Joshua H. Wurzer

Patent Trials and Appeals Board

Oct 18, 2019

14206942 - (D) (P.T.A.B. Oct. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/206,942 03/12/2014 Joshua H. Wurzer CSS-33159.203 8145
72960 7590 10/18/2019
Casimir Jones, S.C.
2275 Deming Way Ste 310
Middleton, WI 53562
EXAMINER
MELLER, MICHAEL V
ART UNIT PAPER NUMBER
1655
NOTIFICATION DATE DELIVERY MODE
10/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@casimirjones.com
pto.correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA H. WURZER
____________

Appeal 2018-008869
Application 14/206,942
Technology Center 1600
____________

Before DONALD E. ADAMS, RACHEL H. TOWNSEND, and
DAVID COTTA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–6 (Appeal Br. 3).2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “SC
Laboratories, Inc.” (Appellant’s May 14, 2018 Appeal Brief (Appeal Br.) 3).
2 Pending claims 7–19 stand withdrawn from consideration (Appeal Br. 3).
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to concentrates obtained from
extraction from Cannabis, preferably cannabinoid and/or terpene
concentrates, and formulation of the concentrates, particularly for use for
direct vaporization, infusion into edible matrices, in electronic inhalation
devices, and as nutraceuticals” (Spec.3 1: 9–12). Appellant’s claim 1 is
representative and reproduced below:
1. A tablet or capsule containing a cannabinoid concentrate as
an active ingredient, said cannabinoid concentrate characterized
in comprising at least 1% w/w of at least one cannabinoid
compound selected from the group consisting of Cannabigerol
(E)-CBG-C5, Cannabigerol monomethyl ether (E)-CBGM-C5
A, Cannabigerolic acid A (Z)-CBGA-C5 A, Cannabigerovarin
(E)-CBGV-C3, Cannabigerolic acid A (E)-CBGA-C5 A,
Cannabigerolic acid A monomethyl ether (E)-CBGAM-C5 A
and CannabigErovarinic acid A (E)-CBGVA-C3 A); (±)-
Cannabichromene CBC-C5, (±)-Cannabichromenic acid A
CBCA-C5 A, (±)-Cannabivarichromene, (±)-
Cannabichromevarin CBCV-C3, (±)-Cannabichromevarinic
acid A CBCVA-C3 A); (–)-Cannabidiol CBD-C5, Cannabidiol
momomethyl ether CBDM-C5, Cannabidiol-C4 CBD-C4, (–)-
Cannabidivarin CBDV-C3, Cannabidiorcol CBD-C1,
Cannabidiolic acid CBDA-C5, Cannabidivarinic acid CBDVA-
C3); Cannabinodiol CBND-C5, Cannabinodivarin CBND-C3);
Δ9-Tetrahydrocannabinol Δ9-THC-C5, Δ9-
Tetrahydrocannabinol-C4 Δ9-THC-C4, Δ9-
Tetrahydrocannabivarin Δ9-THCV-C3, Δ9-
Tetrahydrocannabiorcol, Δ9-THCO-C1, Δ9-
Tetrahydrocannabinolic acid A Δ9-THCA-C5 A, Δ9-
Tetrahydrocannabinolic acid B, Δ9-THCA-C5 B, Δ9-
Tetrahydrocannabinolic acid-C4 A and/or B Δ9-THCA-C4 A
and/or B, Δ9-Tetrahydro-cannabivarinic acid A Δ9-THCVA-C3
A, Δ9-Tetrahydrocannabiorcolic acid A and/or B Δ9-THCOA-

3 Appellant’s March 12, 2014 Specification.
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C1 A and/or B), (–)-Δ8-trans-(6aR, 10aR)-Δ8-
Tetrahydrocannabinol Δ8-THC-C5, (–)-Δ8-trans-(6aR, 10aR)-
Tetrahydrocannabinolic acid A Δ8-THCA-C5 A, (–)-(6aS,
10aR)- Δ9-Tetrahydrocannabinol (–)-cis- Δ9-THC-C5);
Cannabinol CBN-C5, Cannabinol-C4 CBN-C4, Cannabivarin
CBN-C3, Cannabinol-C2 CBN-C2, Cannabiorcol CBN-C1,
Cannabinolic acid A CBNA-C5 A, Cannabinol methyl ether
CBNM-C5, (–)-(9R,10R)-trans-Cannabitriol (–)-trans-CBT-C5,
(+)-(9S, 10S)-Cannabitriol (+)-trans-CBT-C5, (±)-(9R, 10S/9S,
10R)-); Cannabitriol (±)-cis-CBT-C5, (–)-(9R,10R)-trans-10-O-
Ethyl-cannabitriol (–)-trans-CBT-OEt-C5, ( ± )-(9R, 10R/9S,
10S)-Cannabitriol-C3(±)-trans-CBT-C3, 8,9-Dihydroxy-Δ6a(10a)-
tetrahydrocannabinol 8,9-Di-OH-CBT-C5, Cannabidiolic acid A
cannabitriol ester CBDA-C5 9-OH-CBT-C5 ester, (–)-
(6aR,9S,10S,10aR)-9,10-Dihydroxy-hexahydrocannabinol,
Cannabiripsol, Cannabiripsol-C5, (–)-6a,7,10a-Trihydroxy-Δ9-
tetrahydrocannabinol (–)-Cannabitetrol, 10-Oxo-Δ6a(10a)-
tetrahydrocannabinol OTHC); (5aS,6S,9R,9aR)-Cannabielsoin
CBE-C5, (5aS,6S,9R,9aR)C3-Cannabielsoin CBE-C3,
(5aS,6S,9R,9aR)-Cannabielsoic acid A CBEA-C5 A,
(5aS,6S,9R,9aR)-Cannabielsoic acid B CBEA-C5 B;
(5aS,6S,9R,9aR)-C3-Cannabielsoic acid B CBEA-C3 B,
Cannabiglendol-C3 OH-iso-HHCV-C3, Dehydrocannabifuran
DCBF-C5, Cannabifuran CBF-C5), (–)-Δ7-trans-(1R,3R,6R)-
Isotetrahydrocannabinol, (±)-Δ7-1,2-cis-(1R,3R,6S/1S,3S,6R)-
Isotetrahydrocannabivarin, (–)-Δ7-trans-(1R,3R,6R)-
Isotetrahydrocannabivarin); (±)-(1aS,3aR,8bR,8cR)-
Cannabicyclol CBL-C5, ( ± )-(1aS,3aR,8bR,8cR)-
Cannabicyclolic acid A CBLA-C5 A, (±)-
(1aS,3aR,8bR,8cR)Cannabicyclovarin CBLV-C3; Cannabicitran
CBT-C5); Cannabichromanone CBCN-C5,
Cannabichromanone-C3 CBCN-C3, and Cannabicoumaronone
CBCON-C5); and
at least 0.1% w/w of at least one terpenoid selected from
the group consisting of Alloaromadendrene, allyl hexanoate,
benzaldehyde, (Z)-α-cis-bergamotene, (Z)-α-trans-bergamotene,
β-bisabolol, epi-α-bisabolol, β-bisabolene, borneol (camphol),
cis-γ-bisabolene, borneol acetate (bornyl acetate), α-cadinene,
camphene, camphor, cis-carveol, caryophyllene (β-
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caryophyllene), α-humulene (α-caryophyllene), γ-cadinene, Δ-
3-carene, caryophyllene oxide, 1,8-cineole, citral A, citral B,
cinnameldehyde, α-copaene (aglaiene), y-curcumene, β-
cymene, β-elemene, γ-elemene, ethyl decdienoate, ethyl maltol,
ethyl propionate, ethylvanillin, eucalyptol, α-eudesmol, β-
eudesmol, γ-eudesmol, eugenol, cis-β-farnesene ((Z)-β-
farnesene), trans-α-farnesene, trans-β-farnesene, trans-γ
bisabolene, fenchone, fenchol (norbornanol, β-fenchol),
geraniol, α-guaiene, guaiol, methyl anthranilate, methyl
salicylate, 2-methyl-4-heptanone, 3-methyl-4-heptanone, hexyl
acetate, ipsdienol, isoamyl acetate, lemenol, limonene, d-
limonene (limonene), linolool (linalyl alcohol, β-linolool), α-
longipinene, menthol, γ-muurolene, myrcene (β-myrcene),
nerolidol, trans-nerolidol, nerol, β-ocimene (cis-ocimene), octyl
acetate, α-phellandrene, phytol, α-pinene (2-pinene), β-pinene,
pulegone, sabinene, cis-sabinene hydrate (cis-thujanol), β-
selinene, α-selinene, γ-terpinene, terpinolene (isoterpine),
terpineol (α terpineol), terpineol-4-ol, α-terpinene (terpilene), α-
thujene (origanene), vanillin, viridiflorene (ledene), and α-
ylange.
(Appeal Br. 10–11.) In response to a restriction requirement, Appellant
elected, the cannabinoids: cannabigerolic acid A (Z)-CBGA-C5 A;
cannabinol CBN-C5; and cannabichromenic acid A CBCA-C5 A and the
terpenoids: Limonene, Myrcene, and Terpinolene (Final Act.4 2).

4 Examiner’s August 8, 2017 Final Office Action.
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Grounds of rejection before this Panel for review:
Claims 1–6 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Freeman5 as evidenced by Cannabinoids in Cannabis6 and Casano.7
Claims 1–6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Freeman, Cannabinoids in Cannabis, and Casano.

FACTUAL FINDINGS (FF)
FF 1. Appellant defines “the term ‘concentrate’ when used in reference to
a composition containing one or more compounds [to] mean[] that the one or
more compounds are concentrated in the composition on a weight/weight
basis as compared to a starting material, such as Cannabis plant material or
trichomes” (Spec. 21: 9–12; see Ans. 4–5).
FF 2. Freeman discloses “compositions comprising powdered hemp seed,
an emulsifier/dispersant such as lecithin (particularly soy lecithin), cannabis,
and optionally other additives and excipients.” (Freeman ¶ 2; id. ¶ 9; see
generally Ans. 4).
FF 3. Freeman defines the term “cannabis” as “natural compositions,
typically resinous in nature, containing active cannabinoids, particularly
THC (or THCA), separated from marijuana plants” (Freeman ¶ 28; see
generally Ans. 4).

5 Freeman, US 2013/0295172 A1, published Nov. 7, 2013.
6 Cannabinoids in Cannabis, in The Canadian Consortium for the
Investigation of Cannabinoids (2009).
7 Casano et al., Variations in Terpene Profiles of Different Strains of
Cannabis sativa L (2011), available at https://www.fundacion-
canna.es/en/variations-terpene-profiles-different-strains-cannabis-s... (last
accessed July 29, 2015).
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FF 4. Freeman discloses that “[d]oses of . . . [its] composition desirably are
produced in the form of gel capsules or tablets containing a specific amount
of THC” (Freeman ¶ 52; see generally Ans. 4).
FF 5. Casano discloses that “[t]he average relative contents of dominant
compounds detected in the aroma volatiles of all the [cannabis] strains [in
Casano’s study] were: β-myrcene (46.1±2.6%), α-pinene (14.0±1.5%), α-
terpinolene (10.2±1.8%), limonene (7.3±1.3%), trans-β-ocimene
(6.6±0.7%), β-pinene (6.1±0.4%), α-terpinene (3.6±1.0%), β-caryophyllene
(1.2±0.2%), 1.8 cineole (1.1±0.2%), α-phellandrene (0.7±0.1%) and Δ-3-
carene (0.6±0.1%)” (Casano Results and discussion; see Ans. 5).
FF 6. Cannabinoids in Cannabis discloses that “[t]he cannabis plant
contains over 60 cannabinoid molecules” including “cannabinol,”
“cannibichromene,” and “cannabigerol” (Cannbinoids in Cannabis, first
paragraph).
FF 7. Cannabinoids in Cannabis discloses a first cannabis sample that
comprises: 0.03% cannabidiol (CBD), 0.1% cannabichromene (CBC), and
0.54% cannabinol (CBN); a second cannabis sample that comprises: 0.47%
CBD, 0.24% CBC, and 0.23% CBN; “one form” of cannabis comprising “up
to 5.16% CBD;” and cannabis product wherein “CBD, CBG, CBN and CBC
levels are below the lower limit of quantification” (Cannabinoids in
Cannabis, fifth–sixth paragraphs).

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Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Freeman as evidenced by Cannabinoids in Cannabis
and Casano teaches Appellant’s claimed invention?
ANALYSIS
Examiner finds that Freeman teaches Appellant’s claimed invention,
as evidenced by Cannabinoids in Cannabis and Casano (Ans.8 4–7). In
particular, Examiner reasons that Freeman’s capsule reads “on a concentrate
of cannabis . . . [because] the cannabis is combined with other ingredients”
and, therefore, “technically the cannabis has been concentrated into a
capsule” (Ans. 5; see FF 2–4). Stated differently, Examiner reasons that
“mixing [Freeman’s] . . . cannabis, hemp seed and lecithin will form a
concentrate since by combining the ingredients together the cannabis will be
concentrated (Ans. 5; cf. FF 1 (Appellant defines “the term ‘concentrate’
when used in reference to a composition containing one or more compounds
[to] mean[] that the one or more compounds are concentrated in the
composition on a weight/weight basis as compared to a starting material,
such as Cannabis plant material or trichomes)).
Examiner relies on Casano to establish that cannabis inherently
“contains limonene, myrcene and terpinolene (the elected terpenoids)” (Ans.
5; see FF 5). Examiner, therefore, reasons that because Casano discloses
that cannabis contains more than 0.1% of the elected terpenoids, Freeman’s

8 Examiner’s July 27, 2018 Answer.
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capsules comprising cannabis inherently comprise at least about 0.1% of
Appellant’s elected terpenoids (Ans. 5).
Examiner further relies on Cannabinoids in Canabis to establish that
cannabis inherently contains cannabigerolic acid A (Z)-CBGA-C5 A,
cannabinol CBN-C5, and cannabichromenic acid A CBCA-C5 A (Ans. 6; see
FF 6). Examiner, therefore, asserts that because Freeman’s capsule
comprises cannabis, Freeman’s capsule will necessarily comprise an amount
of cannabinoids above 1%, because, according to Examiner, “cannabis is
well known to have at least 1% of total cannabinoids in it” (Ans. 5–6).
The dispute on this record is limited to Examiner’s interpretation of
Appellant’s claimed invention, specifically, Examiner reasons
that if the meaning of “at least 1% w/w of at least one
cannabinoid compound . . . (selected from the recited group)”
was intended to mean that each of the one or more cannabinoid
compounds is at least 1%, then the phrase would recite “at least
1% w/w of each of at least one cannabinoid
compound . . . (selected from the recited group)”, but the claims
do not recite this.
Another way of looking at this is to replace “at least one
cannabinoid compound”' with a definite number encompassed
by the phrase. For example, “at least 1% w/w of two
cannabinoid compounds . . . (selected from the recited group)”.
This clearly shows that a reasonable interpretation of such a
phrase would be met by 1% w/w of the composition being
made up of the combination of two of the compounds. The
same logic would apply to three, four or more compounds.
(Ans. 13–14 (emphasis omitted, alteration original).) Therefore, based on
Examiner’s interpretation of Appellant’s claim, Examiner concludes that
because cannabis comprises cannabinoids in a total amount above 1%,
adding up all of the cannabinoids in Freeman’s capsule, which comprises
cannabis, would read on a cannabinoid concentrate characterized in
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comprising at least 1% w/w cannabinoid, including Appellant’s elected
cannabinoids, as set forth in Appellant’s claim 1 (see Ans. 13; cf. Appeal Br.
10–11). On this record, we find no error in Examiner’s interpretation of
Appellant’s claim 1. Therefore, we are not persuaded by Appellant’s
contention that notwithstanding Examiner’s “misinterpretation of the claim
language[,] [t]he plain meaning of the phrase ‘at last 1% w/w of at least one
cannabinoid compound selected from the group consisting of . . . ’ means
that the concentrate must comprise at least 1% w/w of the individually listed
cannabinoid compounds.” Thus, under “the plain meaning of the claim
language, the 1% w/w threshold may not be reached by adding up the weight
percentages of the cannabinoids as the Examiner suggests” (Appeal Br. 7
(alteration original); see also Reply Br. 2–3).
CONCLUSION
The preponderance of evidence on this record supports Examiner’s
finding that Freeman as evidenced by Cannabinoids in Cannabis and Casano
teaches Appellant’s claimed invention. The rejection of claim 1 under 35
U.S.C. § 102(b) as being anticipated by Freeman as evidenced by
Cannabinoids in Cannabis and Casano is affirmed. Claims 2–6 are not
separately argued and fall with claim 1.

Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

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ANALYSIS
Examiner relies on Freeman, Cannabinoids in Cannabis, and Casano
as discussed above with respect to the anticipation rejection (see Ans. 7–9;
FF 1–7). Based on the combination of Freeman, Cannabinoids in Cannabis,
and Casano, Examiner concludes that, “[i]n the event it is seen that
Freeman’s cannabis is not concentrated (which is not being admitted) then”
at the time Appellant’s invention was made, it would have been prima facie
obvious to concentrate Freeman’s cannabis because “one would want a
concentrated form of the cannabis to be in a capsule to make the capsule
more effective in treating pain as taught by Freeman” (Ans. 9). Further,
although Examiner finds that the elected cannabinoids and terpenoids are
inherently in Freeman’s composition, Examiner asserts that it would have
been prima facie obvious to use a cannabis strain or a part of the cannabis
plant containing the elected cannabinoids and terpenoids because they are
medicinally useful as taught by Cannabinoids in Cannabis and Casano,
respectively (id. at 10). We find no error in Examiner’s rationale.
Because we agree with Examiner’s claim interpretation, we are not
persuaded by Appellant’s contention that the “plain meaning of the phrase
‘at least 1% w/w of at least one cannabinoid compound selected from the
group consisting of . . . ’ means that the concentrate must comprise at least
1% w/w of one of the individually listed cannabinoid compounds” (Appeal
Br. 8 (alteration original)) and, thus, “the 1% w/w threshold may not be
reached by adding up the weight percentages of the cannabinoids as the
Office suggests” (Reply Br. 2).
Because the evidence of record supports a finding that cannabis
strains and/or parts thereof comprise the elected cannabinoids and terpenoids
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and that those of ordinary skill in this art recognize the utility of these
substances, we find no error in Examiner’s conclusion that those of ordinary
skill in this art would select cannabis strains and/or parts thereof that
comprise these substances (see FF 5–7). Therefore, for all of the foregoing
reasons, we are not persuaded by Appellant’s contention that “Examiner
provides no evidence that other strains or parts of the plant comprise the
specified cannabinoids in an amount of at least 1% w/w” (App. Br. 9).
CONCLUSION
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Freeman, Cannabinoids in
Cannabis, and Casano is affirmed. Claims 2–6 are not separately argued and
fall with claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6 102(b) Freeman,
Cannabinoids in
Cannabis, Casano
1–6
1–6 103 Freeman,
Cannabinoids in
Cannabis, Casano
1–6
Overall Outcome 1–6
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED