DETAILED ACTION
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 .
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.
Claims 1, 4, 16-18 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over OSSALA, et al, Comparison of fortified, sfursat, and passito wines produced from fresh and dehydrated grapes of aromatic black cv. Moscato nero (Vitis vinifera L.), Food Research International 98 (2017 59-67) (OSSOLA) in view of Vrhosvek, Quantitative metabolic profiling of grape, apple and raspberry volatile compounds (VOCs) using a GC/MS/MS method, Volume 966, 1 September 2014, Pages 132-139 (VRHOSEK), United States Patent No. 9,758,752 (DORSEY) and JP2015027309 (TAICHI). A translation for TAICHI is attached with this Official Action.
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OSSOLA teaches a MOSCATO wine with ethanol and water (see Table 5). OSSOLA also teaches that the wine has pleasant nuances of fruit and flowers (i.e., grapes – See Introduction). i) 2-phenethyl acetate (i.e., one of the claimed esters) is a key odorant providing such floral notes (abstract and Table 6 on pg. 64).
While OSSOLA teaches the importance of adding fruit and floral notes to moscato, OSSOLA is silent as to additional alcohols and ketones.
VRHOSEK teaches that the flavour of grapes comes from several groups of volatile compounds, such as esters, alcohols, acids, terpenoids, pyrazines and carbonyl compounds. Major classes of compounds include aliphatic and aromatic hydrocarbons, aldehydes, ketones, alcohols, esters, C13 norisoprenoids, monoterpenes and sesquiterpenes. ii) Isobutyl alcohol is cited as a key VOC (i.e., 2-methyl-1-propanol is a chemical synonym) (see Table 2).
Additionally, VRHOSEK teaches that iii) 2-nonanone is a VOC that provides flavors in fruits such as apples and certain grapes (see Table 1 and Table 3).
It would have been obvious to add these compounds to OSSOLA, as VRHOSEK teaches that the compound provide a fruit flavor/profile.
The references above are silent as to adding a thiol.
However, DORSEY teaches that in the case of wine, some of the most potent aroma compounds are thiols like iv) 3-mercaptohexan-1-ol (3MH) and 3-mercaptohexyl acetate (3MHA). These are synthesized and released by the yeast from a range of precursors during alcoholic fermentation (col. 3, lines 35-40).
Thus it would have been obvious to add 3MHA to the reference above as the compound provides aroma to wine.
The references above are silent as to the additional VOCs.
However, TAICHI teaches adding v) damascenone (line 349), vi) gamma-decalactone (line 218), vii) propanol (line 313), viii) ethyl valerate (i.e., also known as ethyl pentanoate) (line 389), and ix) phenethyl acetate (line 141)and x) linalyl acetate (line 140) as a flavor imparting agents.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
The claimed invention is a recipe for producing an alcoholic beverage. 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).
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OSSOLO also teaches that benzyl alcohol can be added (Table 4).
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As to claim 16, OSSOLO also teaches that alcohols such as benzyl alcohol are present in grapes and (table 4) and wine (Table 6).
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OSSOLO also teaches that alcohols such as benzyl alcohol are present in grapes and (table 4) and wine (Table 6).
OSSOLA does not teach the amount of alcohols.
Moreover, VRHOSEK teaches that is desirable to add alcohols. VRHOSEK teaches that the flavour of grapes comes from several groups of volatile compounds, such as esters, alcohols, acids, terpenoids, pyrazines and carbonyl compounds. Major classes of compounds include aliphatic and aromatic hydrocarbons, aldehydes, ketones, alcohols, esters, C13 norisoprenoids, monoterpenes and sesquiterpenes. Isobutyl alcohol is cited as a key VOC (i.e., 2-methyl-1-propanol is a chemical synonym) (see Table 1).
As to the amount of alcohols, it would have been obvious to vary the amount of alcohols based on the desired flavor.
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The references above teach that MOSCATO wine comprises ethanol, water and VOCS (see abstract and Table 5). OSSALO also teaches that malic acid and vanillin are also present (see Table 1, 4th compound from bottom. for malic acid and 2.2.3 Extraction and determination of phenolic compounds and Table 2).
Response to Arguments
Applicant's arguments filed 6/24/2025 have been fully considered but they are not persuasive.
The indefinite rejections and objections are removed in view of the changes to the claims.
The applicant argues that the cited references do not disclose or suggest a Moscato beverage with the at least claimed 10 VOC compounds, as claimed.
However, as noted above, all of the cited references teach that the VOCs are known flavor and aroma compounds. “It is prima facie obvious to combine two 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). **
Moreover, none of the claims recite a compound that would have not have been expected or a range of compounds that result in an unexpected result in wine. While the manner in which the claimed product is put together may be unique, the claimed invention is no more than a recipe for producing a replica of an already known alcoholic beverage.
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.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791