DETAILED ACTION
The amendment submitted on January 30, 2026 has been entered. Claims 1-20 are pend-ing 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 30, 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. Applicant argues that the examiner “should identify what specific disclosure is missing and explain why a person of ordinary skill in the art would not understand the priority disclosure as reasonably conveying possession of cannabinoid-containing compositions at the disclosed modifier concentration ranges.” See applicant’s Remarks, submit-ted January 30, 2026, at p. 5. In response, 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 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 p. 6-7. 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. Applicant’s arguments in this regard are therefore not persuasive.
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 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 Application).
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
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.
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THEODORE R. HOWELL
Primary Examiner
Art Unit 1628
/THEODORE R. HOWELL/ Primary Examiner, Art Unit 1628
April 2, 2026