DETAILED ACTION
Status of Application
Claims 1-3, 5, 7, 17-19, 23-34, 36-42 and 44 are pending. Claim 44 is new.
Claims 1-3, 5, 7, 42 are under consideration.
This Official Action is Final.
Election/Restrictions
Newly submitted claim 44 id directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 44 depends from claim 18. Claim 18 is withdrawn.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 44 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 (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.
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, 2, 3, 5, 7 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2016/0073673 (SCHUH) in view of JP2015027309 (TAICHI).
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As to claim 1, SCHUH teaches a flavored beverage designed to taste like whiskey comprising water [0022], ethanol [0022], and maltol. Maltol is a volatile organic compound (VOC) ( see [0070] and Table 2A). SCHUH additionally teaches acetaldehyde [0022] can be added [0071].
In [0061], it is taught that beverage precursor can be altered by substituting or adding additional flavor and/or aroma compounds to the beverage precursor. The beverage precursor can include at least one flavor or aroma compound from each of thirteen different flavor compound groups described below.
For example, SCHUH teaches that alpha-terpineol [0010], ethyl lactate [0010], farnesol [0010], myrcene [0010] can all be used as flavor compounds.
Given the compounds are known flavors for alcoholic beverages, it would have been obvious to use such compounds in whiskeys based on the desired flavor profile.
SCHUH is silent as to a number of the compounds and amounts recited in the claims.
TAICHI teaches the following VOCs can be added to alcoholic beverages:
1-decanol (line 146),
octen-3-ol (line 339),
acetaldehyde (line 158),
acetoin (line 171),
alpha-terpineol (line 149),
alpha inone (line 171),
benzaldehyde (line 160),
beta-pinene (line 217),
butanol (line 144),
butyl acetate (lines 113-114),
cinnamaldehyde (line 359),
delta decalactone (line 207),
diethyl succinate (line 132),
ethyl isovalerate (line 120, TAICHI teaches that esters can be used as flavor-imparting agents. It would have been obvious to use ethyl isovalerate given TAICHI teaches the use of esters and isovalerate compounds),
ethyl lactate (line 130),
farnesol (line 341),
gamma-decalactone (lines 204-207),
gamma-hexalactone (lines 204-207),
gamma-valerolactone (lines 204-207),
isoamyl hexanoate (line 122),
isoamyl octanoate (i.e., isoamyl octanoate) (line 314),
isobutanol (line 321),
isobutyl acetate (line 114),
limonene (line 217),
linalool oxide (lines 147-148),
linalyl acetate (line 115),
methyl salicylate (line 133),
myrcene (line 215),
Given the compounds are known to provide flavor and aroma for alcoholic beverages and SCHUH already teaches that one can mix and match flavor compounds to create an alcoholic beverage, it would have been obvious to use such compounds in whiskeys based on the desired flavor profile.
As to the amount of compounds, TAICHI teaches that the compounds provide flavor and aroma. TAICHI teaches that the amount of agents can vary from 0.0000001 to 0.05% (i.e., 1 mg/L to 50 mg/L). Thus, it would have been obvious to one skilled in the art to provide flavor compounds in amounts at least about those listed. However, it would have been obvious to one skilled in the art to vary the compounds based on the desired flavor.
The claimed invention is a recipe for whiskey that is produced by using known VOCs as ingredients. The applicant is 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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As to claim 2, SCHUH teaches furfural is present [0008].
As to claim 3, SCHUH teaches ethyl hexanoate is present [0022]
In [0061] of SHUH, it is taught that beverage precursor can be altered by substituting or adding additional flavor and/or aroma compounds to the beverage precursor. The beverage precursor can include at least one flavor or aroma compound from each of thirteen different flavor compound groups described below.
Given the compounds are known flavors for alcoholic beverages, it would have been obvious to use such compounds in whiskeys based on the desired flavor profile.
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As to claims 5 and 7, 2-methylbutyl acetate is optional in SCHUH. Thus, it would have been obvious to one skilled in the art to provide a beverage without 2-methylbutyl acetate.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over SCHUH and TAICHI as applied to claim 1 above, and further in view of EBELER et al., Volatile and sensory profiling of cocktail bitters, Food Chemistry 179 (2015) 343-354 (EBELER).
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SCHUH teaches a flavored beverage designed to taste like whiskey comprising water [0022], ethanol [0022], and VOCs. In [0061], it is taught that beverage precursor can be altered by substituting or adding additional flavor and/or aroma compounds to the beverage precursor.
TAICHI teaches that a number of VOCS are known to add flavor to alcoholic beverages.
TAICHI teaches the following VOCs can be added to alcoholic beverages:
1-decanol (line 146),
octen-3-ol (line 339),
acetaldehyde (line 158),
acetoin (line 171),
alpha-terpineol (line 149),
alpha inone (line 171),
benzaldehyde (line 160),
beta-pinene (line 217),
butanol (line 144),
butyl acetate (lines 113-114),
cinnamaldehyde (line 359),
delta decalactone (line 207),
diethyl succinate (line 132),
ethyl isovalerate (line 120, TAICHI teaches that esters can be used as flavor-imparting agents. It would have been obvious to use ethyl isovalerate given TAICHI teaches the use of esters and isovalerate compounds),
ethyl lactate (line 130),
farnesol (line 341),
gamma-decalactone (lines 204-207),
gamma-hexalactone (lines 204-207),
gamma-valerolactone (lines 204-207),
isoamyl hexanoate (line 122),
isoamyl octanoate (i.e., isoamyl octanoate) (line 314),
isobutanol (line 321),
isobutyl acetate (line 114),
limonene (line 217),
linalool oxide (lines 147-148),
linalyl acetate (line 115),
methyl salicylate (line 133),
myrcene (line 215),
Given the compounds are known to provide flavor and aroma for alcoholic beverages and SCHUH already teaches that one can mix and match flavor compounds to create an alcoholic beverage, it would have been obvious to use such compounds in whiskeys based on the desired flavor profile.
SCHUH and TAICHI are silent as to adding 3-carene.
EBELER teaches that 3-carene is a VOC that forms flavor in cocktail bitter (see pg. 347, Table 3). Thee flavor chemistry of cocktail bitters, an historically and gastronomically important product with complex volatile chemistry. Aromatic cocktail bitters are derived from the alcoholic extraction of a variety of plant materials and are used as additives in mixed drinks to enhance aroma and flavor (abstract). Accordingly, it would have been obvious to one skilled in the art to add 3-carene to whiskey beverages as it is a desirable flavor in whiskey cocktails.
Response to Arguments
Applicant's arguments filed 12/23/2024 have been fully considered but they are not persuasive.
At the outset, is noted that EBELER is now cited to show that it was known at the time the application was filed that 3-carene is a known volatile organic compounds that provides flavor and aroma to cocktail/whiskey beverages.
The applicant argues that the inventors surprisingly discovered that exclusion of some compounds found in the tested traditional whiskeys was not detrimental, and some compounds that were not found in any tested traditional whiskeys could be beneficial.
However, while the specification does provide examples exclusion of some compounds found in the tested traditional whiskeys was not detrimental, and some compounds that were not found in any tested traditional whiskeys could be beneficial, none of the claims are commensurate in scope with the Examples. Indeed, while the claims capture that some compounds can be present and other are not, the claims do not reflect the numerous compounds needed to provide a whiskey replica, as suggested by applicant. Indeed, the Examples provide over a hundred compounds needed to provide a whiskey replica. Moreover, it is noted that at pg. 278, lines 3-8 in Example 1 of the present specification that “It is noted that while whiskey replicas can include volatile and non-volatile compounds as listed herein, the added compounds may react with one another to generate additional compounds, or to change the effective amount of one or more of the added compounds within the whiskey replica formulation”. Thus, the inclusion or exclusion of compounds provides a whiskey replica when numerous other compounds are present. This is not reflected in the claims.
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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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