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 .
Status of the Application
Receipt of the Response and Amendment after Non-Final Office Action filed 28 February 2026 is acknowledged.
Applicant has overcome the following by amendment and/or cancellation of the claims: (1) the 112(d) rejection of claims 3 and 9 has been withdrawn.
The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1, 4-8, and 12-15
Previously withdrawn claims: None
Previously canceled claims: 10-11 and 16-21
Newly canceled claims: 2-3 and 9
Amended claims: 1
New claims: None
Claims currently under consideration: 1, 4-8, and 12-15
Currently rejected claims: 1, 4-8, and 12-15
Allowed claims: None
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 12, “an punicalagin” should read, “punicalagin”.
In claim 1, line 13, “comprising punicalagin having” should read, “comprising punicalagin and having” for clarity that the content of punicalagin and/or ellagic acid corresponds to the natural pomegranate extract.
In claim 1, line 17, “punicalagine” should read, “punicalagin”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-8, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Foster II et al. (US 2020/0172839 A1) as evidenced by Landete (Landete, J. M. (2011). Ellagitannins, ellagic acid and their derived metabolites: A review about source, metabolism, functions and health. Food Res Int, 44, 1150-1160. https://doi.org/10.1016/j.foodres.2011.04.02).
Regarding claim 1, Foster teaches a method for producing a beverage comprising the following steps – for steps (i)-(viii), see the brewing process as disclosed by Foster in paragraphs [0004] – [0014] as indicated below:
(i) providing a malt – “Fermented malt beverages, such as beer, are produced by boiling warm water extract of malted barley…” ([0004]). The malt bill, which may actually be a blend of malts is ground and mixed with 2.5 to 4 times its weight of warm water ([0006]).
(ii) mashing the malt to obtain a wort (0006], [0008]),
(iii) lautering ([0009]) and boiling of the wort ([0010] – [0011]),
(iv) optionally, whirlpool rest of the wort – “centrifugal action” ([0012]),
(v) fermenting the wort by using a yeast ([0012]),
(vi) obtaining a beverage ([0012]),
(vii) optionally, maturation of the beverage ([0013]),
(viii) optionally, filtration of the beverage ([0014]),
wherein said method further comprises adding a stabilizing agent before, during, or after any of steps (ii), (iii), (iv), (v), (vi), (vii), and/or (viii) – “This invention provides compositions and methods for stabilizing the flavor of a fermented beverage made from a fermentable medium by adding a composition comprising a tannin and a solid carrier to the fermentable medium. In particular, the composition comprising the tannin and the solid carrier is added to the fermentable medium prior to fermentation.” ([0029]).
wherein said stabilizing agent comprises ellagic acid and/or punicalagin – “…a hydrolyzable tannin may be defined as an aromatic compound, e.g., a gallic acid or an ellagic acid, and a sugar, e.g., glucose, that have formed an ester bond.” ([0073]). “In one specific embodiment, a tannin is provided as a hydrolyzable tannin…” ([0074]). A hydrolyzable tannin comprising ellagic acid is an ellagitannin. As evidenced by Landete, hydrolysis of ellagitannins with acids or bases yields hexahydroxydiphenic acid (HHDP), which spontaneously lactonizes to ellagic acid (p. 1151, col. 1, ¶ 1). In view of the teachings of Foster as evidenced by Landete, one of ordinary skill in the art would have recognized that an ellagitannin is a hydrolyzable tannin comprising ellagic acid. Therefore, where Foster teaches that the tannin may be a hydrolyzable tannin of, for example, gallic acid or ellagic acid, and a sugar, Foster teaches that the stabilizing agent may be an ellagitannin, which comprises ellagic acid. It is noted that the claim does not require that the stabilizing agent comprises punicalagin.
wherein said stabilizing agent is added at a concentration of at least 0.01 mg/L – “…the tannin is in the composition in a range from about 3 weight % to about 20 weight % of the composition…” ([0041]). “In this method, the composition may be added to the fermentable medium in an amount ranging from about 1 to 1500 ppm [i.e., mg/L] by weight.” ([0042]). Therefore, Foster teaches the tannin in an amount of 1 mg/L x 3% = 0.03 mg/L to 1500 mg/L x 20% = 300 mg/L. This range lies inside the claimed range of at least 0.01 mg/L.
Foster does not specifically disclose that said stabilizing agent is a natural pomegranate extract comprising punicalagin and having a content of punicalagin and/or ellagic acid of at least 40 wt%, and/or wherein said stabilizing agent has an ellagitannin content of at least 40 wt%, and/or wherein said stabilizing agent is one or several hydrolysis products obtained from punicalagin having a content of at least 40 wt %.
However, Foster discloses, “The composition may be formed from a method comprising the steps of mixing a tannin powder and solid carrier particles to create a mixture and pelletizing the mixture to produce the composition. Before mixing, the tannin powder and/or the solid carrier may be dry, in a powder form, and have a moisture content ranging from about 0 to 15%.” ([0082]). In an embodiment where the tannins are gallotannins, the tannin powder comprises >99% dry matter tannins ([0092], Table 1).
Foster discloses that ellagitannins and gallotannins are hydrolyzable tannins that serve as functional equivalents known for the same purpose ([0073] – [0074]). That is, the hydrolyzable tannin used in the composition may be either a gallotannin or an ellagitannin. Therefore, it would have been reasonable to expect that a step of substitution between the two would yield similar/predictable results. That is, adding either a gallotannin or an ellagitannin would have resulted in stabilizing the flavor of a fermented beverage. See MPEP § 2144.06(II), which discusses when the prior art teaches that multiple components/compositions are useful for the same purpose, a reasonable expectation is shown in the success of such a substitution. Since Foster teaches that the stabilizing agent may be an ellagitannin (comprising ellagic acid) ([0073] – [0074]), and tannin powder comprising >99% tannins was used to prepare the composition comprising gallotannins, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the >99% purity gallotannin for a highly pure form (e.g. >99%) of the ellagitannin or ellagic acid to prepare the stabilizing composition by simple substitution of known ingredients used for the same purpose to obtain the predictable result of stabilizing the flavor of the fermented beverage, with the same expectation of success as using >99% pure tannins in the embodiment comprising gallotannins. See MPEP § 2143(I)(B). As such, at least the claimed feature of “wherein said stabilizing agent has an ellagitannin content of at least 40 wt %” is met.
Claim 1 is therefore rendered obvious.
Regarding claim 4, Foster teaches the method of claim 1, wherein said stabilizing agent is added in step (ii) before or during onset of mashing – “In a further embodiment, the fermentable medium is malt and the composition is added to the malt before mashing of the malt.” ([0042]).
Claim 4 is therefore rendered obvious.
Regarding claim 5, Foster teaches the method of claim 1, wherein said stabilizing agent is added in step (iii) before or during said boiling of the wort, and/or wherein said stabilizing agent is added in step (iv) before or during said whirlpool rest, and/or wherein said stabilizing agent is added in step (v) before fermentation, and/or wherein said stabilizing agent is added in step (vii) before maturation, and/or wherein said stabilizing agent is added in step (viii) before or during filtration – “In yet another embodiment, the fermentable medium is wort and the composition is added to the wort before boiling of the wort.” ([0042]). Addition of the composition at this step is also before the whirlpool rest. Foster also discloses, “In particular, the composition comprising the tannin and the solid carrier is added to the fermentable medium prior to fermentation.” ([0029], [0072]). Addition of the composition at this step is also before maturation and filtration.
Claim 5 is therefore rendered obvious.
Regarding claim 6, Foster teaches the method of claim 1, wherein said stabilizing agent is added more than once in any of steps (ii)-(viii) and/or is added in more than one of steps (ii)-(viii) – “In one non-limiting example embodiment of the invention, a process is described for mixing dry gallotannin powder with spent hop powder and/or malt fines/flour and water to form a 3-to-20 minute, slow dissolving pellet. The flavor stability pellet is then added to the malt mash-in vessel at the very start of the incoming water for the hydration of the malt at the mash-in process or to the dry ground malt bill hopper, prior to malt mash-in.” ([0047]). Thus, Foster teaches that the stabilizing agent, which may be an ellagitannin/ellagic acid, is added to the malt or mash continuously over a period of 3-20 minutes as a slow dissolving pellet. This disclosure reads on the limitation “wherein said stabilizing agent is added more than once in any of steps (ii)-(viii)”.
Claim 6 is therefore rendered obvious.
Regarding claim 7, Foster teaches the method of claim 1, wherein said stabilizing agent is added in the form of a powder – “Tannins are to be used as an antioxidant and/or chelating agent for the fermentable medium applied thereto. Further, in the preferred embodiment, the tannin is in a solid form. Preferably, the tannin is provided as a powder or a pellet.” ([0075]).
Claim 7 is therefore rendered obvious.
Regarding claim 8, Foster teaches the method of claim 1, wherein said stabilizing agent is added at a concentration in the range of from 0.01 mg/L to 1500 mg/L – “…the tannin is in the composition in a range from about 3 weight % to about 20 weight % of the composition…” ([0041]). “In this method, the composition may be added to the fermentable medium in an amount ranging from about 1 to 1500 ppm [i.e., mg/L] by weight.” ([0042]). Therefore, Foster teaches the tannin in an amount of 1 mg/L x 3% = 0.03 mg/L to 1500 mg/L x 20% = 300 mg/L. This range lies inside the claimed range.
Claim 8 is therefore rendered obvious.
Regarding claim 12, Foster teaches the method of claim 1, wherein said malt comprises a color malt – “The malt bill, which may actually be a blend of malts (i.e., standard brewer’s malt, high color, low amylase, specialty malts, etc.), is ground…” ([0006]). Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filing date of the claimed invention, to add a color malt to the malt blend of Foster to provide an appealing color to the final beverage product.
Claim 12 is therefore rendered obvious.
Regarding claims 13-14, Foster teaches the method of claim 1, and as described regarding claim 1, ellagitannin (comprising ellagic acid) may be used as the stabilizing agent. Foster further discloses that, “As discussed herein, tannins…are chelating agents of divalent metals and work quickly in aqueous solutions. ([0092]), and that aldehydes formed through oxidation catalyzed by divalent metals, especially iron and to a lesser extent manganese and copper, contribute to reduced flavor stability of the fermented beverage ([0023]). Since the tannins discussed in Foster (including ellagitannin/ellagic acid) chelate divalent metals, such as iron, manganese, and copper, Foster also teaches the limitations of claim 13 (wherein said stabilizing agent binds to a pro-oxidative acting transition metal in said wort and/or beverage) and claim 14 (wherein said pro-oxidative acting transition metal is any of iron, manganese, and copper).
It is also noted that the limitations of claims 13-14, “wherein said stabilizing agent binds to a pro-oxidative acting transition metal in said wort and/or beverage”, “wherein said pro-oxidative acting transition metal is any of iron, manganese, and copper” are not positively recited method steps, but rather latent properties of the ellagic acid composed in the stabilizing agent. As provided by MPEP § 2145(II), “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979)”, and “‘[t]he fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.' Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985)”. Therefore, claims 13-14 are not patentable in view of Foster.
Regarding claim 15, Foster teaches the method of claim 1, and as described regarding claim 1, ellagic acid may be used as the stabilizing agent via an ellagitannin. As evidenced by the instant specification, ellagic acid, via the addition of punicalagin (an ellagitannin), which is 90% pure in ellagic acid (pp. 14-15, transitional paragraph), reduces a radical intensity in said wort, as measured by electron spin resonance spectroscopy and/or chemiluminescence (Figure 2). Since Foster teaches that ellagic acid may be used as the stabilizing agent, and data from the instant specification demonstrate that ellagic acid reduces radical intensity in wort at amounts disclosed by Foster (as described regarding claim 8 above), as measured by electron spin resonance spectroscopy and/or chemiluminescence, it is considered that reducing radical intensity is an inherent property of ellagic acid. MPEP § 2112(I), “[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Therefore, claim 15 is not patentable in view of Foster.
Response to Arguments
Claim Rejections – 35 U.S.C. § 103: Applicant’s arguments filed on 28 February 2026 have been fully considered, but they are not persuasive.
Applicant first asserted that the claims now recite that the raw material is malt, that the ellagitannin is punicalagin, that the extract is a pomegranate extract, and that the claims now specify a lower limit for the concentration of the stabilizing agent (p. 6, ¶ 2).
It is noted that the stabilizing agent of amended claim 1 is not required to comprise punicalagin because ellagic acid is recited as an alternative. Additionally, the stabilizing agent is not required to be a natural pomegranate extract, as this is also an alternative. The scope of amended claim 1 includes that the stabilizing agent comprises ellagic acid, wherein the stabilizing agent has an ellagitannin content of at least 40 wt% (as is obvious in view of Foster as described in the rejection hereinabove) and/or wherein said stabilizing agent is one or several hydrolysis products obtained from punicalagin having a content of at least 40 wt %. Ellagic acid is a hydrolysis product of punicalagin. As such, the claim is not limited to an embodiment wherein the stabilizing agent comprises punicalagin or is a natural pomegranate extract comprising punicalagin.
Applicant argued that obviousness requires a suggestion of all limitations in a claim and that a prima facie case of obviousness can be rebutted by showing that the claimed invention exhibits one or more superior properties or advantages that a person of ordinary skill in the art would have found surprising or unexpected (p. 6, ¶ 3). Applicant argued that the Expert Declaration by Dr. Thomas Kunz submitted with Applicant’s previous response, as well as data in the specification, shows the superiority of the effects achieved by punicalagin, and pomegranate extract comprising punicalagin, over the gallotannins of Foster, and that the greatly enhanced effect of the stabilizing agent used in accordance with the subject invention compared to the gallotannins of Foster is entirely unexpected in view of the cited prior art (p. 6, ¶¶ 4-5). Applicant cited Examples 2 and 8 of the specification in support of the assertion of unexpected superior results (p. 6, ¶¶ 6-7).
Applicant’s assertion of a surprising discovery that the claimed stabilizing agents achieve the unexpected result of superior performance with respect to iron chelation and radical suppression compared to gallotannins is acknowledged. Applicant is reminded that “[w]hether 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)”. See MPEP § 716.02(d).
In the present case, the Declaration under 37 C.F.R. § 1.132 filed 11 September 2025 and the data in the instant specification are insufficient to overcome the rejection of amended claim 1 based upon Foster II et al. (US 2020/017839 A1) as set forth hereinabove because Applicant’s evidence is not commensurate in scope with the claimed invention.
While at first glance the evidence provided appears to support an assertion of unexpected results that a stabilizing agent comprising an ellagitannin and/or ellagic acid content of at least 40 wt % produces significantly stronger metal-chelating and radical-suppressing effects in wort as compared to gallotannin, there are several factors contributing to the scope of the claimed invention being much broader than the embodiments supported by Applicant’s evidence.
First, the data provided in the Declaration, Figure 1 provide evidence for pomegranate extract comprising 40% punicalagin as an example of a natural extract having a content of an ellagitannin and/or ellagic acid of at least 40 wt %, and punicalagin, an ellagitannin itself, as an example of a stabilizing agent having an ellagitannin content of at least 40 wt %. The claims are broader than embodiments supported by the data in that the scope of the claimed stabilizing agent is a natural pomegranate extract comprising punicalagin and having a content of an punicalagin and/or ellagic acid of at least 40 wt%, and/or wherein said stabilizing agent has an ellagitannin content of at least 40 wt%, and/or wherein said stabilizing agent is one or several hydrolysis products obtained from punicalagin having a content of at least 40 wt %, wherein said stabilizing agent is added at a concentration of at least 0.01 mg/L. The alternatives recited in amended claim 1 do not require that the stabilizing agent comprises punicalagin or that the ellagic acid is from a natural pomegranate extract. The stabilizing agent may comprise ellagic acid and have an ellagitannin content of at least 40 wt%. This limitation is obvious in view of Foster as described in the rejection of claim 1 hereinabove. Additionally, ellagic acid is a hydrolysis product of punicalagin. Nothing in the claims requires that the stabilizing agent is punicalagin or actively obtaining ellagic acid by hydrolysis of punicalagin. From the data provided, it cannot be ascertained whether the unexpected result occurs over the entire scope of the invention – for example, whether any ellagitannin of at least 40% purity exerts superior metal chelation and/or radical suppression.
Second, the claimed amount of stabilizing agent of at least 0.01 mg/L and the requirement of at least 40 wt% content/purity of an ellagitannin and/or ellagic acid in the stabilizing agent provides for a range of stabilizing agent of at least 0.4 x 0.01 mg/L = at least 0.004 mg/L ellagic acid and/or punicalagin/ellagitannin. The data in Declaration Figure 1 and Table 1 provide support for 0.45- 7.12 g/hL punicalagin and 1.125 – 17.8 g/hL of pomegranate extract comprising 40 wt % punicalagin. While the effect is clear at these ranges, one cannot ascertain whether the effect exists at much lower doses and at very high doses where the curves in Declaration Figure 1 may converge. It is noted that claim 8 requires that the stabilizing agent is added at a concentration in the range of from 0.01 mg/L to 1500 mg/L (i.e., 0.001 – 150 g/hL), which is still not commensurate with the evidence provided. Similarly, the data presented in Figure 3 of the instant specification fail to demonstrate that the effect is observed over the breadth of the claimed range.
Third, the claims recite “providing a malt”, which can be from any of several grains at any amount, and the data provided in the Declaration are derived from unboiled wort during the mashing-in process of 100% Pilsner malt. From the data provided, it cannot be ascertained whether the unexpected result occurs over the broad range of sugar concentrations from different types of malts over the various steps of the process where the stabilizing agent may be added that is covered by the scope of the claims. Example 8 of the instant specification merely concludes that higher amounts of stabilizing agent should be used when malts have a higher transition metal content.
It should be noted that these examples of differences in scope are not an exhaustive list. The data provided by Applicant are not commensurate in scope with the claimed invention because it cannot be ascertained whether the alleged unexpected result occurs over the entire claimed ranges and combinations of the claimed ingredients from the examples provided, and none of the claims are directed toward the specific embodiment provided by any of the examples. In order for the alleged unexpected results to overcome the prima facie case of obviousness presented and maintained herein, the scope of the claims must be further narrowed and/or additional evidence must be provided such that the Applicant’s evidence is commensurate.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
For these reasons, Applicant’s arguments are not found to be persuasive.
Applicant’s argument (p. 7, ¶¶ 5-8) with respect to claim 9 and the application of the teachings of Aloqbi has been considered. Claim 9 has been cancelled and elements of claim 9 have been recited in amended claim 1. Applicant’s argument is moot because the new ground of rejection does not rely on or require such teachings as provided by Aloqbi.
Claims 1, 4-8, and 12-15 are rejected under 35 U.S.C. § 103 as presented hereinabove.
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.
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/JAMES P. SHELLHAMMER/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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