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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3 March 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi JP2017063722 and Barnes “The Complete Beer Fault Guide v. 1.4”, https://londonamateurbrewers.co.uk/wp-content/uploads/2015/05/Complete_Beer_Fault_Guide.pdf, published online 2011-2013, retrieved 6 October 2026.
Regarding claims 1, 2 and 6, Ohashi teaches a non-alcoholic beer flavored beverage. [0005]
Ohashi is silent regarding isoamyl propionate.
Barnes is a handbook guide to the flavors components of beer. (Pg. 1) Barnes teaches that isoamyl propionate is an ester compound known to impart aniseed and pineapple flavor to beer. (Pg. 14) Barnes indicates the minimum threshold for imparting flavor to beer for isoamyl propionate is 0.015 mg/L which is 15 ppb.
Ohashi and Barnes are both directed to beverages that taste like beer. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included isoamyl propionate as recited in claim 1 in the beer taste beverage of Ohashi in order to make it taste more like beer. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included isoamyl propionate in a proportion above the taste threshold of 15 ppb but below a content that would have an unpleasing flavor. Therefore, the proportion of isoamyl propionate recited in claims 1 and 2 is rendered obvious by the modification of Ohashi with Tan. 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)
Ohashi is silent regarding the product-by-process limitations recited in claim 1. However, Ohashi discloses that the beverage can be flavored with malt flavor. [0029] The recitation that the beverage of claim 1 comprises a pre-beverage liquid prepared by boiling treatment of raw materials which comprise malt does not impart any materially distinguishing characteristics to the claimed composition beyond the compositional limitations recited. “[E]ven though product‑by‑process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product‑by‑process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Since Ohashi teaches that the beverage may be flavored with malt flavor and the claims do not recite the quantity of “pre-beverage liquid” or concentration of malt therein, the malt flavoring of Ohashi is interpreted to be materially indistinguishable from the “pre-beverage liquid” comprising a liquid that has had solid contents removed from malt recited.
Therefore, the modification of Ohashi with Barnes renders obvious the limitations of claims 1, 2 and 6.
Regarding claims 3 and 4, the beer taste beverage of Ohashi comprises 238-415 ppm tartaric acid. [0017-0018] . 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)
Regarding claim 5, the ratio of greater than 15 ppb isoamyl propionate to 238-415 ppm tartaric acid overlaps with the ratio recited in claim 5. 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)
Regarding claim 7, Ohashi teaches a carbon dioxide pressure at 20°C of 0.18 to 0.30 MPa (1.8-3.1 kg/cm2). [0028]
Regarding claim 8, the beer taste beverage of Ohashi is non-fermented. [0024]
Regarding claim 9, the negative limitation that the raw materials do not comprise water-soluble dietary fiber does not exclude the presence of water-soluble dietary fiber from the claimed composition because this limitation is only relevant to the starting materials for making the claimed beverage. As such, the beverage of Ohashi modified with Tan renders obvious claim 9.
Response to Arguments
Applicant's arguments filed 3 March 2026 have been fully considered but they are not persuasive.
Applicant’s assertions regarding Tan on pages 4-5 of the remarks are no longer germane as this reference is not relied upon in the rejection above.
Applicant asserts on page 6 of the remarks and in the declaration that the beverage of Ohashi fails to satisfy the product-by-process limitations recited for the “pre-beverage liquid” and that Ohashi does not include “malt-derived components”. This assertion is inaccurate since as discussed above, Ohashi discloses the use of malt flavor and such flavor is materially indistinguishable from a liquid comprising malt that has had solids removed as recited in claim 1.
Applicant asserts on page 6 of the remarks and in the declaration that the pre-beverage liquid contains nitrogen and maltose. The evidence provided in the declaration is only relevant to liquids that have been subjected to saccharification, boiling and solid content removal. The present claims do not require that a liquid which has been subjected to all of those steps is used. As such, the present claims are not limited to liquids as described in the declaration. The data presented is not commensurate with the scope of the claims and is therefore insufficient to demonstrate that Ohashi does not read on the claimed invention. Therefore, applicant’s arguments are not found persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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