DETAILED ACTION
The amendment submitted on July 6, 2026 has been entered. Claims 1-20 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.
Response to Arguments
Applicant maintains that the claims have written support in either this application or one or more of the prior-filed applications. “To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.” See MPEP1 2163(I). “To comply with the written description requirement of 35 U.S.C. 112(a) … or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119 [or] 120, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure. When an explicit limitation in a claim ‘is not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.’” See MPEP 2163(II). “[T]he essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, ‘does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.’” See MPEP 2163.02. “The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement. If a claim … include[s] subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application.” See MPEP 2163.02 (emphasis added). That is the situation here; applicant has presented claims that lack written support and therefore remain rejected under § 112(a).
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 30% by weight of the fluid” (claim 15)
Applicant attempts to provide written support by confounding the disclosures of “modifiers” and “cannabinoids.” See applicant’s Remarks, submitted July 6, 2027, at p. 6. Applicant’s argument constitutes a “departure from, addition to, or deletion from the disclosure of the application as filed,” and is therefore improper. Applicant reiterates similar arguments that have been thoroughly discussed on the record. Applicant’s arguments have been fully considered but are not persuasive. The rejections below are therefore maintained.
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 objec-tion 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 claims filed on January 30, 2026 and July 6, 2026 are objected to under 35 U.S.C. 132(a) because they introduce new matter into the disclosure. As quoted above, § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material not supported by the original disclosure is as follows: “the cannabinoids are present in an amount of at least 20% by weight of the fluid” (claim 1), “cannabinoids present in an amount of at least 20% by weight of the fluid” (claim 7), “the cannabinoids are present in an amount of at least 30% by weight of the fluid” (claim 15). Note that the application provides disclosures of “30% modifiers” and “20% terpenes” (see, e.g., para. 00109 at p. 26), but it does not specifically disclose these concentration of cannabinoids. Applicant is required to cancel the new matter in the reply to this Office Action. See MPEP 211.05 (Sufficiency of Disclosure in Prior-Filed Applica-tion).
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 1-20 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. An objective standard for determining compliance with the written description requirement is to ask the following question: Does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed? To satisfy the written description require-ment, applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention, i.e., whatever is now claimed. While there is no requirement that the claimed subject matter be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy these requirements, applicant must nevertheless be in possession of the claimed invention. Applicant may show that the inventor was in possession of the claimed invention by describing it with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. This conclusion will result in the rejection of the claims affected under 35 U.S.C. 112(a). See MPEP 2163.02. Turning to the instant claims, the cannabinoids present in an amount of “at least 20% by weight” and “at least 30% by weight” of the fluid are new matter. This subject matter is not disclosed in any earlier-filed application. The rejection under § 112(a) is therefore maintained.
Conclusion
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 advi-sory 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 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
September 30, 2026
1 Manual of Patent Examining Procedure (MPEP), Latest Revision November 2024 [R-01.2024]
