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 .
Status of Application
This Official Action is Non-Final. Any rejections from the previous Official Action not repeated below are withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 10/17/25 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-9, 16, 33-37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-4, 6-9, 16 and 33-37 recite the term “replica”. It is unclear what constitutes a replica as a replica is an exact copy or model of something. However, there are a variety of whiskeys produced by different methods. For example, Tennessee whisky is manufactured in Tennessee and filtered through maple charcoal. Scotch whisky must be distilled and bottled in Scotland and aged in oak barrels for at least three years. Other factors that can impact the flavor of whiskey include the size and shape of the still, the age of the oak, and whether the barley is dried over a peat fire. Thus, There is no clear definition of what constitutes a standard for a replica or what VOCs must be present. Moreover, the broadest claims only require ethanol, water and a number of VOCs. In this regard, it is noted that the claims are interpreted as a replica being satisfied by the ingredients recited in the claims. Given the claims are open-ended (i.e., using the transitional phrase “comprising”), the claims are interpreted as allowing for other ingredients, including other VOCs.
Claim 4 is additionally rejected for reciting the limitation “the at least 10 additional VOCs” in line 9. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-4, 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2016044377 (SCHUH) in view of JP2015027309 (TAICHI).
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Claim 1
SCHUH teaches a bourbon-like replica drink [0035]-[0041] comprising ethanol and water [0045].
SCHUH is silent as to additional VOCS.
TAICHI teaches that a number of VOCS are known to add flavor to alcoholic beverages.
TAICHI teaches that i) cinnamaldehyde (line 359), ii) 2,3-pentanedione (lines 361-363), iii) acetoin (lines 171-172), iv) y-hexalactone (lines 205-206), and v) isobutanol (lines 320-321) can be added.
Thus, it would have been obvious to add these compounds to SCHUH as they are compounds known to provide flavor to alcoholic beverages.
TAICHI teaches that these flavor imparting agent can vary based on desired taste but notes that such agents typically range from 0.0000005 to 0.05% or 0.005 mg/L to 500 mg/L (i.e. a mass percentage represents the mass of a solute per 100 g of the total solution) (lines 544-549). Thus, all of the claimed ingredients with recited amounts fall within this range. Moreover, TAICHI teaches that it would be obvious to vary these amounts based on the desired flavor.
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Claims 2 and 3
TAICHI teaches that butyl acetate can be present.
2-methoxy-4- methylphenol is not mentioned. Thus, it would have been obvious to provide a beverage without the recited VOCs not present as all are optional, as SCHUH teaches that the compound is not required to provide an alcoholic beverage.
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SCHUH is silent as to the other VOCS.
TAICHI teaches i) acetaldehyde (line 160), ii) benzaldehyde (line 160), iii) isoamyl hexanoate, (3200, ethyl isovalerate (line 120), iv) ethyl valerate (line 605), v) gamma-decalactone (lines 645-648), vi) gamma-valerolactone (lines 204-207), vii) isoamyl hexanoate (line 320), viii) myrcene (line 215), ix) cinnamaldehyde (line 359), x) 2-mehtylbutanal (i.e., 2-methylbutryaldehyde is a synonym) (line 158), xi) acetoin (line 171), xii) maltol (line 172), xiii) beta-pinene (line 650, α-pinene is taught and a structural isomer and it would have been obvious to one skilled in the art to use an isomer (see MPEP 2444.09)), xiv) propanoic acid (i.e., hexyl isobutyrate is a synonym) line 368), xv) isoamyl alcohol (line 322), xvi) isobutnaol (line 321), xvii) nonanoic acid (line 124) xviii) linalyl acetate (lines 115-116); xix) alpha-terpineol (line 149), and xx) butyl acetate (lines 113-114).
TAICHI teaches that these agent can improve the flavor of alcoholic beverages (lines 23-31).
Thus, it would have been obvious to add these compounds to SCHUH as they are compounds known to provide flavor to alcoholic beverages.
As to the agents not present, the agents are taught as flavor agents and can be varied based on desired flavor. Thus, it would have been obvious to one skilled to exclude these compounds based on the desired flavor. However, it is noted that ethyl trans-2-butenoate is not cited by SCHUH or TAICHI.
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SCHUH teaches a bourbon-like replica drink [0035]-[0041] comprising ethanol, water [0045]and VOCs that help provide the flavor and taste of the beverage (see Table 2B, and claim 10).
It would have been obvious to vary the VOCs and amount of VOCs based on the desired flavor of the beverage.
SCHUH teaches that non-VOC trans-ethyl cinnamate can be added (i.e., the ester of cinnamic acid and ethanol (i.e., an alcohol) (see Table 2B, and claim 10) .
TAICHI teaches that a number of VOCS are known to add flavor to alcoholic beverages.
In addition to those taught by SCHUH above, TAICHI teaches acetoin can be used (see Examples of the ( E) ketones. Taichi also teaches at lines 154-159 that it would have been obvious to vary the amount of agents to vary the flavor.
Also included is limonene (line 216) (i.e., a terpene).
It would have been obvious to add these compounds to SCHUH as they are compounds known to provide flavor to alcoholic beverages.
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over SCHUH and TAICHI as applied to claim 8 above, and further in view of Jeffrey, Aging of Whiskey Spirits In Barrels Of Non-Traditional Volume, Master of Science, A Thesis, MSU, 2012 accessed at http://bourbonr.com/blog/wp-content/uploads/2017/01/AGING-OF-WHISKEY-SPIRITS-IN-BARRELS-OF-NON-TRADITIONAL-VOLUME.pdf (JEFFREY).
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SCHUH teaches a bourbon-like replica drink [0035]-[0041] comprising ethanol, water [0045]and Table 2B, and claim 10. 2-methoxy-4- methylphenol is not mentioned. Thus, it would have been obvious to provide a beverage without 2-methoxy-4- methylphenol, as SCHUH teaches that the compound is not required to provide a bourbon-replica beverage.
SCHUH teaches that trans-ethyl cinnamate can be added but silent as to cinnamic acid (i.e., the ester of cinnamic acid and ethanol).
JEFFREY teaches that cinnamic acid is a flavor of spirits that are aged in oak barrels. It provides a honey floral flavor.
Thus, it would have been obvious to one skilled in the art to add cinnamic acid to a bourbon replica as it provides a honey floral flavor.
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SCHUH teaches that trans-ethyl cinnamate can be added but silent as to cinnamic acid (i.e., the ester of cinnamic acid and ethanol).
JEFFREY teaches that cinnamic acid is a flavor of spirits that are aged in oak barrels. It provides a honey floral flavor.
Thus, it would have been obvious to one skilled in the art to add cinnamic acid to a bourbon replica as it provides a honey floral flavor.
SCHUH teaches a bourbon-like replica drink [0035]-[0041] comprising ethanol, water [0045]and Table 2B, and claim 10. 2-methoxy-4- methylphenol is not mentioned. Thus, it would have been obvious to provide a beverage without 2-methoxy-4- methylphenol, as SCHUH teaches that the compound is not required to provide a bourbon-replica beverage.
SCHUH teaches that trans-ethyl cinnamate can be added but silent as to cinnamic acid (i.e., the ester of cinnamic acid and ethanol).
JEFFREY teaches that cinnamic acid is a flavor of spirits that are aged in oak barrels. It provides a honey floral flavor.
Thus, it would have been obvious to one skilled in the art to add cinnamic acid to a bourbon replica as it provides a honey floral flavor.
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SCHUH teaches a bourbon-like replica drink [0035]-[0041] comprising ethanol and water [0045].
SCHUH is silent as to additional VOCS.
TAICHI teaches that a number of VOCS are known to add flavor to alcoholic beverages.
TAICHI teaches gamma-decalactone (lines 645-648), cinnamaldehyde (line 359), acetoin (line 171), and isoamyl alcohol (line 322).
Thus, it would have been obvious to add these compounds to SCHUH as they are compounds known to provide flavor to alcoholic beverages.
TAICHI teaches that these flavor imparting agent can vary based on desired taste but notes that such agents typically range from 0.0000005 to 0.05% or 0.005 mg/L to 500 mg/L (i.e. a mass percentage represents the mass of a solute per 100 g of the total solution) (lines 544-549). Thus, all if the claimed ingredients with recited amounts fall within this range. Moreover, TAICHI teaches that it would be obvious to vary these amounts based on the desired flavor.
As to the agents not present, the agents are taught as flavor agents and can be varied based on desired flavor. Thus, it would have been obvious to one skilled to exclude these compounds based on the desired flavor. However, it is noted that ethyl trans-2-butenoate is not cited by SCHUH or TAICHI.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
The applicant argues that the term “replica” is definite. However, there is no indication as to what is being used a standard to determined what ingredients/VOCs must be present or absent. Bourbon is a type of whiskey. As noted above, there are a variety of bourbons produced by different methods. For example, Tennessee whisky is manufactured in Tennessee and filtered through maple charcoal. Scotch whisky must be distilled and bottled in Scotland and aged in oak barrels for at least three years. Other factors that can impact the flavor of whiskey include the size and shape of the still, the age of the oak, and whether the barley is dried over a peat fire. Thus, There is no clear definition of what constitutes a standard for a replica or what VOCs must be present. Moreover, the broadest claims only require ethanol, water and a number of VOCs. In this regard, it is noted that the claims are interpreted as a replica being satisfied by the ingredients recited in the claims. Given the claims are open-ended (i.e., using the transitional phrase “comprising”), the claims are interpreted as allowing for other ingredients, including other VOCs. Moreover, the breadth of the claims remain problematic as many of the recited ingredients/VOCs that are recited are not recited with a range. Even a trace amount of these ingredients would satisfy the claims. Thus, while the applicant argues that it is surprising that a bourbon replica would contain a number of the recited VOCs, no standard bourbon has been provided to support this claim and it would not be unexpected that a trace or trivial amount would allow a bourbon “replica” to still taste like a bourbon.
The applicant argues that SCHUH does not disclose the VOCs as recited in the claims. However, SCHUH teaches a flavored beverage designed to taste like an alcoholic beverage and contains water [0022], ethanol [0022], and maltol (i.e., a VOC) (Table 3A). The method involves making a flavored beverage includes combining water and a plurality of flavor compounds in an amount sufficient to impart the flavor of a wine, a whiskey, a beer, a gin, a vermouth, a rum, or a tequila [0005]-[0008] and abstract. Moreover, TAICHI teaches that VOCs are known flavor imparting agents for alcoholic beverages.
“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, as noted above, the breadth of the claims remain problematic as many of the recited ingredients/VOCs that are recited are not recited with a range. Even a trace amount of these ingredients would satisfy the claims. Thus, while the applicant argues that it is surprising that a bourbon replica would contain a number of the recited VOCs, no standard or comparative evidence has been provided to support this claim. Additionally, it would not be unexpected that a trace or trivial amount would allow a bourbon “replica” to still taste like a bourbon.
Additionally, a traditional bourbon cannot contain added flavorings (e.g., cinnamon/cinnamaldehyde) and still be labeled as “bourbon”. Rather, if a distiller adds a flavor (e.g., e.g., cinnamon/cinnamaldehyde) (or any other flavoring), the product is no longer “straight bourbon”. The product is labeled as bourbon whiskey with natural flavors or as a flavored whiskey. Thus, while applicant attempts to compare the claimed bourbon to traditional bourbon, this is not a proper comparison. The proper comparison would be the replica bourbon to a bourbon whiskey with natural flavors or a flavored whiskey. Given various flavors are added in a bourbon whiskey with natural flavors or a flavored whiskey, it would have been obvious for a bourbon whiskey with natural flavors or a flavored whiskey to contain or lack various VOCs not found in a traditional whiskey based on the desired taste.
Conclusion
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
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