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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/29/2026 has been entered.
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.
Claim(s) 1, 3-4, 6, 8-9, 16-17, 19, 21-22, 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tegtmeier et al (US 2019/0136168 A1) in view of Kolomitsyn et al (US 20140264157 A1).
Andygreelaw.com is relied upon as evidence of the alcohol content of vodka, rum and gin.
Claim 1 recites the following limitations:
A method for making an alcoholic beverage, the method comprising:
distilling a liquor prepared from malted or non-malted grain or other starch-containing or sugar-containing plant material and comprising alcohol to form a distilled liquor; and
contacting the distilled liquor with peat dry matter comprising granulated peat, wherein the granulated peat comprises peat processed in a low-oxygen environment at an elevated temperature of up to 1000 °F, wherein the alcoholic beverage has an alcohol content in a range of 35 vol-% to 75 vol-%,
and wherein the peat dry matter comprises 50 wt-% or less of inorganic carbon on a dry weight basis.
In regard to claims 1, 17 and 22, Tegtmeier et al discloses contacting distilled liquor such as vodka, rum or gin with activated charcoal made from peat ([0025), [0022]).
Tegtmeier et al discloses liquors that underwent fermentation and further distillation:
[0019] One advantage of this disclosure is the adsorbing of fermentation byproducts in a liquor without removing the byproducts or the adsorbing agent. The liquor distillation and fermentation processes commonly results in the presence of byproducts or contaminants. Fusel alcohols (or fusel oils) are by-products of fermentation. Fusel alcohol is primarily amyl alcohol. These fusel alcohols may contribute to hang over symptoms after imbibing the spirits containing the fusel alcohols. Other byproducts of the fermentation process may also contribute to the hangover effect. For example, congeners such as acetone, acetaldehyde, tannins and other higher alcohols (e.g. propanol and glycols) may contribute to the hangover of someone who has consumed the liquor.
It is further noted that Tegtmeier et al discloses contacting distilled liquor such as vodka, rum or gin with activated charcoal made from peat ([0025), [0022]). Vodka, rum or gin are distilled liquors. Therefore, by teaching vodka, rum or gin, Tegtmeier et al inherently discloses “distilling a liquor prepared from malted or non-malted grain or other starch-containing or sugar-containing plant material and comprising alcohol to form a distilled liquor” as claimed.
In regard to the recitation of “peat comprises peat processed in a low-oxygen environment at an elevated temperature of up to 1000 °F”, Tegtmeier et al discloses that “[a]ctivated charcoal, charcoal that has been activated for adsorption by steaming or by heating in a vacuum”. Hence, Tegtmeier et al discloses that “peat comprises peat processed in a low-oxygen environment at an elevated temperature”. Tegtmeier et al does not discloses specific temperature range that is employed in the production of charcoal. Tegtmeier et al does not discloses granulated peat charcoal.
Kolomitsyn et al discloses a process for the preparation from a partially decomposed organic material like peat a granulated or pelletized sorption medium (Abstract). Kolomitsyn et al discloses the following production process for thermally-activated sorption material:
[0059] The process for preparing the sorption medium product 10 of the present invention is depicted in FIG. 1 where peat is used as the starting partially decomposed organic material 12. A variety of different types of peat may be used for purposes of this invention, including without limitation, reed sedge, sphagnum peat, high moor peat, transitional moor, and low moor peat. The peat material should be dug from the ground and used in its natural state without any further decomposition process steps. It may, however, be cleaned to remove sticks, stones, and other foreign debris from the fibrous peat material.
[0060] Next, the peat material 12 is adjusted for acidity to a pH range of about 6.4-7.0.
[0061] The substantially neutralized peat material 14 is then introduced to a granulating machine 16, such as one sourced from Andritz, Inc. of Bellingham, Wash. The loose, substantially neutralized fibrous peat material 14 will be tossed around inside the drum of the granulator to cause the fibers to adhere to each other, and build up granules of desired size. A binder additive like lignosulfonate may be optionally added to the peat material in the granulator drum to assist this granulation process.
[0063] Next, the peat granules or pellets 16 are sent to a dryer 18 such as a belt or rotary dryer sourced from Harris Group of Atlanta, Ga. Using direct heat, the peat granules or pellets will travel through the length of the dryer having an inlet temperature of about 400°C and an outlet temperature of about 80°C, so that the natural 40% wt moisture level of the peat material contained in the peat granules or pellets will be reduced to about 10-14% wt moisture. Thus, this drying step 18 should be carried out across a temperature range of about 80-400°C with the preferred temperature of exposure being about 90°C for about 45 minutes.
[0064] The resulting dried peat granules or pellets are then crushed and screened to an appropriate size of about 6 mesh.times.30 mesh to 30.times.100 mesh.
[0065] The dried peat granules or pellets 18 are then introduced to a thermal activation step 20, also known as "torrefaction." The peat granule or pellet is put in a jacketed ribbon mixer that has thermal fluid like oil circulating through the jacket. The ribbons are fitted with "lifters," which pick up the granular peat and drop it through the atmosphere inside the ribbon mixer. This exposure to the hot, inert atmosphere is critical to bringing the granule up to temperature as quickly as possible.
[0072] This thermal activation process step 20 should preferably be conducted at a temperature inside the activator of about 175-287°C, preferably 200-275°C, more preferably 250°C, and a time period of about 25-90 minutes, preferably 30-60 minutes, for achieving maximum granule hardness.
Kolomitsyn et al discloses that production of activated carbon pellets/granules from peat is well-known in the art ([0019], [0025]).
Tegtmeier et al discloses contacting distilled liquor such as vodka, rum or gin with activated charcoal made from peat. Tegtmeier et al does not disclose specific method steps and conditions involved in the production of activated peat charcoal. Kolomitsyn et al discloses “[a] process for the preparation from a partially decomposed organic material like peat a granulated or pelletized sorption medium using low-temperature, thermal activation of the sorption medium to produce a high degree of granule or pellet hardness balanced against an efficacious level of ion-exchange and adsorption capacity, followed by chemical treatment of the thermally-activated sorption material via an acid solution and a salt solution to increase its ion-exchange and adsorption performance while minimizing the transfer of natural impurities found in the sorption medium to an aqueous solution is provided by this invention” (Abstract). Kolomitsyn et al discloses that the sorption medium of this invention can be used in a variety of aqueous solution treatment processes (Abstract). Kolomitsyn et al discloses that thermal activation process step is conducted at a temperature inside the activator of about 175-287°C (347-548.6 F), preferably 200-275°C (392-527 F), more preferably 250°C (482 F), and a time period of about 25-90 minutes, preferably 30-60 minutes, for achieving maximum granule hardness ([0072]). As stated above, Tegtmeier et al discloses “[a]ctivated charcoal, charcoal that has been activated for adsorption by steaming or by heating in a vacuum” from peat. Hence, both references discloses activated dried peat material obtained by heating. One of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Kolomitsyn et al and to employ activation temperatures of 175-287°C as suggested by Kolomitsyn et al and activation in the inert atmosphere as suggested by Kolomitsyn et al, since Tegtmeier et al also teaches activation of dried peat material in low-oxygen atmosphere. One of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Kolomitsyn et al and to employ granulated activated peat carbon, since production of activated carbon pellets/granules from peat was well-known in the art.
In regard to the recitation of “wherein the alcoholic beverage has an alcohol content in a range of 35 vol-% to 75 vol-%” (claims 1 and 17) and alcohol at a concentration of 40 vol-% or greater (claim 21), it is noted that Tegtmeier et al discloses distilled liquor such as vodka, rum or gin. It is well known that the alcoholic content of these beverages is within the claimed range. As evidenced by andygreelaw.com, the alcohol by volume of popular vodka, rum or gin is around 40% by volume (ABV):
Vodka
Grey Goose ABV: 40%, 80 ProofBelvedere ABV: 40%, 80 ProofCiroc ABV: ABV: 40%, 80 ProofStolichnaya (Stoli) ABV: 40%, 80 ProofAbsolut ABV: 40%, 80 ProofSkyy ABV: 40%, 80 ProofSvedka ABV: 40%, 80 ProofSmirnoff ABV: 40%, 80 ProofPinnacle ABV: 40%, 80 ProofBurnetts ABV: 40%, 80 Proof
Gin
Bombay ABV: 47%, 94 ProofHendricks ABV: 44%, 80 ProofSeagrams ABV: 40%, 80 ProofGordon’s ABV: 37.5%, 75 ProofTanqueray London ABV: 47.3%, 94.6 ProofNew Amsterdam ABV: 40%, 80 ProofBeefeater ABV: 40%, 80 ProofPlymouth ABV: 41.2%, 82.4 ProofGenevieve ABV: 47.3%, 94.6 ProofFleischmann’s Extra Dry ABV: 40%, 80 Proof
Rum
Captain Morgan ABV: 35%, 70 ProofMalibu ABV: 21%, 42 ProofAppleton Estates Extra ABV: 40%, 80 ProofCacique Antiguo Extra-Aged ABV: 40%, 80 ProofBrugal Añejo ABV: 43%, 86 ProofMcDowell’s No. 1 Celebration ABV: 40%, 80 ProofBacardi Superior ABV: 40%, 80 ProofContessa ABV: 40%, 80 ProofHavana Club Añejo 7 Year Old ABV: 40%, 80 ProofMontilla Premium ABV: 40%, 80 Proof
Therefore, by disclosing vodka, rum or gin, Tegtmeier et al meets the limitation of “wherein the alcoholic beverage has an alcohol content in a range of 35 vol-% to 75 vol-%”.
Claims 1 and 17 have been amended to include the recitation of “wherein the peat dry matter comprises 50 wt-% or less of inorganic carbon on a dry weight basis”, previously recited in claims 5 and 20, now canceled. According to the instant specification, “[t]he term “inorganic carbon” is used in this disclosure to describe elemental carbon (e.g., graphite and carbon black) and various inorganic carbon species. Inorganic carbon may be the product of carbonization. Activated carbon and charcoal are understood to contain high amounts of inorganic carbon, such as 50 wt-% or greater or 75 wt-% or greater” ([0010]). According to the instant specification, activated carbon and charcoal are understood to contain 50 wt-% of inorganic carbon. Tegtmeier et al discloses activated charcoal made from peat ([0025), [0022]). According to the instant specification, Tegtmeier et al discloses activated carbon and charcoal with a content of inorganic carbon of 50 wt-%. Hence, Tegtmeier et al meets the limitation of the peat dry matter comprises 50 wt-% or less of inorganic carbon on a dry weight basis” as recited in claims 1 and 17, because ye numerical point of 50 wt-% is within the claimed range.
Further in regard to the concentration of inorganic carbon recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claims 3, 4 and 19, Tegtmeier et al discloses activated charcoal (Abstract) from peat ([0025]). Therefore, Tegtmeier et al discloses dried at least partially charred peat.
In regard to the recitations of the presence of peat flavor in claim 16, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the presence of peat flavor among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claim 6, Tegtmeier et al discloses reducing the moisture of peat from 40% wt moisture level of the peat material contained in the peat granules or pellets to about 10-14% wt moisture:
[0063] Next, the peat granules or pellets 16 are sent to a dryer 18 such as a belt or rotary dryer sourced from Harris Group of Atlanta, Ga. Using direct heat, the peat granules or pellets will travel through the length of the dryer having an inlet temperature of about 400.degree. C. and an outlet temperature of about 80.degree. C., so that the natural 40% wt moisture level of the peat material contained in the peat granules or pellets will be reduced to about 10-14% wt moisture.
In regard to claim 8, Tegtmeier et al discloses contacting distilled liquor with peat charcoal for more than one second: Tegtmeier et al discloses that contacting distilled beverage with charred peat (i.e. charcoal) significantly improves quality and organoleptic properties of such beverage:
[0016] The flavor of alcohol can be improved by adding activated charcoal to the alcohol. The activated charcoal does not need to be removed. Instead of acting as a filter, the charcoal may sequester the impurities and improve the taste by preventing the impurities from being tasted by the consumer. The alcohol and the activated charcoal may then be bottled together to form an alcoholic beverage.
[0017] Adding particulate charcoal will change the color of a transparent liquor or spirit. Since the activated charcoal is insoluble, over time the activated charcoal will fall out of suspension and accumulate at the bottom. When the bottle is agitated the activated charcoal will return to suspension, like a snow globe.
[0020] The activated powdered charcoal may adsorb the fusel alcohol, congeners, or other byproducts present in the liquor. In this way, the presence of the activated charcoal enhances the flavor of the liquor and prevents side affects associated with the consumption of the fusel alcohols, congeners, or byproducts by preventing their absorption into the body of the person consuming the liquor.
In regard to claim 9, it is noted that peat charcoal will get separated from distilled liquor upon the distilled liquor consumption.
In regard to claims 24 and 25, Kolomitsyn et al discloses hardness greater than 50%:
[0076] The degree of granule hardness for the resulting thermally-activated peat granule 22 of the present invention should have a Ball-Pan Hardness number of about 75-100%. More preferably, this Ball-Pan Hardness number should be about 80-98%. Depending upon the specific end-use application for the peat granule 22, a person skilled in an will be able to determine the necessary hardness value falling within this range.
Claim(s) 7 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Tegtmeier et al (US 2019/0136168 A1) in view of Kolomitsyn et al (US 20140264157 A1) as applied to claim 1 above and further in view of Gross, II et al (US 20010018086 A1).
In regard to claim 11-13, Gross, II et al discloses aging of distilled alcoholic beverage with wood prior and after contacting with granulated plant material:
[0017] The present invention may be described in certain aspects, therefore, as a method of maturing a beverage, the method including combining an unaged, or partially aged beverage, and a wood product, and processing said beverage in conditions effective to produce a mature beverage. The invention may also be described as a method of maturing a beverage that includes combining an unaged or partially aged beverage, ethyl acetate, and a wood product; and aging the beverage in conditions effective to produce a mature beverage and wherein the wood product is prepared by the process of comminuting raw, untreated wood into granules, heating the granules to a temperature of from about 100.degree. C. to about 240.degree. C. for a period of at least one hour, contacting the granules with a solution of aqueous ethanol containing from about 50% to about 95% ethanol at a temperature of up to about 55.degree. C., separating the granules from the solution, and heating the granules to a temperature of up to about 220.degree. C. for a period of at least about 15 minutes.
[0020] A wood product as used in the practice of the present invention may be any suitable wood product, and is preferably a charred wood product, and more preferably a comminuted, charred wood product, and more preferably a wood product produced by a process including comminuting raw, untreated wood into particles or granules; heating the granules to a temperature of from about 100.degree. C. to about 240.degree. C. for a period of at least one hour; contacting the granules with a solution of aqueous ethanol containing from about 20% to about 95% ethanol at a temperature of up to about 55.degree. C.; separating the granules from the solution; and heating the granules to a temperature of up to about 220.degree. C. for a period of at least about 15 minutes. A particularly preferred product is a wood product described in co-pending and commonly assigned U.S. patent application Ser. No. 09/449,927, incorporated herein by reference with respect to its description of such product, its characteristics, its method of manufacture, and its basic utility. The product so referenced is produced commercially as e.g., the Allegro.TM. wood product produced and sold by Kairos Corporation.
[0029] A further aspect of the present invention is a beverage flavor transfer cartridge as described above, and configured to fluidly connect into a beverage maturation processing system, wherein the cartridge contains a beverage aging wood product in an amount effective to mature a predetermined amount of unaged, or partially aged beverage. In preferred embodiments the cartridge contains a wood product that is prepared by a process comprising comminuting raw, untreated wood into granules; heating the granules to a temperature of from about 100.degree. C. to about 240.degree. C. for a period of at least one hour; contacting the granules with a solution of aqueous ethanol containing from about 50% to about 95% ethanol at a temperature of up to about 55.degree. C.; separating the granules from the solution; and heating the granules to a temperature of up to about 220.degree. C. for a period of at least about 15 minutes.
Claim 1. A process for accelerating the maturation of an unaged or partially aged beverage comprising: (a) determining a target concentration of ethyl acetate for the product of said maturation; (b) providing an unaged or partially aged beverage with from about 1/2 to about 21/2 grams/100 PL of ethyl acetate in excess of said target concentration; (c) flowing said beverage of step (b) through a closed system wherein said closed system comprises a beverage aging wood product such that a beverage passing through said system contacts said wood product; and (d) processing said beverage in the presence of oxygen for a period of time sufficient to produce a matured beverage; wherein said beverage-aging wood product is prepared by the process of: (i) comminuting raw, untreated wood into granules; (ii) heating said granules to a temperature of from about 100.degree. C. to about 240.degree. C. for a period of at least one hour; (iii) contacting the granules with a solution of aqueous ethanol containing from about 50% to about 95% ethanol at a temperature of up to about 55.degree. C.; (iv) separating the granules from the solution; and (v) heating the granules to a temperature of up to about 220.degree. C. for a period of at least about 15 minutes.
Claim 19. A cartridge of claim 18, wherein said wood product is prepared by a process comprising: (a) comminuting raw, untreated wood into granules; (b) heating said granules to a temperature of from about 100.degree. C. to about 240.degree. C. for a period of at least one hour; (c) contacting the granules with a solution of aqueous ethanol containing from about 50% to about 95% ethanol at a temperature of up to about 55.degree. C.; (d) separating the granules from the solution; and (e) heating the granules to a temperature of up to about 220.degree. C. for a period of at least about 15 minutes.
Hence, one of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Gross, II et al and to perform aging of distilled alcoholic beverage with wood prior and after contacting with granulated plant material.
In regard to claim 7, Tegtmeier et al does not disclose that peat is arranged in a filter cartridge. Gross, II et al discloses a process for producing distilled spirit that is aged in contact with wood (Abstract). Gross, II et al discloses that comminuted wood may be contained in cartridge and that distilled spirit circulated through a flavor transfer cartridge containing a comminuted wood product ([0013]). In regard to the advantages of using the cartridge, Gross, II et al discloses:
[0025] In certain preferred embodiments, the wood product containing device is an interchangeable cartridge, preferably a stainless steel cartridge that is configured to be temporarily placed in the closed system for use in maturing a single batch or run of the unaged beverage. By interchangeable is also meant that one cartridge may used and then removed from the system without affecting any of the other components. Subsequently another cartridge may be added in its place for the next run. In this way, the system may be set up in a permanent location and used for the aging of many different beverages. A particular cartridge would then be designed for each individual beverage to be aged, and placed into the system for that particular run.
Hence, one of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Gross, II et al and to place dry peat material in a cartridge as disclosed by Gross, II et al in order to easily remove the peat material from the distilled beverage at any desired moment without affecting any of the other components or to further use it to contact other batch of the distilled beverage.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tegtmeier et al (US 2019/0136168 A1) in view of Kolomitsyn et al (US 20140264157 A1) as applied to claim 1 above and further in view of Jacobs et al (US 2946687 A).
Tegtmeier et al does not discloses how exactly distilled beverages where prepared how the alcohol content was adjusted. Jacobs et al discloses preparation of vodka by diluting 110 proof alcoholic mixture with water in order to provide 80-proof vodka (Col. 5 lines 53-55). One of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Jacobs et al and to first provide a distilled liquor having alcohol content above 50% by volume (110 proof) and then further dilute with water in order to provide 40% by volume (80-proof) vodka.
Response to Arguments
Applicant's arguments filed 01/29/2026 have been fully considered but they are not persuasive.
In response to Applicant’s arguments regarding the combination of Tegtmeier et al (US 2019/0136168 A1) in view of Kolomitsyn et al (US 20140264157 A1), it is noted that Tegtmeier et al discloses contacting distilled liquor such as vodka, rum or gin with activated charcoal made from peat. Tegtmeier et al does not disclose specific method steps and conditions involved in the production of activated peat charcoal. Kolomitsyn et al discloses “[a] process for the preparation from a partially decomposed organic material like peat a granulated or pelletized sorption medium using low-temperature, thermal activation of the sorption medium to produce a high degree of granule or pellet hardness balanced against an efficacious level of ion-exchange and adsorption capacity, followed by chemical treatment of the thermally-activated sorption material via an acid solution and a salt solution to increase its ion-exchange and adsorption performance while minimizing the transfer of natural impurities found in the sorption medium to an aqueous solution is provided by this invention” (Abstract). Kolomitsyn et al discloses that the sorption medium of this invention can be used in a variety of aqueous solution treatment processes (Abstract). Kolomitsyn et al discloses that thermal activation process step is conducted at a temperature inside the activator of about 175-287°C (347-548.6 F), preferably 200-275°C (392-527 F), more preferably 250°C (482 F), and a time period of about 25-90 minutes, preferably 30-60 minutes, for achieving maximum granule hardness ([0072]). As stated above, Tegtmeier et al discloses “[a]ctivated charcoal, charcoal that has been activated for adsorption by steaming or by heating in a vacuum” from peat. Hence, both references discloses activated dried peat material obtained by heating. One of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Kolomitsyn et al and to employ activation temperatures of 175-287°C as suggested by Kolomitsyn et al and activation in the inert atmosphere as suggested by Kolomitsyn et al, since Tegtmeier et al also teaches activation of dried peat material in low-oxygen atmosphere. One of ordinary skill in the art would have been motivated to modify Tegtmeier et al in view of Kolomitsyn et al and to employ granulated activated peat carbon, since production of activated carbon pellets/granules from peat was well-known in the art.
In response to Applicant’s arguments regarding the Declaration of PHILIP JOSEPH STEGER under 37 C.F.R. 1.132 filed 01/29/2026, it is noted that declaration does not provide comparison to the closest prior art of record (i.e. Tegtmeier et al (US 2019/0136168 A1)) teaching contacting distilled liquor such as vodka, rum or gin with activated charcoal made from peat. Applicant had provided the data showing the treatment of whiskey by filtering through peat dry matter comprising granulated peat.
The instant claims are directed to contacting the distilled liquor with peat dry matter comprising granulated peat, wherein the granulated peat comprises peat processed in a low-oxygen environment at an elevated temperature of up to 1000 °F, wherein the alcoholic beverage has an alcohol content in a range of 35 vol-% to 75 vol-%, and wherein the peat dry matter comprises 50 wt-% or less of inorganic carbon on a dry weight basis. The Declaration does not show that peat dry matter comprising granulated peat was processed in a low-oxygen environment at an elevated temperature of up to 1000 °F and comprises 50 wt-% or less of inorganic carbon on a dry weight basis. The Declaration does not show the treatment of any distilled liquor prepared from malted or non-malted grain or other starch-containing or sugar-containing plant material. The Declaration only provides data related to treatment of whiskey. Applicant have not provided direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims.
Applicants’ attention is further directed to the following passages in the MPEP:
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276, 182 USPQ 290, 293 (CCPA 1974), the court held that unexpected results for a claimed range as compared with the range disclosed in the prior art had been shown by a demonstration of "a marked improvement, over the results achieved under other ratios, as to be classified as a difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152 USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of ‘differences in degree’ as compared to ‘differences in kind’ . . . to have very little meaning in a relevant legal sense").
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (Applicant alleged unexpected results with regard to the claimed soybean plant, however there was no basis for judging the practical significance of data with regard to maturity date, flowering date, flower color, or height of the plant.). See also In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) and In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) as discussed in MPEP § 716.02(c).
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) - § 716.02(e). See In re Blondel, 499 F.2d 1311, 1317, 182 USPQ 294, 298 (CCPA 1974) and In re Fouche, 439 F.2d 1237, 1241-42, 169 USPQ 429, 433 (CCPA 1971) for examples of cases where indirect comparative testing was found sufficient to rebut a prima facie case of obviousness.
Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978).
Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant’s evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791