table 1).
Claims 1-7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Menon et al (Journal of Essential Oil Research, 2002, volume 14, pages 84-86, abstract).
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
Menon teaches essential oil composition of four major cultivars of black pepper (Piper nigrum) and concentrations of compounds. One of the black pepper oils had 23.2 to 27.3% sabinene (abstract).
Claims 1-7, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN103564405A (with English translation).
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
CN 405 teaches a pear essence that contains 0.140% of hexyl acetate (claim 5 of CN 405). CN 405 teaches 0.1 to 0.3% of hexyl acetate (claim 4 of CN 405).
Response to Applicant’s Arguments over the Rejections under USC 102
Applicant argues that none of these rejections provide for the extracts made by the product-by-process limitations of claim 1 (also claims 2-5) and the specification provides the extraction process results in differing profiles of plant essential oils or extracts. This may be a helpful argument to differentiating the claim from a different process of extraction, but the current claims are to compositions of matter. As it can be seen from applicant’s tables 1-6, even essential oil compositions made by a microwave process from the same plant type can differ in concentration and components. Commercial extracts can also vary when noting the table. Thus, the product claims have to be considered for those ingredients, concentrations and structure the claims set forth for the essential oil. Note that in MPEP 2113 – materially same products can be made by different methods. Each of these cited prior art refences provides for an extract from a species/plant of the claims that has a concentration that falls within the claimed range. This meets the limitation of the claims. As having such concentrations, they will be capable of similar olfactory properties. In regard to other components of the composition, claim 1 is broad to essential oils and plants so any prior art that teaches an essential oil from a plant will read on the claims. Although claims 8-12 provide for more particular plant genre, types, or species, the claim provide the extract comprises a concentration range of one particular compound per claim (claim 8 –(z)-jasmone, claim 9- sabinene, claim 10- eucalyptol, claim 11- hexyl acetate and claim 12- coffee furanone). These composition claims (essential oil) are read for the compositional ingredients and structure they contain, and thus, if the prior art teaches an essential oil that comprises at least the one listed ingredient in the claimed concentration, it reads on the claim. If applicant wants to claim by unique compositional components that they feel also arise due to the microwave process, applicant may add them to the claims to provide the unique types of ingredients with concentrations as necessary. For example, claim 8 based on table 1 might be amended to indicate “…wherein the essential oil comprises methyl anthranilate and at least 7% w/w (z)-jasmone.” Then examiner would next have to reconsider whether the prior art or another prior art reference has both these ingredients (note table 1 provides its microwave extracts have levels of methyl anthranilate while commercial extracts are noted as not detectable). As it stands, the prior art does provide and anticipate an extract composition with over 7% (z)-jasmone. This is the same way each of claims 9-12 are considered in searching the prior art for the essential oils whether rejected under USC 102 or USC 103. Note that applicant may not have to claim by the entire table of the essential oil components, but by the selected ones that make the extracted essential oil unique over the prior art and unique over the commercial extracts that applicant tests against.
Applicant argues that the record of the cited art does not provide what each extract has in its entirety. It is noted the microwave technique or other techniques of the art can also have extract to extract variability and variability might also be due to the plant maturity, growth environment or other factors that can differ in the same species or plant type. Additionally, differences occur due to conditions of the microwave extraction and claim 1 is broader than the more particular technique used by applicant to collect the extracts. Thus, the claims to essential oils have to be considered for the components and structure they contain as these are product claims. The applicant must differentiate the claims from the prior art which reads on them as the examiner provides prior art which reads on each claim. Further note, an examiner should not read limitations from the specification into the claims (see MPEP 2111.01 – “While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. See MPEP § 2111.01, subsection II”). Each of the additional extracted compounds and its concentration represents a positive limitation in the specification.
Applicant argues that the prior art does not teach claim 6, however, claim 6 is a limitation toward the distillate which is part of the product-by-process limitations, which claim 6 even indicates that the distillate contains the essential oil. Note that claim 1, on which claim 6 depends on, is toward “An extract…..wherein the extract is an essential oil…”. This means claim 1 further specifies the extract is the essential oil portion. Therefore, the concentration of the essential oil in the distillate is irrelevant as the claims are not toward the distillate, but to the more isolated essential oil itself. If claim 1 had been to a “A distillate” or if claim 1 did not indicate the extract was the essential oil, then this would be a different consideration.
Applicant argues that although the examiner cites references to teach each of the species claims, it does not provide how it is the extract of claim 1. Each of the 102 references is to an extract from a given plant that provides the at least one extracted compound in its dependent claim. The applicant is reminded that claim 1 was noted as a product by process claim. As a product, the claim is read for the components and structure that the claim provides. The process as set forth in claim 1 can provide variable extracted compositions based on changing extraction conditions, types and characteristics of plants used and further processing steps that are possible for extraction and purification (claim with “comprising/comprises” is not closed to other product by process steps or compositional components and features).
It should be further noted that JP2007245095A is used as a separate rejection under USC 102 for claim 1 and some of the dependent claims as it provides an essential oil extracted from plant biomass and in this case by a microwave extraction method. As the main component that comes from the product by process is an essential oil from a plant biomass, this reference teaches the extract claim.
Applicant lastly argues that claim 13 depends on claim 1 and cannot be anticipated by the references it is taught with because the references do not teach claim 1. As explained above, the references do teach claim 1, and thus, are relevant to claim 13.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-7, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Goodscentscompany (Coffee furanone, date from Wayback Machine Apr 4, 2016, https://web.archive.org/web/20160404203218/https://www.thegoodscentscompany.com/data/rw1036001.html, now referred to as Goodscentscompany coffee), Petisca et al (Food and Bioproducts Processing, 2013, volume 91, pages 233-241), and Ito JP2007245095A.
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
Goodscentscompany coffee teaches coffee furanone and teaches Suppliers that provide it at concentrations including 97.5%, 5%, 15% or in a 10% solution (suppliers and organoleptic properties sections). Goodscentscompany coffee teaches it under the category of flavor and fragrance agent (safety in use information). Goodscentscompany coffee teaches its natural occurrence is items like coffee or it has a use for coffee (Natural occurrence in and Potential Uses).
Goodscentscompany coffee does not teach coffee furanone in an essential oil but recognizes its presence in coffee and that it can be provide at high concentrations above 2%. Goodscentscompany coffee also recognizes its use for fragrance and flavoring. Goodscentscompany coffee does not indicate coffee beans as being roasted.
Petisca teaches furans and other volatile compounds in ground roasted and espresso coffee using headspace solid-phase microextraction (title and abstract). Petisca teaches formation of volatile chemicals in coffee beans under various roasting conditions (section 3.3).
Ito teaches a plant biomass treating system using microwave capable of treating a great deal of plant biomass and continuously performing an essential oil extraction by saving energy, and also effectively utilizing a residue of essential oil extraction (abstract). Ito teaches a conveying means that conveys the plant biomass is provided in the microwave extraction device so configured as to prevent the plant biomass from being excessively heated by the microwave (abstract). Ito teaches embodiment 1 with extracting an essential oil from plant biomass. In embodiment 4, Ito teaches improving extraction efficiency of essential oil from plant biomass. Ito teaches “the temperature in the extraction device 12 during extraction is usually not lower than the boiling point of the solvent and not higher than 200 ° C., but is preferably maintained at 35 ° C. to 160 ° C., more preferably 75 ° C. to 120 ° C” (embodiment 1). Ito teaches 10 W to 20 kW and frequency of 0.5 to 10 GHz (English translation). Ito teaches uses in cosmetics and fragrances, and teaches various plant biomasses including trees, grass, fruits, branches and roots (English translation).
One of ordinary skill in the art before the time of filing would have extracted or concentrated coffee furanone from roasted coffee beans, a plant material, by extraction methods of Ito as roasted coffee beans are seen as good source of volatile furans and compounds by teachings of Petisca and coffee is recognized to have coffee furanone (a furan) by teachings of Goodscentscompany coffee, which is a useful fragrancing and flavor compound. Since plant volatile compounds are the main component of plant essential oils, the essential oil extraction method of Ito, which has improved efficiency, would be seen as capable of enhancing the extraction of such essential oil volatile compounds, thus, creating essential oils of roasted coffee beans that have higher amounts of useful furans of the prior art like coffee furanone. As coffee furanone is already seen as extracted in high amounts by teachings of Goodscentscompany coffee (amounts up to 97.5% in Goodscentscompany coffee), there is a reasonable expectation of success in obtaining such concentrations with an improved and efficient process of extracting volatile oils of Ito with looking to extract higher amounts of coffee furanone which was seen to have fragrance and flavoring utility in the prior art. It is further noted that Ito’s process is closely related to applicant’s process of the product-by-process claim as using microwave technology along with conveying means to move the plant biomass through the system. Thus, there is a reasonable expectation of success that it will work effectively and efficiently with plant materials such as roasted coffee beans in the prior art to achieve similar results.
Claims 1-7, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Goodscentscompany (1,8-cineole, date from Wayback Machine December 22, 2015, https://web.archive.org/web/20151222142831/https://www.thegoodscentscompany.com/data/rw1056361.html, referred to as Goodscentscompany cineole) and Ito JP2007245095A.
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
Goodscentscompany cineole teaches eucalyptol/1,8-cineole in concentrations of 99%, 100%, greater than 98%, 95% and a 16% solution (Safety information, and Suppliers). Goodscentscompany cineole teaches natural occurrence of 1,8-cineole in ginger root (Natural Occurrence In). Goodscentscompany cineole teaches cosmetic information with perfuming agents (Cosmetic Information).
Goodscentscompany cineole does not teach 1,8-cineole in an essential oil but recognizes its presence in ginger root and that it can be provide at high concentrations above 13%. Goodscentscompany cineole also recognizes its use for perfuming/cosmetic.
Ito teaches a plant biomass treating system using microwave capable of treating a great deal of plant biomass and continuously performing an essential oil extraction by saving energy, and also effectively utilizing a residue of essential oil extraction (abstract). Ito teaches a conveying means that conveys the plant biomass is provided in the microwave extraction device so configured as to prevent the plant biomass from being excessively heated by the microwave (abstract). Ito teaches embodiment 1 with extracting an essential oil from plant biomass. In embodiment 4, Ito teaches improving extraction efficiency of essential oil from plant biomass. Ito teaches “the temperature in the extraction device 12 during extraction is usually not lower than the boiling point of the solvent and not higher than 200 ° C., but is preferably maintained at 35 ° C. to 160 ° C., more preferably 75 ° C. to 120 ° C” (embodiment 1). Ito teaches 10 W to 20 kW and frequency of 0.5 to 10 GHz (English translation). Ito teaches uses in cosmetics and fragrances, and teaches various plant biomasses including trees, grass, fruits, branches and roots (English translation).
One of ordinary skill in the art before the time of filing would have extracted or concentrated eucalyptol from ginger root, a plant material, by extraction methods of Ito as ginger root is seen as good source of eucalyptol by teachings of Goodscentscompany cineole, which is a useful cosmetic compound. As eucalyptol is already seen as extracted in high amounts by teachings of Goodscentscompany cineole (amounts up to 99% or 100% in Goodscentscompany cineole), there is a reasonable expectation of success in obtaining such concentrations with an improved and efficient process of extracting volatile oils of Ito with looking to extract higher amounts of eucalyptol having cosmetic utility in the prior art. It is further noted that Ito’s process is closely related to applicant’s process of the product-by-process claim as using microwave technology along with conveying means to move the plant biomass through the system. Thus, there is a reasonable expectation of success that it will work effectively and efficiently with plant materials such as ginger root in the prior art to achieve similar results.
Claims 1-7, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over CN103564405A and Ito JP2007245095A.
Claims 1-7 are related to method of making an extract which is an essential oil in claim 1 that comes from plant biomass. The distillate a part of the process that is further separated to arrive at the essential oil. Thus, these are product-by-process limitations. If the prior art teaches a plant essential oil, then it will read on the claim.
CN 405 teaches a pear essence that contains 0.140% of hexyl acetate (claim 5 of CN 405). CN 405 teaches 0.1 to 0.3% of hexyl acetate (claim 4 of CN 405). CN 405 teaches the essence has fragrance characteristics that can be useful for beverages (abstract).
CN 405 teaches a pear essence having 0.14% of hexyl acetate or amounts of 0.1 to 3% of hexyl acetate. For compact prosecution, if applicant is able to show how CN 405’ pear essence is different from an essential oil, this rejection would also need to be addressed.
Ito teaches a plant biomass treating system using microwave capable of treating a great deal of plant biomass and continuously performing an essential oil extraction by saving energy, and also effectively utilizing a residue of essential oil extraction (abstract). Ito teaches a conveying means that conveys the plant biomass is provided in the microwave extraction device so configured as to prevent the plant biomass from being excessively heated by the microwave (abstract). Ito teaches embodiment 1 with extracting an essential oil from plant biomass. In embodiment 4, Ito teaches improving extraction efficiency of essential oil from plant biomass. Ito teaches “the temperature in the extraction device 12 during extraction is usually not lower than the boiling point of the solvent and not higher than 200 ° C., but is preferably maintained at 35 ° C. to 160 ° C., more preferably 75 ° C. to 120 ° C” (embodiment 1). Ito teaches 10 W to 20 kW and frequency of 0.5 to 10 GHz (English translation). Ito teaches uses in cosmetics and fragrances, and teaches various plant biomasses including trees, grass, fruits, branches and roots (English translation).
One of ordinary skill in the art before the time of filing would have extracted or concentrated essential oil having hexyl acetate from pear, a plant material, by extraction methods of Ito as pear is seen as a source of hexyl acetate by teachings of CN 405, which is a useful fragrancing ingredient. As hexyl acetate from pear is already seen as extracted in high amounts by teachings of CN 405 (amounts up to 3%), there is a reasonable expectation of success in obtaining such concentrations with an improved and efficient process of extracting volatile oils of Ito with looking to extract higher amounts of hexyl acetate in its extract having fragrancing utility in the prior art. It is further noted that Ito’s process is closely related to applicant’s process of the product-by-process claim as using microwave technology along with conveying means to move the plant biomass through the system. Thus, there is a reasonable expectation of success that it will work effectively and efficiently with plant materials such as pear in the prior art to achieve similar results in creating an essential oil of applicant’s claims.
Response to Applicant’s Arguments over the Rejections under USC 103
Applicant argues that there is not a sufficient reason to combine the references to teach the claims. The prior art of Goodscentscompany coffee with Petisca, Goodscentscompany cineole and CN103564405A teach compounds with cosmetic/fragrance utility and plant sources thereof while Ito provides a method for extracting plant materials to obtain essential oils for cosmetics and fragrances. Thus, there is a motivation to extract various plant materials by Ito to obtain fragrance/perfume ingredients including from roasted coffee beans, ginger root and pear of the other cited references that teach these plant materials having the noted fragrance/perfume ingredients. In doing so essential oils with those ingredients would be obtained with a reasonable expectation of success. The prior art also provides for concentrations of the ingredients that meet the concentration limitations of applicant’s claims. Therefore, the motivation is to provide essential oils from plant biomass materials that have perfume/fragrance function for compositions. In combining the teachings of the references, the plant essential oils containing such perfume/fragrance ingredients would be obtained and there was reasonable expectation that they can achieve concentrations in ranges of applicant’s claims.
Applicant argues that the prior art does not teach claim 6, however, claim 6 is a limitation toward the distillate which is part of the product-by-process limitations, which claim 6 even indicates that the distillate contains the essential oil. Note that claim 1, on which claim 6 depends on, is toward “An extract…..wherein the extract is an essential oil…”. This means claim 1 further specifies the extract is the essential oil portion. Therefore, the concentration of the essential oil in the distillate is irrelevant as the claims are not toward the distillate, but to the more isolated essential oil itself. If claim 1 had been to a “A distillate” or if claim 1 did not indicate the extract was the essential oil, then this would be a different consideration.
Applicant argues that none of these rejections provide for the extracts made by the product-by-process limitations of claim 1 (also claims 2-5) and the specification provides the extraction process results in differing profiles of plant essential oils or extracts. This may be a helpful argument to differentiating the claim from a different process of extraction, but the current claims are to compositions of matter. As it can be seen from applicant’s tables 1-6, even essential oil compositions made by a microwave process from the same plant type can differ in concentration and components. Commercial extracts can also vary when noting the table. Thus, the product claims have to be considered for those ingredients, concentrations and structure the claims set forth for the essential oil. Note that in MPEP 2113 – materially same products can be made by different methods. Each of these cited prior art refences provides for an extract from a species/plant of the claims that has a concentration that falls within the claimed range. This meets the limitation of the claims. As having such concentrations, they will be capable of similar olfactory properties. In regard to other components of the composition, claim 1 is broad to essential oils and plants so any prior art that teaches an essential oil from a plant will read on the claims. Although claims 8-12 provide for more particular plant genre, types, or species, the claim provide the extract comprises a concentration range of one particular compound per claim (claim 8 –(z)-jasmone, claim 9- sabinene, claim 10- eucalyptol, claim 11- hexyl acetate and claim 12- coffee furanone). These composition claims (essential oil) are read for the compositional ingredients and structure they contain, and thus, if the prior art teaches an essential oil that comprises at least the one listed ingredient in the claimed concentration, it reads on the claim. If applicant wants to claim by unique compositional components that they feel also arise due to the microwave process, applicant may add them to the claims to provide the unique types of ingredients with concentrations as necessary. For example, claim 8 based on table 1 might be amended to indicate “…wherein the essential oil comprises methyl anthranilate and at least 7% w/w (z)-jasmone.” Then examiner would next have to reconsider whether the prior art or another prior art reference has both these ingredients (note table 1 provides its microwave extracts have levels of methyl anthranilate while commercial extracts are noted as not detectable). As it stands, the prior art does provide and anticipate an extract composition with over 7% (z)-jasmone. This is the same way each of claims 9-12 are considered in searching the prior art for the essential oils whether rejected under USC 102 or USC 103. Note that applicant may not have to claim by the entire table of the essential oil components, but by the selected ones that make the extracted essential oil unique over the prior art and unique over the commercial extracts that applicant tests against.
Applicant argues that the record of the cited art does not provide what each extract has in its entirety. It is noted the microwave technique or other techniques of the art can also have extract to extract variability and variability might also be due to the plant maturity, growth environment or other factors that can differ in the same species or plant type. Additionally, differences occur due to conditions of the microwave extraction and claim 1 is broader than the more particular technique used by applicant to collect the extracts. Thus, the claims to essential oils have to be considered for the components and structure they contain as these are product claims. The applicant must differentiate the claims from the prior art which reads on them as the examiner provides prior art which reads on each claim. Further note, an examiner should not read limitations from the specification into the claims (see MPEP 2111.01 – “While it is appropriate to use the specification to determine what applicant intends a term to mean, a positive limitation from the specification cannot be read into a claim that does not itself impose that limitation. See MPEP § 2111.01, subsection II”). Each of the additional extracted compounds and its concentration represents a positive limitation in the specification.
Applicant argues that claims 2-7, 10-12 and 13 depends on claim 1 and cannot be anticipated by the references it is taught with because the references do not teach claim 1. As explained above, the references do teach claim 1 for a plant essential oil from a plant biomass, and thus, are relevant to the dependent claims. It was noted that claims 2-7 are toward the product-by-process limitations involved in obtaining the essential oil, which is the claimed product.
For these reasons, the rejections are maintained as teaching the claimed plant biomass essential oils (extract is essential oil as in claim 1).
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 possible 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 provisions 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 accompanied 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 1-7 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 20 of copending Application No. 17/434,299 (reference application) in view of Ito JP2007245095A. Although the claims at issue are not identical, they are not patentably distinct from each other because although applicant’s claims may have product by process claims with additional process steps, both claim sets are toward an extract from plant biomass obtained by a process with microwave energy. As applicant’s claims use product-by-process steps, the claim is examiner for the product which is “essential oil of plant biomass”. Note that MPEP 2113 indicates that materially similar products can be made by different processes.
The reference application does not provide essential oil as the extract.
Ito teaches a plant biomass treating system using microwave capable of treating a great deal of plant biomass and continuously performing an essential oil extraction by saving energy, and also effectively utilizing a residue of essential oil extraction (abstract). Ito teaches a conveying means that conveys the plant biomass is provided in the microwave extraction device so configured as to prevent the plant biomass from being excessively heated by the microwave (abstract). Ito teaches embodiment 1 with extracting an essential oil from plant biomass. In embodiment 4, Ito teaches improving extraction efficiency of essential oil from plant biomass. Ito teaches “the temperature in the extraction device 12 during extraction is usually not lower than the boiling point of the solvent and not higher than 200 ° C., but is preferably maintained at 35 ° C. to 160 ° C., more preferably 75 ° C. to 120 ° C” (embodiment 1). Ito teaches 10 W to 20 kW and frequency of 0.5 to 10 GHz (English translation). Ito teaches uses in cosmetics and fragrances, and teaches various plant biomasses including trees, grass, fruits, branches and roots (English translation).
One of ordinary skill in the art was capable of extracting essential oils as the extract with the combined teachings of Ito, which provides that processes with microwave energy assist to extract essential oils from plant biomass which have use for fragrances. Thus, essential oil is an obvious extract of plant biomass collected by such a process.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Comments about Double Patenting
Applicant indicates that it is premature to address the double patenting rejection at this time and has not filed a terminal disclaimer, this rejection is maintained.
Conclusions
No claim is allowed.
THIS ACTION IS MADE FINAL. 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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached M-F 9:00 am to 6:00 pm EST.
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/MARK V STEVENS/Primary Examiner, Art Unit 1613
