DETAILED ACTION
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 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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 8, 10, 12 – 14, 16, and 22 – 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant has amended claim 1 to now recite there would be a hydrophobic aroma component 1 and a hydrophobic aroma component 2, that said component 2 can be the same as or different from said component 1, and that each of said components would be present relative to the total volume of the beverage in amount between 0.1 to 1.0 g/L.
While applicant has support in paragraph [0018] of the specification for the hydrophobic aroma component to be a single component or a combination of two components as now recited in claim 1, there is no support in applicant’s specification for hydrophobic aroma component 1 and hydrophobic aroma component 2 to be present relative to the total volume of the beverage in the amount of 0.1 to 1.0 g/L. As recited in paragraph [0029] of applicant’s specification it is the hydrophobic liquid composition that may be present in the amount of 0.1 to 1.0 g/L and not the hydrophobic aroma component alone of said composition. Paragraph [0026] of applicant’s specification specifically recites that besides said aroma component the hydrophobic liquid composition would also contain other components as well such as oil-soluble solvents and other substances. Therefore the new limitations that “an amount of the hydrophobic aroma component 1 relative to the total volume of the beverage is 0.1 to 1.0 g/L, and an amount of the hydrophobic aroma component 2 relative to the total volume of the beverage is 0.1 to 1.0 g/L” are seen to constitute an issue of new matter and as such must be deleted.
Claims 2 - 8, 10, 12 – 14, 16, and 22 – 24 are rejected based on their dependence to a rejected claim.
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.
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.
Claims 1, 2, 4 – 8, 12 – 14, 16, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Miura JP 4818593 in view of Kawamoto et al. US 2013/0101724.
Regarding claims 1, 16, and 24, Miura discloses a packaged beverage (airtight container) (paragraph [0020]) (bottle) (paragraph [0090]) comprising an edible aqueous solution (lemon juice) (paragraph [0040]) and a hydrophobic droplet containing a hydrophobic aroma component (essential oil) (paragraph [0047]) (lemon oil) (paragraph [0056]) where the aqueous solution and the hydrophobic droplet are separated (trace which was unevenly distributed in this surface layer) (paragraph [0030]) and the edible aqueous solution comprises an emulsifier (paragraph [0026]) and a hydrophobic aroma component (essential oil) (paragraph [0047]). Further, Miura discloses that the hydrophobic component would both be uniformly dispersed to the in the edible aqueous solution (uniformly dispersed/distributed to the whole drink) as well as the hydrophobic droplet would be at the same time separated (trace which was unevenly distributed in this surface layer) which is to say that Miura is disclosing that said hydrophobic aroma components 1 and 2 would be the same, that is the hydrophobic aroma component would comprise both components 1 and 2. In example 4 Miura discloses 2g of a hydrophobic aroma component (lemon oil) would be added to 100g of a lemon juice which would form a hydrophobic liquid composition. 4g of said composition was added to 1 litre of beverage which is seen to provide an amount of the hydrophobic aroma component relative to the total volume of the beverage of 0.08 g/L (paragraph [0093]).
Claim 1 differs from Miura in the amount of the hydrophobic aroma component 1 and hydrophobic aroma component 2 relative to the total volume of the beverage is 0.1 g/L to 1.0 g/L.
Kawamoto discloses a packaged beverage (glass bottle) (paragraph [0056]) comprising an edible aqueous solution (orange juice) (paragraph [0052]) and a hydrophobic droplet containing a hydrophobic aroma component (essential oil) (paragraph [0045]) (orange oil) (paragraph [0032]) where the aqueous solution and the hydrophobic droplet are separated (water soluble soybean polysaccharide, yellow mass of essential oil) (example 1, table 1, and table 2) and the edible aqueous solution comprises an emulsifier (paragraph [0054]) and a hydrophobic aroma component (essential oil) (paragraph [0045]). Kawamoto discloses the amount of hydrophobic aroma component relative to a total volume of the beverage would be 0.1 g/L to 1.0 g/L (0.01 to 1.0 mL in a 1 L finished beverage) (paragraph [0030]) and that this amount of said aroma component would be optimal to create a fresh and high impact flavour of an essential oil-derived better taste (paragraph [0030]) as well as a strongly perceived fresh and high-impact aroma of the essential oil at the time of drinking the beverage (paragraph [0045]). Kawamoto is providing the hydrophobic droplet containing a hydrophobic aroma component in an amount relative to the total volume of the beverage as 0.1 g/L to 1.0 g/L for the art recognized function of create a fresh and high impact flavour of an essential oil-derived better taste as well as a strongly perceived fresh and high-impact aroma of the essential oil at the time of drinking the beverage all of which are applicant’s reasons for doing so as well. To therefore modify Miura and provide hydrophobic aroma component 1 and hydrophobic aroma component 2 where said components 1 and 2 are the same and in an amount relative to the total volume of the beverage as 0.1 g/L to 1.0 g/L as taught by Kawamoto would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
In the event that applicant would say that the edible aqueous solution and the hydrophobic aroma component would not be separated it is to be noted that Miura in view of Kawamoto discloses that terpenes would allow an oil float in citrus oil, in this case the hydrophobic aroma components (‘593, paragraph 0007]) and that while the terpenes of the hydrophobic aroma component would be “removed as much as possible” (‘593, paragraph [0039]) this is to say that Miura in view of Kawamoto is teaching that some amount of terpenes would remain in said aroma components which is seen to result in “an insoluble oil-soluble fragrance flavor of the trace which was unevenly distributed in this surface layer fresh as a top flavor” as disclosed by Miura in view of Kawamoto (‘593, paragraph [0030]). Further regarding claim 1, once it was known to provide an amount of hydrophobic aroma components to a beverage comprising an edible aqueous solution and a hydrophobic droplet containing hydrophobic aroma components and terpenes it is not seen that patentability would be predicated on the particular amount of said aroma component 1 and said component 2 that would be provided relative to the total volume of the beverage. The mere scaling up of the amount of an amount of a hydrophobic aroma component capable of being scaled up, if such were the case, would not establish patentability in a claim to an old amount of a hydrophobic aroma component so scaled. Where the only difference between the prior art and the claims was a recitation of relative amounts of the claimed hydrophobic aroma components and a packaged beverage having the claimed relative amounts of the hydrophobic components would not perform differently than the prior art packaged beverage, the claimed packaged beverage is not patentably distinct from the prior art packaged beverage.
Regarding claims 2 and 4, since Miura in view of Kawamoto discloses the hydrophobic aroma components (essential oil) are light than water (‘724, paragraph [0004]), that is, the specific gravity of the essential oil (lemon oil) (0.845) is less than that that of the aqueous solution (water) (‘724, paragraph [0032]) it is inherent that the hydrophobic aroma component would exist at a liquid surface of the aqueous solution.
Regarding claims 5 and 21, Miura in view of Kawamoto discloses the hydrophobic aroma component 1 is an aroma component of a fruit (lemon oil) (‘593, paragraph [0056]) (‘724, paragraph [0027]).
Regarding claims 6 – 8, Miura in view of Kawamoto discloses the hydrophobic droplet comprised a hydrophobic substance is extracted from a plant, an essential oil, and the plant is a citrus plant (‘593, paragraph [0056]) (‘724, paragraph [0027] and [0032]).
Regarding claim 12, Miura in view of Kawamoto discloses the aqueous solution would comprise an alcohol (‘593, paragraph [0001]) (‘724, paragraph [0040]).
Regarding claim 13, Miura in view of Kawamoto discloses the aqueous solution would comprise carbon dioxide gas (‘593, paragraph [0001]) (‘724, paragraph [0045]).
Regarding claim 14, Miura in view of Kawamoto discloses the aqueous solution would comprise a fruit juice (‘593, paragraph [0001]) (‘724, paragraph [0050]).
Regarding claim 22, Miura in view of Kawamoto discloses the hydrophobic droplet relative to a total volume of the beverage would be at least 0.1 g/L (1.0 mL in a 1 L finished beverage) (‘724, paragraph [0030]).
Claims 3, 10, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Miura JP 4818593 in view of Kawamoto et al. US 2013/0101724 as further evidenced by NICNAS.
Regarding claim 3, Miura in view of Kawamoto discloses the hydrophobic aroma component 1 is a hydrophobic substance (essential oil) (paragraph [0045]) (lemon oil) (‘593, paragraph [0056]) (‘724, paragraph [0032]). As further evidenced by NICNAS lemon oil contains a hydrophobic substance (limonene, terpenes and terpenoids) (page 16, 7.2) with a boiling point of lower than 260º C (175.5 – 179-6º C) (page 11, table 5.1).
Regarding claims 10 and 23, Miura in view of Kawamoto discloses the hydrophobic droplet would comprise lemon oil, which, as evidenced by NICNAS, comprises D-limonene, a terpene (page 16, 7.2).
Response to Arguments
Applicant’s arguments with respect to claims have been fully and carefully 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.
In the interest of furthering prosecution the following remarks are made.
Applicant urges that the ordinarily skilled artisan would not have derived the packaged beverage of claim 1 from Kawamoto without improper hindsight having been used and it is only the present disclosure that contemplates the use of a separate layer of the hydrophobic aroma component 1. These urgings are not deemed persuasive.
As set forth above in the rejections Miura clearly discloses that with respect to a hydrophobic aroma component the terpenes were removed as much as possible which is to say that Miura is disclosing that said aroma composition would still comprise, to some extent, an amount of terpenes which would obviously result in at least a trace amount of said aroma component, i.e., a hydrophobic droplet containing a hydrophobic aroma component 1 separated from the edible aqueous solution.
In response to applicant's urging that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 05 January 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792