DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (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) 1-2, 5 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anglerot (US 5,308, 631) in view of Shigeki Suzuki et al (JPH01165365).
In regard to claims 1 and 21, Anglerot discloses:
The process of obtaining a natural beer aromas, consisting of:
(a) bringing into contact an alcoholic beer and a hydrophobic zeolite with an Si:Al ratio higher than 12 to separate said beer into an aqueous eluent phase and an adsorbed product phase;
(b) separating the aqueous eluent phase from the adsorbent;
(c) thermally desorbing the adsorbed products on said adsorbent; and
(d) separating the desorbed phase into an alcoholic distillate phase and an aqueous phase, said aqueous phase constituting the concentrate of natural beer aromas (Claim 10).
Hence, Anglerot discloses flavor composition by decreasing or removing water and ethanol from a strong alcoholic flavor composition, the method comprising the steps of treating the flavor composition by a dehydration process ((b) separating the aqueous eluent phase from the adsorbent) and dealcoholization process ((d) separating the desorbed phase into an alcoholic distillate phase).
Claim 1 has been amended to include the limitations of claims 3 and 6. Claim 1 now includes the limitation of “wherein the strong alcoholic flavor composition comprises ethanol in an amount of at least 40% by weight”. Anglerot discloses production of a flavor/aroma extract from beer In the background of the invention section, Anglerot discloses alcohol content of up to 10 % (Col. 1 lines 25-26). Anglerot does not discloses alcohol content as recited “in an amount of at least 40% by weight”. Shigeki Suzuki et al discloses production of a “nearly uniformly concentrate flavor ingredients of malt whiskey” (Abstract). More specifically, Shigeki Suzuki et al discloses:
More specifically, the present invention relates to a method for efficiently producing whiskey flavor components by treating unprocessed whiskey or its treated liquid with a reverse osmosis membrane.
According to the method of the present invention, the flavor components of whiskey are almost uniformly concentrated and an excellent flavor liquid is obtained, so that by using this, it is possible to impart a rich flavor to alcoholic beverages with various alcohol concentrations.
Shigeki Suzuki et al further discloses the embodiment of unprocessed sake having 59.90% alcohol (see the reference to Fig.1 in machine translation).
Both references disclose production of a flavor/aroma component from alcoholic beverages. One of ordinary skill in the art would have been motivated to modify Anglerot in view of Shigeki Suzuki et al and to employ whiskey or unprocessed sake having 59.90% alcohol ( i.e. alcoholic beverages having higher alcoholic concentration) as a raw material for removal of water and alcohol in order to obtain desired flavor/aroma composition.
Further in regard to the concentration 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).
Claim 1 has been amended to include the limitations of claim 6. Claim 1 now includes the limitation of “wherein the amount of water and ethanol from the strong alcoholic flavor composition is reduced in said strong alcoholic flavor composition by a factor of at least 60”.
Anglerot discloses the process of obtaining a natural beer aromas, consisting of:
(a) bringing into contact an alcoholic beer and a hydrophobic zeolite with an Si:Al ratio higher than 12 to separate said beer into an aqueous eluent phase and an adsorbed product phase;
(b) separating the aqueous eluent phase from the adsorbent;
(c) thermally desorbing the adsorbed products on said adsorbent; and
(d) separating the desorbed phase into an alcoholic distillate phase and an aqueous phase, said aqueous phase constituting the concentrate of natural beer aromas (Claim 10).
Hence, Anglerot discloses removal of water fraction from adsorbent and then further separation of alcoholic phase from the aromatic phase.
Further in regard to the recitation of “wherein the amount of water and ethanol from the strong alcoholic flavor composition is reduced in said strong alcoholic flavor composition by a factor of at least 60”, 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 level of reduction of water and ethanol 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 2, Anglerot discloses aromatic aqueous extract:
This is best shown in FIG. 3 in which the desorption of the alcoholic and aromatic products trapped in the hydrophobic zeolite in column 1 is performed by elution or heating. Elution can be performed with a solvent, but it is then necessary to subsequently separate out this solvent. A good method is comprised of using supercritical CO.sub.2 and recovering the alcohols and aromas by expansion. It is also possible to eluate using a hot gas with the condition, however, that the gas be free from oxygen. It is preferable to perform thermal desorption with carbon dioxide G' at a temperature of circa 150.degree. C. passed into column 1. Upon discharge from column 1, the charged gas passes into a separator 2 from the head of which is discharged the alcohol which is recovered in tank C and from the bottom of which is collected an aromatic aqueous extract which is stored in tank 3. This extract is particularly fragrant and has a characteristic beer smell. It is an aqueous phase that contains, among other substances, light aromas, .beta.-phenylethanol and isoamyl alcohol (Col 3 lines 37-56).
In regard to claim 5, Anglerot discloses “[t]he process comprises bringing into contact a naturally alcoholic beer with a hydrophobic zeolite, separating the aqueous eluent phase from the adsorbent, thermally desorbing the adsorbed products, recovering the desorbed phase and separating it by distillation into an alcoholate and an aromatized phase” (Abstract). Hence, Anglerot discloses separation of alcohol by distillation, i.e. dealcoholization process is a distillation process.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anglerot (US 5,308, 631) in view of Shigeki Suzuki et al (JPH01165365) as applied to claim 1 above and further in view of dealcoholization.zohosites.com (https://dealcoholization.zohosites.com/dealcoholisation-technologies).
In regard to claim 22, Anglerot discloses separation of alcohol by distillation. Anglerot does not explicitly disclose vacuum distillation. Dealcoholization.zohosites.com discloses vacuum distillation as a suitable technique for alcohol separation in alcoholic beverages:This involves consist in separating the alcohol and the aromas from the product (wine, beer, spirits) by means of a distillation principle.
By evacuating the plant, the boiling point of volatile compounds - such as alcohol or aromas - is lowered, allowing the product to be heated to between 35°C and 50°C only.
A flow of steam from the bottom of the column captures the vaporized volatile compounds and a condenser then cools them down to recover them in a liquid phase. The rest of the product, which is in liquid form, falls to the bottom of the column by gravity and is then recovered, free of its aromas and alcohol.
There is then - depending on the manufacturer - an option to separate the aromas from the alcohol in order to reincorporate them into the dealcoholized product.
Dealcoholization.zohosites.com discloses the following advantages of vacuum distillation:
1. Product quality: with this technology, it is possible to separate alcohol with an alcohol content of up to 95% by volume, without dragging other elements from the initial product and without the addition of external elements. It is also possible to separate the aromas and then put them back into the dealcoholised product.
2. Economical & Ecological: There is no use of water, no oxygen intake and the energy efficiency is very high.
3. Low Maintenance: Maintenance is very low because there are no moving parts and very few consumable parts.
4. Low Losses : Losses are minimal, especially due to alcohol rectification and aroma recovery.
5. Optimized process time: The separation of essences and alcohol is done in a single step and therefore does not affect the process time.
6. Dealcoholisation performance: It is possible to dealcoholise the product up to 0.02% vol. In case of an alcohol adjustment of 2% vol. only 20% of the wine will be treated, which will reduce the process time but also protect the 80% left.
Hence one of ordinary skill in the art would have been motivated to modify Anglerot in view of dealcoholization.zohosites.com and to employ vacuum distillation for alcohol separation based on the multiple advantages as disclosed by dealcoholization.zohosites.com. Vacuum distillation allows for very low temperature heating that avoid boiling out of desired aroma compounds.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anglerot (US 5,308, 631) in view of Shigeki Suzuki et al (JPH01165365) as applied to claim 1 above and further in view of Jinming Lu et al (CN 101721920).
In regard to claim 4, Jinming Lu et al discloses method for dehydrating furfural by the pervaporation of a NaA zeolite molecular sieve membrane. Anglerot discloses a method for water removal by contacting al alcoholic beer and a hydrophobic zeolite having Si:Al ratio above 12 to separate the beer into aqueous and eluent phase from adsorbent. Jinming Lu et al discloses a method for pervaporation of NaA zeolite membrane to remove water from furfural, performed with NaA zeolites (Abstract). One of ordinary skill in the art would have been motivated to modify Anglerot in view of Jinming Lu et al and to employ zeolite membrane as a known technique for water removal.
Response to Arguments
Applicant's arguments filed 07/10/2025 have been fully considered but they are not persuasive.
The rejection of claims under 35 U.S.C. 102 has been withdrawn in light of the amendment of claim 1.
In response to Applicant’s argument on page 7 of the Reply, it is noted that Anglerot discloses the process of obtaining a natural beer aromas, consisting of:
(a) bringing into contact an alcoholic beer and a hydrophobic zeolite with an Si:Al ratio higher than 12 to separate said beer into an aqueous eluent phase and an adsorbed product phase;
(b) separating the aqueous eluent phase from the adsorbent;
(c) thermally desorbing the adsorbed products on said adsorbent; and
(d) separating the desorbed phase into an alcoholic distillate phase and an aqueous phase, said aqueous phase constituting the concentrate of natural beer aromas (Claim 10).
Hence, Anglerot discloses removal of water fraction from adsorbent and then further separation of alcoholic phase from the aromatic phase.
Further in regard to the recitation of “wherein the amount of water and ethanol from the strong alcoholic flavor composition is reduced in said strong alcoholic flavor composition by a factor of at least 60”, 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 level of reduction of water and ethanol 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.
Applicant has not provided any evidence showing that the process as disclosed by Anglerot does not achieve the claimed result of water and ethanol reduction as claimed.
Applicant’s argument regarding claims 4 and 22 on pages 7-8 of the Reply have been fully considered but they are not persuasive for the reasons as stated above.
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 VERA STULII whose telephone number is (571)272-3221. The examiner can normally be reached Monday-Friday 5:30AM-3:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/VERA STULII/Primary Examiner, Art Unit 1791