DETAILED ACTION
The amendment submitted on February 6, 2026 has been entered. Claims 1-19 and 21 are pending in the application and remain 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.
Continued Examination under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on February 6, 2026 has been entered.
Response to Arguments
Applicant asserts that the claims have written support under 35 U.S.C. 112(a) and there-fore do not include new matter. The examiner maintains that at least the following three claim limitations are not found in any earlier-filed application:
“the cannabinoids are present in an amount of at least 20% by weight of the fluid” (see instant claim 1)
“cannabinoids present in an amount of at least 20% by weight of the fluid” (see claim 7)
“the cannabinoids are present in an amount of at least 25% by weight of the fluid” (claim 15)
Applicant may demonstrate written support, by reference to specific page, paragraph, or line numbers in any earlier-filed application, where these claim limitations may be found. The exam-iner has attempted to do so, but cannot find written support for any of these three limitations.
Applicant states that para. 0062-64, 0066, and 0087 of provisional application no. 61/879,281 provide written support for the instant claims. See applicant’s Remarks at pp. 5-6. The examiner has reviewed the relevant disclosure of the ‘281 application. Para. 0062-64 are a general discussion of formulations, synergy, entourage compounds, and so forth. Nothing in para. 0062-64 provides written support for the claimed cannabinoid concentrations. Similarly, para. 0066 of the ‘281 application discusses terpenes as entourage compounds, and para. 0087 discusses certain “exclusionary embodiments.” Nowhere in para. 0062-64, 0066, or 0087 of the ‘281 application is there any discussion whatsoever of the concentration of the cannabinoids. Applicant further argues that “the priority provisional discloses explicit percentage-based concentration frameworks for the disclosed formulations, including embodiments in which ‘the three terpenes (trio) account for about 20% of the terpenes (wt./vol.)’ ([00102]) and ‘the three terpenes (trio) account for about 30% of the terpenes (wt./vol.)’ ([00103]), and further provides explicit numerical formulation embodiments such as ‘the formulation consists of 20% (wt./vol.)’ of a specified terpene component ([0038]).” Remarks at p. 8. This disclosure in the ‘281 applica-tion, however, relates to terpene concentration, which is not the same thing as cannabinoid concentration. The claim limitations at issue here concern cannabinoids, not terpenes. Appli-cant’s arguments in this regard are therefore not persuasive.
With respect to the obviousness rejection over US 2015/0105455 A1 by Bjorncrantz, applicant argues that this reference is not citable as prior art because applicant is entitled to the priority of the ‘281 application. Remarks at p. 9. As explained above, the examiner maintains that the instant claims are not entitled to the benefit of the ‘281 application, so the rejection under § 103 is proper.
Finally, the terminal disclaimer over the ‘914 Patent submitted on February 6, 2026 is acknowledged. The examiner has requested that a Paralegal Specialist in the Patent Legal Research Center consider the terminal disclaimer. Until a decision is made, the rejection over the ‘914 Patent is maintained. In order to avoid processing delays in the future, the examiner suggests that applicant consider using the “eTerminal Disclaimer” system described above. A decision on the terminal disclaimer should be available in Patent Center soon. Applicant has not substantively responded to the provisional rejections for double patenting over Application Nos. 18/671,969 and 18/671,957, so the provisional rejections are maintained for the reasons of record.
Priority and Effective Filing Date
This application claims the benefit under 35 U.S.C. 119 of provisional application number 61/879,281, filed on September 18, 2013. To be entitled to the benefit of the filing date of the provisional application, this application must be an application for a patent for an invention that is also disclosed in the provisional application. Under 35 U.S.C. 119(e), the written description of the provisional application must adequately support and enable the subject matter now claimed in this application within the meaning of 35 U.S.C. 112(a). If a claim in this application is not adequately supported by the written description of the provisional application, that claim is not entitled to the benefit of the filing date of the provisional application. See MPEP 211.05 (Sufficiency of Disclosure in Prior-Filed Application).
At particular issue here is the concentration “25% by weight” recited in the independent claims. Note that the instant claims also require alpha-pinene, myrcene, and limonene. Nowhere is a concentration of 25% disclosed in the provisional application for compositions comprising alpha-pinene, myrcene, and limonene. See, e.g., the specification of the ‘281 application at pp. 26, which discusses compositions in which the “mixture of three terpenes and additional terpenes” is “about 20% of the terpenes (wt./vol.)” or “about 30% of the terpenes (wt./vol.),” but it does not specifically disclose 25% by weight as required by the instant claims. Elsewhere, the ‘281 application discloses example concentrations of 25%, but it is only in the context of terpenes, not cannabinoids. See, e.g., the specification of the ‘281 application at p. 3, which describes a composition, wherein “beta-caryophyllene, limonene, and myrcene together comprise at least 25% (wt./vol.),” but it does not disclose that “the cannabinoids are present in an amount of at least 25% by weight” as required by the instant claims.
The examiner therefore maintains that the claims are not entitled to the benefit of the provisional application filing date. Accordingly, anything that qualifies as prior art under 35 U.S.C. 102 as of August 24, 2014 is citable against the instant claims. In particular, US 2015/0105455 A1 by Bjorncrantz qualifies as prior art under 102(a)(2) and is discussed in detail below.
Objection to The Specification for New Matter
The following is a quotation of 35 U.S.C. 132(a):
(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.
The amendment filed on February 6, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. As quoted above, § 132(a) states that no amend-ment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is set forth above. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections – 35 USC § 112, Written Description
The following is a quotation of 35 U.S.C. 112(a):
(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.
Claims 1-19 and 21 remain rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. The new matter listed above is not disclosed in any priority application.
Claim Rejections – 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obvious-ness 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) resolv-ing the level of ordinary skill in the pertinent art; and (4) considering objective evidence present in the application indicating obviousness or nonobviousness. See MPEP 2141 et seq.
Claims 1-11, 13-16, 19, and 21 remain rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0105455 A1 by Bjorncrantz in view of US 2005/0016550 A1 by Katase and US 2012/0199146 A1 by Marangos.
Bjorncrantz (cited in the prior action) discloses an electronic cigarette or personal vapor-izer (para. 0004-05 and 0013) that includes an extract of cannabis in the form of a liquid compo-sition (para. 0016). The cannabis extract includes THC, CBD, and other cannabinoids (para. 0030), as well as alpha-pinene, myrcene, limonene, beta-caryophyllene, alpha-terpineol, linalool, and other terpenes (para. 0031). In an example, the liquid composition comprises “about 25% by weight of winterized Cannabis extract,” (para. 0036), which suggests the concentration limita-tions of claims 1, 7, and 25. In another example, the concentration of the cannabis extract is as high as 75% (para. 0036), which suggests the subject matter of instant claim 19. Bjorncrantz also discloses that the composition may include various fruit esters (para. 0042) thereby meeting the limitations of claims 4-5.
The difference between the prior art and the claims at issue is that, although Bjorn-crantz discloses an electronic cigarette or personal vaporizer, it does not specifically teach a mouth-piece, a vaporizing element, and a cartridge. These elements of an electronic cigarette, however, would have been well known to the skilled artisan as evidenced by Katase and Marangos (both cited in the prior action). Bjorncrantz only mentions in passing that the compositions disclosed therein may be used in a “personal vaporizer,” it being implicit that one of skill in the art would have been familiar with such devices.
Regarding claims 2, 8, and “the sum of the amount of all the terpenes” in claim 15, Bjorncrantz discloses that the ingredients “can be included in any desired ratio to the refined Cannabis extract, so long as the liquid composition remains capable of being vaporized and inhaled” (para. 0035), which suggests that the concentration limitations of these particular claims would have been viewed as a matter of routine experimentation within the general teachings of the cited references and therefore prima facie obvious. See MPEP 2144.05 (differences in concentration will not support the patentability of subject matter encom-passed by the prior art unless there is evidence indicating such parameters are critical. Where 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.”).
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 appli-cation 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 Good-man, 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 applica-tions subject to examination under the first-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-to-file provisions of the AIA . A termi-nal 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(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 that 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/terminaldisclaimer.
Claims 1-19 and 21 remain rejected on the ground of nonstatutory double patent-ing as being unpatentable over claims 1-20 of US Patent No. 12,275,914 B2. Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘914 Patent (cited in the prior action), of which the present application is a continuation, claims an electronic inhalation device comprising a mouthpiece; a vaporizing element; and a cartridge containing a fluid that is inhalable when vaporized, the fluid comprising: cannabinoids comprising at least one of THC, CBD or a combination thereof, wherein the cannabinoids are present in an amount of at least 20% by weight of the fluid; and terpenes including at least limonene and myrcene. See claim 1 of the ‘914 Patent. Dependent claim 5 further requires alpha-pinene. Other dependent claims require fruit esters (claims 7-8), linalool (claim 14), terpinolene (claim 15), beta-pinene (claims 15-17), and so forth.
Claims 1-19 and 21 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/671,969. Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘969 Application claims an electronic inhalation device with a compositions comprising THC/CBD, myrcene, limonene, and alpha-pinene. See the claims submitted on May 22, 2024 in the ‘969 Application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not, in fact, been patented.
Claims 1-19 and 21 remain provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/671,957. Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘957 Application claims an electronic device capable of vaporizing a composition of THC/CBD, myrcene, limonene, and alpha-pinene. See the claims submitted on May 22, 2025 in the ‘957 Application. 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
April 2, 2026
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