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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application on 07/26/2024.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 07/26/2024, 03/25/2025 are being considered by the examiner. The signed IDS forms are attached with the instant office action.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 07/06/2026 is acknowledged. The traversal is on the ground(s) that the applicant believes the product and process are specifically adapted for the manufacture of a specific product which allows them unity. This is not found persuasive because although the claims may have unity, that unity is broken as the special technical feature was described in the art as previously stated in the restriction/election filed on 05/05/2026. The applicant argues that the special technical feature is not merely a Cannabis extract but an extract obtainable by the method process specifically claimed. This argument is not persuasive because the mere requirement of the claims which form the product merely require the steps of claim 1 and these steps are made obvious in light of the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-14, 17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/06/2026.
Claims 1-9 and 18 are being examined on the merits.
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.
Claims 1-9 and 18 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. Claim 1, part (a) recites “in a sufficient amount” and it is unclear as to what the metes and bounds are to satisfy this limitation.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth above.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kenneth Michael Morrow (US20200237840A1).
Regarding claims 1-2, Morrow discloses methods for producing Cannabis plant extracts (see abstract) and discloses wherein the extract contains DELTA (9)-tetrahydrocannabinol (DELTA.(9)-THC) (see 0083) and discloses wherein the plant material may be trimmed and dried (see 0027) and further treating the cannabis with a solvent (see claim 5) and teaches a process that would separate the Cannabis plant extract from the flower material because Morrow teaches applying pressure to volatilize cannabis compounds and transporting via a conduit to a condenser and collecting the extract (see claim 1). Applying pressure can also be a treating step when so broadly claimed and this volatilization would also comprise evaporating.
Regarding claim 3, Morrow teaches decarboxylating the plant material at temperatures that are greater than about 50° C (see 0075).
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 1-9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Michael Morrow (US20200237840A1) and Sonny Fong and Deigo Castillo-Guimond (WO2020077462A1).
Regarding claims 1-2, Morrow teaches methods for producing Cannabis plant extracts (see abstract) and discloses wherein the extract contains DELTA (9)-tetrahydrocannabinol (DELTA.(9)-THC) (see 0083) and teaches wherein the plant material may be trimmed and dried (see 0027) and further treating the cannabis with a solvent (see claim 5) and teaches a process that would separate the Cannabis plant extract from the flower material because Morrow teaches applying pressure to volatilize cannabis compounds and transporting via a conduit to a condenser and collecting the extract (see claim 1). Applying pressure can also be a treating step when so broadly claimed and this volatilization would also comprise evaporating.
Regarding claim 3, Morrow teaches decarboxylating the plant material at temperatures that are greater than about 50° C (see 0075).
Regarding claim 4, Morrow teaches wherein the percentage of active ingredient in the compositions and preparations can vary and may conveniently be from about 0.5% to about 60%, about 1% (see 0098) and THC is a known active ingredient of cannabis extract.
Regarding claim 5, Morrow teaches using a vacuum drying apparatus at ambient temperature, for example, at a temperature of less than or equal to 35° C (see 0029) and teaches using ovens at temperatures at 20° C. to about 25° C. (see 0033). Although this temperature is taught for the filtrate drying it can be used for drying of the flowers as the temperature does not appear to be critical to the invention and one in which would necessarily be arrived at as it is a matter of judicious selection.
Regarding claim 6, Morrow teaches “in certain embodiments, the macerating step of extracting a crude plant extract in a solvent as described herein is conducted in conjunction with a conventional extraction process, such as an ultrasound-assisted solvent extraction, hot solvent extraction, cold solvent extraction, percolation extraction” (see 0072).
Morrow teaches “for example, the wet or dry material can be macerated and soaked in a first solvent to form a first solvate and, optionally, allowed to sit in a dark environment for a period of time (e.g., up to about 2 hours) 1. The first solvate can be poured through a filter to separate out undesired compounds from the solvent 2. A second solvent can be added to the first solvate 3. In certain embodiments, the second solvent generally amounts to about 10% to 200% of the first solvent on a volume-to-volume basis. In particular embodiments, the second solvent amounts to about 25% to 175%, 50% to 150%, or 75% to 125%, of the first solvent” (See 0033).
Regarding claim 7, Morrow teaches filtering after maceration (see 0071) and teaches other filtration methods (see 0028-0029, 0033 etc.).
Fong is relied upon to show that winterization is not needed for reducing waxes.
Fong teaches extraction methods for creating botanical extracts (see abstract) and teaches in the context of this application, the terms "cannabis extract" or "extract from a cannabis plant", which are used interchangeably, encompass extracts of Cannabis plant material obtained by one or more of the following processes: pulverisation, decoction, expression, maceration, percolation, aqueous extraction, extraction with solvents such as C! to C5 alcohols {e.g., ethanol). Cannabis extracts can include primary extracts prepared by such processes, which may be further purified for example by supercritical or subcritical extraction, vaporisation and chromatography. When solvents such as those listed above are used, the resultant extract may contain non-specific lipid-soluble material, which can optionally be removed by a variety of processes including "winterisation", which involves chilling to -20°C, followed by filtration to remove waxy ballast, extraction with liquid carbon dioxide and by distillation. (see 0028)
Preferred "cannabis extracts" include those which are obtainable by using any of the methods or processes as are known in the art for preparing extracts from cannabis plant material. The extracts are preferably substantially free of waxes and other non-specific lipid soluble material but preferably contain substantially all of the cannabinoids naturally present in the plant, most preferably in substantially the same ratios in which they occur in the intact cannabis plant (see 0029).
Regarding claim 8, Morrow teaches solvents as ethanol (see 0027).
Regarding claim 9, Morrow teaches winterization as optional (see 0030).
Regarding claim 18, Morrow teaches pentane and propane (see 0068).
Morrow does not specifically teach the mixing ratios of solvent to cannabis for the percolating steps or the flow rate etc., however Morrow teaches wherein the maceration step of extracting a crude plant extract is a solvent can be done with percolation extraction and determining the ratio of plant to solvent is a matter of judicious selection, same as the flow rate and temperature. These parameters do not appear critical to the invention and would have been arrived at through routine optimization by any person having ordinary skill in the art. The same can be said about the filtration deposition rate. Morrow does not also teach wherein the water content of the flower is less than 10 percent however this limitation is obvious given that the relied upon art teaches drying of the plant and removing water to be at less than 10 percent of the plant material would have been an obvious and achievable limitation given the art. Fong teaches that there are known methods of removing waxes through purification such as super critical, subcritical and chromatography techniques which can be incorporated for removing waxes.
Conclusion
Currently no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB ANDREW BOECKELMAN whose telephone number is (571)272-0043. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at 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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JACOB A BOECKELMAN Examiner, Art Unit 1655
/ANAND U DESAI/ Supervisory Patent Examiner, Art Unit 1655
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