DETAILED ACTION
Status of Application
Claims 1, 6-46, 48, 50-52, 55-57 are pending and under consideration.
Claim 53 is withdrawn.
Claims 1 and 6 and are amended. The remaining claims remain unchanged.
Claim Rejections - 35 USC § 103
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 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness 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. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6, 11-13 are rejected under 35 U.S.C. 103 as being obvious over United States Patent Application Publication No. 2009/0148586 (SIEGEL) in view of JP2015027309 (TAICHI), WO2016/092547 (GOLAN) and ARCARI, et al. Volatile composition of Merlot red wine and its contribution to the aroma: optimization and validation of analytical method, Talanta Volume 174, 1 November 2017, Pages 752-766 (ARCARI).
A translation of TAICHI has been previously provided with line numbers with the Official Action of 7/9/2025 and relied upon below.
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SIEGEL teaches citrus juice sacs with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol).
SIEGEL teaches citrus juice sacs (i.e., containing citric acid) that naturally contain pectin (i.e., a surfactant) with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol). In terms of volatile organic components, a variety of VOCs (i.e., over 10) can be added [0051]. This includes cinnamates (i.e., cinnamic acid conjugates).
Sugar is present [0093].
Cinnamaldehyde, cytosine and dimethyl sulfide are also present [0052].
Glycerol can be added as solvent [0056]
SIEGEL is silent as to providing additional VOCs.
TACIHI teaches that alcoholic beverages can contain flavorants such as natural perfumes (A), esters (B), alcohols (C), aldehydes (C), ketones (E), phenols (F), ethers (G), lactones (H), hydrocarbons (I), nitrogen-containing and/or sulphur-containing compounds (J), acids (K), bittering agent (L), an acidulant (M), a sweetener (N), and a salty seasoning (abstract).
The additional compounds taught are:
i) butanol (i.e., an alcohol) at lines 162-164.
ii) Diethyl succinate (i.e., an ester) is taught at 154-155.
iii) Furfural (i.e., and aldehyde is taught at line 178.
iv) Isobutanol is taught at line 313.
v) Methyl-2-pyrrolyl ketone (i.e., synonym 2-acetopyrrole) is taught at line 410.
vi) Ethyl valerate (i.e., synonym ethyl pentanoate) is taught at line 389.
vii) Isobutyl acetate is taught at line 549.
viii) cis-2-hexenol and cis-3-hexenol (line 168) are isomers. They share the exact same molecular formula, but merely have a different structural arrangement. It would have been obvious to use cis-2-hexenol as it is an isomer of cis-3-hexenol and both are flavor compounds.
TAICHI teaches in lines 495-499 that flavor imparting agents can range from 0.0000001 to 0.05% by mass (i.e., 0.001 mg/L to 500 mg/L). Thus, it would have been obvious to provide the flavor compounds within this range.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Additionally, as the compounds directly impact flavor and aroma, it would have been obvious to vary the amount added based on desired flavor.
The references above are silent as to additional VOCs.
WO 2016/092547 (GOLAN) teaches on pg. 30, lines 12-25 that ix) allyl hexanoate is a flavor that can be added to alcoholic beverages.
It would have been obvious to one skilled in the art to add allyl hexanoate to provide flavor and aroma to an alcoholic beverage.
ARCARI teaches in Table 3 that important volatile compounds such as x) 1-hexanol provide flavor and aroma in alcoholic beverages such a red wine (see Table 3 on pg. 755). It would have been obvious to one skilled in the art to add 1-hexanol to provide flavor and aroma to an alcoholic beverage.
“It is prima facie obvious to combine two (i.e., or more) compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). **
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TACIHI teaches that alcoholic beverages can contain flavorants. TAICHI teaches the addition of nonanoic acid at line 148. Thus, it would have been obvious to add nonanoic acid to SIEGEL as a flavorant.
Claims 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGEL, TAICHI, GOLAN and ARCARI as applied to claim 1 above, and further in view of Bickham, Flavors from Esters and Alcohols, Brewing Techniques, accessed at https://www.morebeer.com/articles/Esters_Flavors_Alcohols_Balance_Fruity, 2017) (BICKAM).
SIEGEL, TAICHI, GOLAN and ARCARI are silent as to adding the components of claims 7-9, 14-15 and 17-18.
As to claims 7-9, BICKHAM teaches the production of alcoholic beverages alcoholic beverage such as beer (see first paragraph, pg. 2). Beer contains water and ethanol. BICKHAM teaches esters are natural flavors found in fermented fruits such as ethyl hexanoate in apples (see Table 2).
As to claims 14-15, BICKHAM teaches the production of alcoholic beverages such as beer (see first paragraph, pg. 2). BICKHAM teaches that alcohols are natural flavors found in fermented fruits such as benzyl alcohol in apples (see Apple Flavors Section).
It would have been obvious to add the flavor of BICKHAM to the composition of SIEGEL, TAICHI, GOLAN, and ARCARI to improve the flavor of the composition.
As to claims 10-16 and 19, BICKHAM teaches the production of alcoholic beverages such as beer (see first paragraph, pg. 2). Beer contains water and ethanol. BICKHAM teaches esters are natural flavors found in fermented fruits such as ethyl hexanoate in apples and 2-phenyl ethyl acetate (see Table 2). Citric acid and other organic acid (e.g., hexanoic) are also present for fruit flavors (see pg. 4, Fruity and Estery Flavors). On page 7, 2-heptanone is used as a flavor. For an apple flavor, 2-phenylethanol can be used.
As the claimed compounds are flavors, it would have been obvious to add ethyl hexanoate and others and vary the amount of each flavor compound based on the desired flavor.
As to claims 17-18, BICKHAM teaches the production of alcoholic beverages such as beer (see first paragraph, pg. 2). BICKHAM teaches that aldehydes such as 2-pentanal are natural flavors found in fermented fruits such as pears and raspberry (see Pear-like and melony and Berrylike Flavor Sections).
It would have been obvious to add the fruit flavor of BICKHAM to the product of the references above to improve the flavor of the composition.
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGEL, TAICHI, GOLAN and ARCARI as applied to claim 1 above, and further in view of Lehtonen Chromatographia Vol. 16 pg. 201-203, 1982 (LEHTONEN).
The references above are silent as to the thresholds of cresols.
LEHTONEN teaches a whiskey with ethanol, water and a phenol such as p-cresol. The amounts are as follows:
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The amount p-cresol falls within that claimed in claim 25. The claimed amount of 0.00007 mg/L to 5mg/L is equivalent to 0.7 ug/l to 5000 ug/l. The 7.8 to 14.0 ug/L range falls well within this range.
It would have been obvious to incorporate the thresholds of cresols as taught by LEHTONEN in the references above based on the desired flavor profiles.
Claims 20-22, 26-28, 32-34 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGAL, TAICHI, GOLAN and ARCARI as applied to claim 1 above, and further in view of TAO (Advances in Fruit Aroma Volatile Research, Molecules 2013, 18, 8200-8229; doi:10.3390/molecules18078200).
As to claims 20-22, 44, SIEGEL teaches citrus juice sacs with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol). In terms of volatile organic components, the VOC 3-phenylpropanal can be added [0051]. In [0060], nonvolatile substances such as sugar can be present.
Neither SIEGEL, TAICHI, GOLAN and ARCARI teach the presence of the specifically recited compounds in claims 20-22 and 44.
TAO teaches that terpenes such as limonene and compounds such as carvone are naturally found in citrus fruits and berries (first paragraph, pg. 8202 and first full paragraph, pg. 8206).
It would have been obvious to add the limonene to SIEGEL, TAICHI GOLAN and ARCARI, as TAO teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
As to claims 26-28, SIEGEL teaches citrus juice sacs with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol). In terms of volatile organic components, the VOC 3-phenylpropanal (i.e., ad recited in claim 6) can be added [0051]. In [0060], nonvolatile substances such as sugar can be present.
SIEGEL, TAICHI, GOLAN and ARCARI do not teach the specifically recited compounds.
TAO teaches that lactones such as gamma decalactone is naturally found in strawberries (third paragraph, pg. 8203
It would have been obvious to add the gamma decalactone to SIEGEL, TAICHI, GOLAN and ARCARI as TAO teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
As to claims 32-34, SIEGEL teaches citrus juice sacs with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol). In terms of volatile organic components, the VOC 3-phenylpropanal (i.e., ad recited in claim 6) can be added [0051]. In [0060], nonvolatile substances such as sugar can be present.
SIEGEL, TAICHI, GOLAN and ARCARI do not teach the specifically recited compounds.
TAO teaches that sulfides such as dimethylsulfide is naturally found in a variety of fruit (first paragraph, pg. 8214).
It would have been obvious to add the dimethyl sulfide to SIEGEL, TAICHI, GOLAN and ARCARI, as TAOS teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGAL, TAICHI, GOLAN, and ARCARI as applied to claim 1 above, and further in view of Pichersky et al, Eugenol and isoeugenol, characteristic aromatic constituents of spices are biosynthesized via reduction of a coniferyl alcohol ester, (PNAS, 10128-10133, Vol. 103, no. 26, 2006 (PICHERSKY).
The references above do not teach the specifically recited compounds in claims 23-25.
PICHERSKY teaches that phenols such as eugenol are naturally found in spices (see Abstract).
It would have been obvious to add the eugenol to SIEGEL, TAICHI, GOLAN and ARCARI, as PICHERSKY teaches that the compounds are naturally occurring flavor compounds.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
Claims 29-31 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGAL, TAICHI, GOLAN and ARCARI as applied to claim 1 above, and further in view Maga, Pyridine in Foods, Volume 29, Number 5 September/October 1981 (MAGA).
The references above do not teach the specifically recited compounds.
MAGA teaches that pyrazines such as 2-acetylpyrazine is naturally flavor of strawberries (last paragraph left column, pg. 896).
It would have been obvious to add the 2-acetylpyrazine to the references above, as MAGA teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
Claims 35-40, 43, 50 are rejected under 35 U.S.C. 103 as being unpatentable over SIEGAL, TAICHI, GOLAN and ARCARI as applied to claim 1 above, and further in view of Vanilla Benefits at Herwisdom.com, accessed at https://www.herbwisdom.com/herb-vanilla.html, 2013(VANILLA).
The references above do not teach the specifically recited compounds.
VANILLA teaches that the main component of vanilla is vanillin. There are other constituents present including sugars, resins, and oils. Vanilla also contains approximately 150 aromas, many of which are present in only trace amounts. Acetals, including acetal itself, are used in vanilla flavors to replicate the character of aged vanilla alcoholic extracts. Vanillyl ethyl ether (i.e., see claims 35-37), acetic acid, p-hydroxybenzaldehyde, and caproic acid are among the chemicals present.
It would have been obvious to add the vanillyl ethyl ether, vanillin, and/or acetal to SIEGAL, TAICHI, GOLAN, and ARCARI, as VANILLA teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
As to claim 50, it is also noted that VANILLA teaches that vanillin is an important flavor for adding vanilla flavor.
It would have been obvious to add vanillin and vanillyl ethyl ether to SIEGAL and TAICHI to provide vanillin. Moreover, it would have been obvious to vary those amounts based on desired flavor.
Claims 41-42, 45-46, 48, 51-52, 56-57 are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over SIEGAL, TAICHI, GOLAN, and ARCARI as applied to claim 1 above, and further in view of Panuwet, Differentiation of volatile profiles of Thai Oolong tea No. 12 provenances by SPMEGC-MS combined with principal component analysis, International Journal of Food Properties, 20:2450-2462, 2017 (PANUWET).
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The references above do not teach the specifically recited compounds.
PANUWET teaches that furans such as 2-pentylfuran is naturally found in tea. Epicatechin gallate are natural components of tea. (see Table 2)
It would have been obvious to add the 2-pentylfuran and epicatechin gallate to SIEGAL, TAICHI, GOLAN, and ARCARI, as PANUWET teaches that the compounds is naturally occurring flavor compound.
Moreover, as the compounds directly impacts the flavor, it would have been obvious to vary the amount added based on desired flavor.
There is no indication of 4-guanidinobutyric acid.
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SIEGEL teaches citrus juice sacs with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol).
SIEGEL teaches citrus juice sacs (i.e., containing citric acid) that naturally contain pectin (i.e., a surfactant) with aroma addition comprising a water content of from 69.995-96.995% by weight [0033]. In [0045] the composition is added to beverages that contained alcohol (i.e., ethanol). In terms of volatile organic components, a variety of VOCs (i.e., over 10) can be added [0051]. This includes cinnamates (i.e., cinnamic acid conjugates).
Sugar is present [0093].
Cinnamaldehyde, cytosine and dimethyl sulfide are also present [0052].
Glycerol can be added as solvent [0056]
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
The applicant disagrees with the Examiner's assertion regarding the goal of the invention, as it does not necessarily include replicating the taste of a known alcoholic beverage "by adding exogenous ingredients.”
However, the fact remains that the claimed invention is directed to an alcoholic beverage replica comprising a variety of volatile organic compounds (VOCs). The claimed beverage replica is not restricted to traditional distilling and age methods and the claims remain directed to a recipe that reproduces an alcoholic beverage by adding various known VOCs. The applicant is respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
The applicant argues that none of the ten references teach all of the claimed VOCs.
However, it is acknowledged that none of the references anticipate the claimed invention. Rather, the current rejections are based on a combination of reference as set forth above. SIEGAL, TAICHI, GOLAN, ARCARI and PANAWET evidence that the claimed beverage is based on a combination of known VOCs that provide flavor to alcoholic beverages. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As to the claimed amounts, the fact remains that TAICHI teaches in lines 495-499 that flavor imparting agents can range from 0.0000001 to 0.05% by mass (i.e., 0.001 mg/L to 500 mg/L) in alcoholic beverages. Thus, it would have been obvious to provide the flavor compounds within this range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
Additionally, as the compounds directly impact flavor and aroma, it would have been obvious to vary the amount added based on desired flavor.
As to the arguments regarding isomers, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, subsection II.A.4.(c). As to the claimed compounds cited by applicant, they are isomer and both flavor compounds.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 advisory 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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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, Nikki Dees can be reached on 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
Prosecution Insights