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 .
DETAILED ACTION
Response to Amendment
As a result of the amendments to the claims, all rejections not repeated in this Office Action has been withdrawn.
Claims 1-5 are currently pending in this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the term “grown by shielding from sunlight” renders the claim indefinite because it is not clear as to what constitutes a distillate that has been grown by “shielding from sunlight”. That is, the term does not specify or include how the shielding is done, thereby allowing any form of shielding to read on the claimed limitation. For example, if the leaves were in a green house, or were grown indoors, it is necessarily “shielded from sunlight” while still getting the same benefits of a plant grown with sunlight. This therefore renders the claim indefinite because it is not clear as to what tea leaves is intended to be excluded. In view of the industry practice for producing specific types of tea leaves such as the gyokuro tea leaves, it appears Applicant intends to limit to a particular practice of growing tea leaves that have been shaded for a particular amount of time prior to being harvested (see evidentiary reference JingTea.com); however, the limitation “shielded the sunlight” does not sufficiently convey or limit the types of tea being produced such that one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-5 are rejected based on its dependency on 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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (Chapter IV Aroma of shade grown tea, Tea aroma research notes from a diversity perspective in manufacturing, 2000 – cited in IDS filed 1/20/2023) in view of Kawasaki (JP 2005143467A – cited in IDS file 6/23/2025) and Zhu et al. (Determination of Volatile Chemical Constitutes in Tea by Simultaneous Distillation Extraction, Vacuum Hydrodistillation and Thermal Desorption- cited in IDS filed 6/23/2025), and evidenced by JingTea (Gyokuro – A Look At Traditional Tea Shading).
Regarding Claims 1 and 5, Kawakami discloses a tea (Gyokuro Fuku, as per Claim 5) aromatizing liquid composition comprising dimethyl sulfide (See Table IV-8, Page 1, second row) and beta-ionone (See Table IV-8, Page 2, fourth to last row). As indicated in Applicant’s specification, the Gyokuro tea leaves are grown by shielding from sunlight before picking (paragraph 13) and therefore meets the limitation of a distillate of tea leaves grown by shielding the sunlight. Also see evidentiary reference JingTea.com (Gyokuro – A Look At Traditional Tea Shading) which discloses that Gyokuro leaves are grown by a traditional practice of shading prior to harvesting to produce richness, and umami flavors (fourth to last paragraph).
Kawakami is silent to having a weight ratio of beta-ionone content to dimethyl sulfide content of 0.15-3.0. Kawasaki is relied on to teach a tea flavor composition having a fresh, refreshing, green-like and fragrant aromatic flavor by further comprising natural flavors, hydrocarbons, alcohols, aldehydes, ketones, acids, esters, lactones, nitrogen-containing compounds, sulfur-containing compounds, phenols, furans, and pyrans (see paragraphs 11-12). The sulfur-containing compounds includes dimethyl sulfide (paragraph 43), and the ketone compounds includes beta-ionone (paragraph 33). Therefore, it would have been obvious to one of ordinary skill in the art to modify the aromatic compounds within a tea beverage to achieve the desired flavor and aroma profile. 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).
Zhu is also relied on to teach known chemical compositions of tea beverages, wherein a top Chinese brand green tea was evaluated to have a Gas Chromatography percentage of 4.98 Dimethyl Sulfide and 2.84 Beta-ionone (component no. 1 and 26 of Table 4, page 609), thereby producing a ratio of about 0.57 beta-ionone to Dimethyl Sulfide. Therefore, since both Kawakami and Zhu are directed to tea beverages, it would have been obvious to one of ordinary skill in the art to modify the composition of Kawakami to have similar taste and aromatic profiles as Zhu base on preference.
Regarding Claim 2, Kawakami further comprises alpha-ionone (0.3, see Table IV-8, Page 2, sixth to last row).
Regarding Claims 3 and 4, Kawakami further teaches wherein the composition of Claim 1 is a beverage (Gyokuro Fuku tea).
Response to Arguments
Applicant’s arguments in the response filed 12 Dec 2025 has been considered, but is found not persuasive over the prior art.
Applicant’s arguments regarding the rejection over 35 U.S.C. 102 is rendered moot in view of withdrawal of the rejections.
As to the rejection over 35 U.S.C. 103, Applicant argues that one of ordinary skill in the art would not modify a Japanese green tea with the teachings of Zhu which is directed to Chinese green tea, and that Zhu is merely a component analysis and thus provides no suggestion. Applicant also argues that there is no rational reason to select only dimethyl sulfide and beta-ionone from among the ingredients identified by Kawasaki. The argument is found not persuasive because there is no evidence to suggest that one of ordinary skill in the art would be taught away from combining solely on the fact that Zhu is directed to Chinese green tea. Rather, it is maintained that one of ordinary skill in the art would look to the Zhu reference to understand the compounds that makes up the flavor profile of a particular green tea. Therefore, since dimethyl sulfide and beta-ionone are known aromatic components of green tea, it would have been obvious to modify the ratios of certain components to achieve similar flavor profile to the green tea disclosed by Zhu, especially since the green tea of Zhu is considered to be a “Top Brand” of Chinese green tea. As to the argument regarding Kawasaki, it is noted that Kawasaki is relied on to merely show that the claimed flavor compounds are naturally found in green tea. Also, it is noted that the rejection is not primarily dependent on the selection of two specific compounds; rather, the teaches of Kawasaki is imported as a whole and includes various combinations of the listed components (“at least one or more kinds of flavors selected from the group consisting of…”). Therefore, even if one of ordinary skill in the art were to import more than the claimed components, since the claim recites a “comprising” phrase, the prior art would still meet the claim given that the particular ratio of dimethyl sulfide and beta-ionone are met, which has been modified to meet the claim by the Zhu reference. For these reasons, the prior art has been maintained.
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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/T.H.N/Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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