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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-16 of prior U.S. Patent No. 11,718,811. This is a statutory double patenting rejection. The instant claims are duplicative of the respective claims of patent ‘811.
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 9 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,116,547.
Instant method claims 1-7, 9 and 11 are obvious, broader genus claims relative to the claims of patent ‘547, and encompass the method claims 1-8 of ‘547 taken in combination, except omitting recitation in independent instant claim 1 of “rotating a basket containing the organic matter, the basket residing within the extraction chamber” and “wherein the rotation of the basket causes a centrifugal force that extracts the solvent with the extracted essential oils from the organic material” which are present in independent claim 1 of ‘547; and incorporating language in instant claim 1 regarding moving a vortex plunger in the chamber which are instead presented in dependent claim 2 of ‘547.
The instant claim terminology encompasses the claim terminology of the claims of ‘547 in the following side-by-side comparison:
1. A method of extracting essential oils from organic material (‘547, claim 1 preamble), the method comprising:
placing organic material having essential oils into an extraction chamber that is a substantially cylindrical wall of rigid material, wherein a diameter and a height of the extraction chamber is sized to define an interior that accommodates a desired amount of the organic material (‘547, claim 1 “placing” clause);
filling the extraction chamber with a solvent such that the organic material within the extraction chamber is substantially covered (‘547, claim 1 “filling” clause); and
moving a vortex plunger disposed within the interior of the extraction chamber in a repeated reciprocating motion during an agitation process SO that vortex vanes within the vortex plunger generate one or more fluid vortices in the solvent (claim 1, “agitating” clause and claim 2 re “extending the vortex plunger”,
wherein the fluid vortex (or fluid vortices) causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material (‘547, claim 1, “fluid vortices” clause).
2. The method of Claim 1, wherein the extraction chamber further comprises: a chamber lid at one end of the extraction chamber
wherein the chamber lid has a rim that is defined by a diameter that corresponds to the diameter of the extraction chamber,
wherein the rim of the chamber lid is configured to mate with the one end of the extraction chamber, and
wherein a middle portion of the chamber lid is shaped to receive the vortex plunger when the vortex plunger is in a retracted position; and
wherein the method further comprises:
extending the vortex plunger from a retracted position inside of the chamber lid to a location proximate to the organic material,
wherein the vortex plunger is moved in the repeated reciprocating motion during the agitation process after the vortex plunger has been extended to the location proximate to the organic material (‘547, claim 2Z).
3. The method of Claim 1, wherein the vortex plunger comprises: a grate with a plurality of vortex vanes arranged in a substantially, but not exactly, vertical orientation relative to a direction of travel of the vortex plunger, and a plurality of spacer rings that secure the vortex vanes in a substantially fixed position within the grate;
a head portion, wherein the grate is secured to the head portion; and
a coupling shaft secured to and extending from the head portion (‘547, claim 3).
4. The method of Claim 3, wherein the vortex vanes are angled sufficiently away from the direction of travel of the vortex plunger to create a lateral force against the solvent during the reciprocating motion, thereby creating the one or more fluid vortices (‘547, claim 4).
5. The method of Claim 4, wherein the vortex vanes are secured in the grate at a predefined pitch angle, and wherein the pitch angle controls a characteristic of the one or more fluid vortices that is (are) generated as the vortex plunger is moved in the repeated reciprocating motion during the agitation process (‘547, claim 5).
6. The method of Claim 1, further comprising: rotating a basket containing the organic matter, wherein the basket resides within the extraction chamber, and wherein the rotation of the basket creates a centrifugal force that extracts the solvent with the extracted essential oils from the organic material (‘547, claim 1, clauses concerning “rotating a basket” and “wherein the rotation of the basket”).
7. The method of Claim 1, further comprising: placing the organic material into an organic material bag prior to being placed into the extraction chamber (‘547, claim 6).
9. The method of Claim 1, wherein the vortex plunger is further disposed above a surface of the organic material when the agitation process begins (‘547, claim 7).
Allowable Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the Double Patenting rejections set forth in this Office action.
Independent claim 1 would distinguish and be non-obvious over all of the prior art in view of recitation of: “A method of extracting essential oils from organic material, the method comprising:
placing organic material having essential oils into an extraction chamber that is a substantially cylindrical wall of rigid material, wherein a diameter and a height of the extraction chamber is sized to define an interior that accommodates a desired amount of the organic material;
filling the extraction chamber with a solvent such that the organic material within the extraction chamber is substantially covered; and
moving a vortex plunger disposed within the interior of the extraction chamber in a repeated reciprocating motion during an agitation process so that vortex vanes within the vortex plunger generate one or more fluid vortices in the solvent, all of which is obvious over the prior art in view of further recitation of:
“wherein the fluid vortex (or fluid vortices) causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material”.
The method steps of placing of organic material having essential oils into a chamber, chamber filling with solvent, and moving or reciprocating a vortex plunger having rotating vortex-creating vanes in the chamber during an agitation process are obvious from various combinations of the following prior art, deemed to be the closest prior art: Philips PGPUBS Document US 2013/0303794 (Philips ‘794), Philips PGPUBS Document US 2005/0092682 (Philips ‘682), Xie et al PGPUBS Document US 2020/0376056; Andrews et al patent 1,921,446; Pico patent 3,438,500; Carew PGPUBS Documents US 2012/0301800 and US 2020/0222830; Shellie et al patent publication WO 2019/000042; Fukuyo et al publication CN1161056 and Zhao et al publication CN103041614.
However, such combination of prior art does not suggest the further method step or feature of “wherein the fluid vortex (or fluid vortices) causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material, in particular, not suggesting such causing of drawing solvent into an organic material in a chamber.
Claims 2-10 would be distinguished and non-obvious in view of their dependence on allowable claim 1.
Similarly, Independent claim 11 would distinguish and be non-obvious over all of the prior art in view of recitation of: “A method of extracting essential oils from organic material, the method comprising:
placing organic material having essential oils into an extraction chamber that is a substantially cylindrical wall of rigid material, wherein a diameter and a height of the extraction chamber is sized to define an interior that accommodates a desired amount of the organic material;
filling the extraction chamber with a solvent such that the organic material within the extraction chamber is substantially covered; and
moving a vortex plunger disposed over the surface of the extraction chamber in a repeated reciprocating motion during an agitation process so that vortex vanes within the vortex plunger generate one or more fluid vortices in the solvent, all of which is obvious over the prior art in view of further recitation of:
“wherein the one or more fluid vortices causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material”.
The method steps of placing of organic material having essential oils into a chamber, chamber filling with solvent, and moving or reciprocating a vortex plunger in the chamber are obvious from various combinations of the following prior art, deemed to be the closest prior art: Philips PGPUBS Document US 2013/0303794 (Philips ‘794), Philips PGPUBS Document US 2005/0092682 (Philips ‘682), Xie et al PGPUBS Document US 2020/0376056; Andrews et al patent 1,921,446; Pico patent 3,438,500; Carew PGPUBS Documents US 2012/0301800 and US 2020/0222830; Shellie et al patent publication WO 2019/000042; Fukuyo et al publication CN1161056 and Zhao et al publication CN103041614.
However, such combination of prior art does not suggest the further method step or feature of “wherein the fluid vortex (or fluid vortices) causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material, in particular, not suggesting such causing of drawing solvent into an organic material in a chamber.
Claims 12-15 would be distinguished and non-obvious in view of their dependence on allowable claim 1.
Similarly, independent method claim 16 would distinguish and be non-obvious over all of the prior art in view of: A method of extracting essential oils from organic material, the method comprising:
placing an organic material bag that is filled with the organic material having essential oils into a basket within an extraction chamber, the extraction chamber being a substantially cylindrical wall of rigid material, wherein a diameter and a height of the extraction chamber is sized to define an interior that accommodates a desired amount of the organic material,
wherein the extraction chamber further comprises a chamber lid having a lower rim defined by a diameter that corresponds to the diameter of the extraction chamber,
wherein the lower rim of the chamber lid is configured to mate with a top of the extraction chamber, and
moving the vortex plunger disposed over a surface of the organic material in a repeated substantially upward and substantially downward motion during an agitation process SO that the vortex vanes within the vortex plunger generate one or more fluid vortices in the solvent; and
rotating the basket containing the organic matter, and … wherein the rotation of the basket creates a centrifugal force that extracts the solvent with the extracted essential oils from the organic material, in view of further recitation of:
wherein a middle portion of the chamber lid is shaped to receive a vortex plunger when the vortex plunger is in a retracted position, the vortex plunger comprising:
a grate with a plurality of vortex vanes arranged in a substantially, but not exactly, vertical orientation and a plurality of spacer rings that hold and secure the vortex vanes in a rigid and substantially fixed position within the grate;
a head portion, wherein the top of the grate is secured to the bottom of the head portion; and
a coupling shaft secured to and extending upward from a top of the head portion; filling the extraction chamber with a solvent after the organic material has been placed into the extraction chamber; and,
wherein the one or more fluid vortices causes the solvent to be drawn upward into the organic material and then to be pushed downward through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material.
The method steps of: placing an organic material bag that is filled with the organic material having essential oils into a basket within an extraction chamber; moving the vortex plunger disposed over a surface of the organic material in a repeated substantially upward and substantially downward motion during an agitation process so that the vortex vanes within the vortex plunger generate one or more fluid vortices in the solvent; and
rotating the basket containing the organic matter, and … wherein the rotation of the basket creates a centrifugal force that extracts the solvent with the extracted essential oils from the organic material are obvious from various combinations of the following prior art, deemed to be the closest prior art: Philips PGPUBS Document US 2013/0303794 (Philips ‘794), Philips PGPUBS Document US 2005/0092682 (Philips ‘682), Xie et al PGPUBS Document US 2020/0376056; Andrews et al patent 1,921,446; Pico patent 3,438,500; Carew PGPUBS Documents US 2012/0301800 and US 2020/0222830; Shellie et al patent publication WO 2019/000042; Fukuyo et al publication CN1161056 and Zhao et al publication CN103041614.
However, such combination of prior art does not suggest the further method step or feature of “wherein the fluid vortex (or fluid vortices) causes the solvent to be drawn into the organic material and then to be pushed through the organic material so that the solvent extracts at least a substantial portion of the essential oils from the organic material, in particular, not suggesting such causing of drawing solvent into an organic material in a chamber.
The above prior art also does not teach or suggest:
wherein a middle portion of the chamber lid is shaped to receive a vortex plunger when the vortex plunger is in a retracted position, the vortex plunger comprising:
a grate with a plurality of vortex vanes arranged in a substantially, but not exactly, vertical orientation and a plurality of spacer rings that hold and secure the vortex vanes in a rigid and substantially fixed position within the grate;
a head portion, wherein the top of the grate is secured to the bottom of the head portion; and
a coupling shaft secured to and extending upward from a top of the head portion; filling the extraction chamber with a solvent after the organic material has been placed into the extraction chamber”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner Joseph Drodge at his direct government formal facsimile phone number telephone number of 571-272-1140. The examiner can normally be reached on Monday-Friday from approximately 8:00 AM to 1:00PM and 2:30 PM to 5:30 PM.
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If attempts to reach the examiner are unsuccessful, the examiner' s supervisor, Benjamin Lebron, of Technology Center Unit 1773, can reached at 571-272-0475.
The telephone number, for official, formal communications, for the examining group where this application is assigned is 571-273-8300.
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JWD
09/19/2026
/JOSEPH W DRODGE/Primary Examiner, Art Unit 1773
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