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 .
Applicant’s response filed 1/8/2026 has been received and entered into the case.
Claims 1-14, 17-26, 35-50, 54-59 are pending. Claims 2-4, 7-14, 17-22, 24-26, 35-49 are withdrawn
Claims 1, 5, 6, 50, 54-59 have been considered on the merits herein.
Applicants Declaration of inventor Jacob Flyholm Cramer filed on 1/8/2026 has been entered and considered.
The previous rejections of record have been withdrawn in light of applicants claim amendments.
New rejections necessitated by amendment
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.
Claim 58 is 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.
Regarding claim 58, the term Ag+ 4% crosslinked is in parenthesis which renders the claim indefinite because it is unclear whether the limitation(s) within the parenthesis are part of the claimed invention. See MPEP § 2173.05(d).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 59 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 59 depends from claim 1, which has been amended to include a single-vessel infusion mashing without the use of a cereal cooker. Claim 59, fails to further limit claim 1 as these limitations are already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
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.
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, 50, 56, 59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frederiksen (US20120225164, IDS) in view of WO2009/075682(IDS) to Elvig et al.
Regarding claim 1, Frederiksen teaches a method of mashing comprising providing a grist comprising an adjunct and contacting the grist with alpha-amylase and a maltogenic alpha-amylase (abstract, 0002, 0007-0018, 0031, 0047, 0063, 0064, 0082). Frederiksen teaches the adjunct to be sorghum (0043) and teach it is not gelatinized, i.e. cereal-cooked prior to mashing (0044). The reference teaches that when using an alpha-amylase and a maltogenic alpha-amylase, the wort has DP4+ dextrins of <30% (Table 1), and an extract of at least 15 Plato degrees. Plato degrees is measured in g extract/100 mL, the reference teaches the wort to have Plato degrees of about 20 (0116, Table 5).
The reference teaches that the mashing-off temperature is at a temperature of at least 80°C (0059).
Regarding claim 50, the wort is converted into beer (0016, 0062).
Regarding claim 56, the wort has a Real Degree of Fermentation (RDF) of at least 60% (Table 1).
Regarding claim 59, the mash is performed in a single-vessel without the use of a cereal-cooker (0044).
The wort is analyzed by HPLC to determine the sugar profile, i.e., DP4+ dextrin (0107).
The reference teaches that at least an alpha-amylase with a maltogenic alpha-amylase results in an improvement in starch hydrolysis and %RDF and better wort characteristics in a mashing method (0109, Table 1, 0117, Table 5).
The reference differs from the claimed invention in that it does not teach using 100% adjunct and the holding temperature of claim 54.
Elvig (WO2009/075682) teaches a mashing method comprising contacting 100% adjunct comprising sorghum (p. 3, lines 21-23, p. 5, lines 18-32, p. 6, lines 1-9), with at least an alpha-amylase including a maltogenic alpha-amylase (p. 6, lines 10-13, p. 8, lines 23-p. 9, lines 1-13) to make a wort, and the resulting wort obtained by the mashing process is used to make beer (p. 7, lines 21-25).
Regarding claim 54, WO682 teaches the mashing process applies a stepwise increase in temperature, with each step favoring one enzymatic action over the other, which degrades starch, proteins and cell walls. The reference teaches that mashing temperature profiles are generally known in the art and that the starch degradation temperature in the mashing method is performed between 60-66°C, preferably at 64°C (p. 6, lines 21-27) and held for 44-104 minutes (p. 19, 21, for example).
Thus, before the effective filing date of the claimed invention, using 100% sorghum adjunct in mashing methods, wherein the adjunct is treated with an alpha-amylase and a maltogenic alpha-amylase to make wort was known and practiced in the prior art. Additionally, Frederiksen teaches that the use of the claimed enzymes allows for increased adjunct in the process and improved production efficiencies. Adjuncts are used in the mashing process because they are readily available and provide carbohydrates at a lower cost than barley malt. Therefore, it would have been obvious to a posita to substitute the grist of Frederiksen comprising 80% adjunct with the grist of Elvig comprising 100% adjunct in the method and the substitution would have yielded predictable results.
Further, mash holding and mashing-off temperatures were known in the prior art, and are selected to favor one enzymatic action over the other and for effective degradation of starch and final inactivation of enzymes in the mashing process. Temperatures and holding times are result effective variables which depend upon enzymes and grist used, and thus would be optimizable to one of ordinary skill in the art. It is well settled that routine optimization is not patentable, even if it results in significant improvements over the prior art. In support of this position, attention is directed to the decision in In re Aller, Lacey, and Haft, 105 USPQ 233 (CCPA 1955): Normally, it is to be expected that a change in temperature, or in concentration, or in both, would be an unpatentable modification. Under some circumstances, however, changes such as these may impart patentability to a process if the particular ranges claimed produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. In re Dreyfus, 22 C.C.P.A. (Patents) 830, 73 F.2d 931,24 USPQ 52; In re Waite et al„ 35 C.C.P.A. (Patents) 1117, 168 F.2d 104, 77 USPQ 586. Such ranges are termed "critical" ranges, and the applicant has the burden of proving such criticality. In re Swenson et al., 30 C.C.P.A. (Patents) 809, 132 F.2d 1020, 56 USPQ 372; In re Scherl, 33 C.C.P.A. (Patents) 1193, 156 F.2d 72, 70 USPQ 204. However, even though applicant's modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 22 C.C.P.A. (Patents) 1313, 77 F.2d 627, 25 USPQ 433; In re Normann et al., 32 C.C.P.A. (Patents) 1248, 150 F.2d 708, 66 USPQ 308; In re Irmscher, 32 C.C.P.A. (Patents) 1259, 150 F.2d 705, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Swain et al., 33 C.C.P.A. (Patents) 1250, 156 F.2d 239, 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 69 App. D.C. 217, 99 F.2d 986, 38 USPQ 213; Allen et al. v. Coe, 77 App. D. C. 324, 135 F.2d 11,57 USPQ 136. (Emphasis added).
Claim(s) 55 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frederiksen (US20120225164) in view of WO2009/075682 to Elvig et al. as applied to claims 1, 50, 56, 59 above, and further in view of WO2019219601.
The teachings of Frederiksen (US20120225164) in view of WO2009/075682 to Elvig are found above.
The references differ from the claimed invention in that they do not teach the pH of claim 55.
WO’601 teaches a mashing process wherein a grist of 100% sorghum is treated with at least an alpha-amylase at a pH of 5.4 to obtain a wort, and having a mashing-off temperature of 80°C and DP4+ dextrin of 9.6, 7.5, and 10.6, thus less than 30% as claimed (ex. 1 and 2, Table 1 and 2, abstract, p. 1, lines 28-p. 2, lines 1-24, p. 3, lines 1-15).
Therefore, before the effective filing date of the claimed invention, a pH at which a mashing process using a grist comprising 100% sorghum adjunct to make wort was known and taught by WO601. Thus, it would have been obvious to a posita to practice the mashing process at a pH of 5.4 in the method of Frederiksen taken with WO682 in light of the teachings of WO601, and a posita would have had a reasonable expectation of successfully obtaining a wort having DP4+ levels as claimed using a 100% sorghum adjunct when mashing at the pH of WO’601.
Claim(s) 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frederiksen (US20120225164, IDS) in view of WO2009/075682 (IDS) to Elvig et al. as applied to claims 1, 50, 56, 59 above, and further in view of WO2005121305 A1 (IDS).
The teachings of Frederiksen (US20120225164) in view of WO2009/075682 to Elvig are found above.
The references differ from the claimed invention in that they do not teach the enzyme amounts of claim 57.
WO305 teaches a method of mashing comprising providing a grist comprising an adjunct and contacting the grist with alpha-amylase and a maltogenic alpha-amylase (p. 1, lines 15-21, p. 5, lines 5-9, 15-30, p. 9, lines 6-37, and claims 1-3) to make a wort which is converted to beer (p. 2, lines 24, 25). WO’305 teaches that the mashing of grist comprises 100% adjunct wherein the adjunct is sorghum (p. 5, lines 26-30).
Regarding claim 57, the reference teaches adding alpha-amylase enzymes (including maltogenic) in amounts ranging from 0.001-1000 mg EP/kg DS, thus, teaching amounts falling within applicants claimed range of 0.02-0.09 mg protein/g grist, as 20 mg EP/kg DS would be 0.02 mg protein/g grist, for example.
Thus, before the effective filing date of the claimed invention, the use of alpha-amylase and a maltogenic alpha-amylase enzymes in a mashing process using a grist comprising 100% sorghum adjunct to make wort was known, and the amount of enzyme for effectively converting the grist to wort is taught by WO305. Thus, it would have been obvious to a posita to use amounts disclosed by the prior art which have shown to successfully degrade starch in a mashing process to product a wort as claimed.
Claim(s) 5, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frederiksen (US20120225164, IDS) in view of WO2009/075682 (IDS) to Elvig et al. as applied to claims 1, 50, 56, 59 above, and further in view of Power et al. (US2009/0117642 A1).
The teachings of Frederiksen (US20120225164) in view of WO2009/075682 to Elvig are found above.
The references do not teach an alpha-amylase having 95% sequence identity to SEQ ID NO:1 according to claims 5, 6.
Power teaches the use of an alpha-amylase enzyme having 100% sequence identity to applicants claimed SEQ ID NO:1 which has improved properties in the processing of grains/starch (including liquefaction of milled whole grains/mash and saccharification processes) and during mash processing in beer making (0004-0008, 0234, 0236, 0428, 0441-0458, 0462-0473). The alpha-amylase enzymes are disclosed to be used in combination with an additional enzyme, including a glucoamylase, in starch degradation methods (0032-0034, 0045, 0047, 0053, 0054, 0428, 0429, 0454, 0455, for example). The starch material is taught to be milo/sorghum (0470).
The enzyme is a variant alpha-amylase comprising an amino acid sequence which is at least 95% identical to parent AmyS-like alpha-amylase and having substitutions or modifications (0010-0020, 0029, 0203, for example). The variant is disclosed to be more thermostable (0207, 0344), improved Ca2+ and oxidation stability (0343-0350).
A sequence search conduct by the Office reveals that SEQ ID NO:4 and 21 have 100% sequence identity to applicants claimed SEQ ID NO:1, SEQ ID NO:5 having 99.9% and SEQ ID NO:2 having 99.8% sequence identity to applicants claimed SEQ ID NO:1. See SEQ ID NO:21 (of US642) below).
Query Match 100.0%; Score 2689; Length 486;
Best Local Similarity 100.0%;
Matches 486; Conservative 0; Mismatches 0; Indels 0; Gaps 0;
Qy 1 AAPFNGTMMQYFEWYLPDDGTLWTKVANEANNLSSLGITALWLPPAYKGTSRSDVGYGVY 60
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 1 AAPFNGTMMQYFEWYLPDDGTLWTKVANEANNLSSLGITALWLPPAYKGTSRSDVGYGVY 60
Qy 61 DLYDLGEFNQKGTVRTKYGTKAQYLQAIQAAHAAGMQVYADVVFDHKGGADGTEWVDAVE 120
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 61 DLYDLGEFNQKGTVRTKYGTKAQYLQAIQAAHAAGMQVYADVVFDHKGGADGTEWVDAVE 120
Qy 121 VNPSDRNQEISGTYQIQAWTKFDFPGRGNTYSSFKWRWYHFDGVDWDESRKLSRIYKFRG 180
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 121 VNPSDRNQEISGTYQIQAWTKFDFPGRGNTYSSFKWRWYHFDGVDWDESRKLSRIYKFRG 180
Qy 181 IGKAWDWEVDTENGNYDYLMYADLDMDHPEVVTELKNWGKWYVNTTNIDGFRLDAVKHIK 240
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 181 IGKAWDWEVDTENGNYDYLMYADLDMDHPEVVTELKNWGKWYVNTTNIDGFRLDAVKHIK 240
Qy 241 FQFFPDWLSYVRSQTGKPLFTVGEYWSYDINKLHNYITKTNGTMSLFDAPLHNKFYTASK 300
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 241 FQFFPDWLSYVRSQTGKPLFTVGEYWSYDINKLHNYITKTNGTMSLFDAPLHNKFYTASK 300
Qy 301 SGGAFDMRTLMTNTLMKDQPTLAVTFVDNHDTEPGQALQSWVDPWFKPLAYAFILTRQEG 360
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 301 SGGAFDMRTLMTNTLMKDQPTLAVTFVDNHDTEPGQALQSWVDPWFKPLAYAFILTRQEG 360
Qy 361 YPCVFYGDYYGIPQYNIPSLKSKIDPLLIARRDYAYGTQHDYLDHSDIIGWTREGVTEKP 420
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 361 YPCVFYGDYYGIPQYNIPSLKSKIDPLLIARRDYAYGTQHDYLDHSDIIGWTREGVTEKP 420
Qy 421 GSGLAALITDGPGGSKWMYVGKQHAGKVFYDLTGNRSDTVTINSDGWGEFKVNGGSVSVW 480
||||||||||||||||||||||||||||||||||||||||||||||||||||||||||||
Db 421 GSGLAALITDGPGGSKWMYVGKQHAGKVFYDLTGNRSDTVTINSDGWGEFKVNGGSVSVW 480
Qy 481 VPRKTT 486
||||||
Db 481 VPRKTT 486
Thus, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to have not only substituted one known alpha-amylase for another and the results would have been predictable and one would have been motivated to use the enzyme of Power in the method of Frederiksen taken with WO’305 because Power teaches that their alpha-amylase variants have improved properties for use in starch liquefaction/mash processes. Thus, the enzymes of Power would have yielded predictable results and resulted in an improved process.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Frederiksen (US20120225164, IDS) in view of WO2009/075682 (IDS) to Elvig et al. as applied to claims 1, 50, 56, 59 above, and further in view of Cramer et al. (US2014/0356922 A1, IDS) and Rezex (Phenomenex, p. 1-16, 2013).
Cramer teaches a method of mashing comprising providing a grist comprising an adjunct and contacting the grist with at least an alpha-amylase (0212, 0213, 0215) having improved properties to be used in brewing processes (0002, 0017, 0026-0030, 0224, 0226, 0235-0239) to produce a wort, which is converted to beer, and wherein mashing takes place at temperatures between 30-75°C (0222). The grist is selected from corn, rice, sorghum and the grist is taught to comprise at least 10% to 100% sorghum (0108-0110, 0228).
Cramer teaches carbohydrate analysis of the wort including DP4+ analysis using HPLC and the Phenomenex RSO oligosaccharide column with isocratic elution and refractive index detection (0366). Cramer does not specifically teach elution at 0.3 ml/min; however, Rezex RSO oligosaccharide columns which are silver cross-linked by Phenomenex for analyzing malto-oligosaccharides (DP1-DP14) with isocratic elution in water at 0.3 ml/min (see Phenomenex, p. 5, 9, 10) were known before the effective filing date, and thus it would have been obvious to a posita to have pursed known options, i.e. HPLC columns having known flow rates, within his or her technical grasp with a reasonable expectation of successfully analyzing/quantifying DP4+ dextrins from the mashing process.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive. Applicants Declaration has been considered but the opinion of inventor Cramer that the combination of alpha-amylase with maltogenic alpha-amylase reflects a synergistic effect specific to the combination relative to alpha-amylase alone or alpha-amylase with glucoamylase.
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
While the Norman (WO305) and Cramer (US922) references are relied upon herein, the rejections have been amended to address applicants claim amendments which are now drawn to maltogenic alpha-amylase and not a glucoamylase.
The examiner will address the arguments directed as cereal cooking in the Norman and Cramer references. Neither of the references teach a cereal cooking step.
Applicants’ arguments directed at unexpected results is not persuasive as new references of record have been applied teaching the use of a maltogenic alpha-amylase and an alpha-amylase in a mashing process which products the claimed DP4+ percentage and Plato degrees.
Conclusion
No claims are allowed. 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 TIFFANY MAUREEN GOUGH whose telephone number is (571)272-0697. The examiner can normally be reached M-Thu 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIFFANY M GOUGH/ Examiner, Art Unit 1651
/MELENIE L GORDON/Supervisory Patent Examiner, Art Unit 1651
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