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
This Official Action is Non-Final. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/1/2026 has been entered.
Any rejections from the previous Official Action not repeated below have been withdrawn.
Claims 1, 5, 7, 10, 13-17 are pending and under consideration.
Claim 18 remains withdrawn.
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.
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 invention.
Claims 1, 5, 7, 10, 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent No. 2011/0070331 (WATSON).
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The claimed invention uses a temperature range of 30-50°C (i.e., 86 - 122F) and pressure range of 0.3-2.0 kg/cm (i.e., 4.267- 28.45psig) . WATSON provides a range of at one of several ranges including 100 to 600 F (see claim 17 of WATSON).
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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
As to the pressure, WATSON teaches that this a result effective variable, WATSON teaches that pressure “may” be used [0019]. In particular, In addition to increased pressure dissolving more oxygen in the ethanol-solution, increased pressure may assist in exposing chemicals in organic material to alcohols. For example, the increased pressure may break down cellular structures and/or compounds, which may, in turn, release or otherwise expose additional chemicals to the alcohols [0019]. Applying the gas to the ethanol under increased pressure exposes a greater quantity of oxygen to the ethanol, thereby making more oxygen available for reaction with the ethanol and, consequently, expediting the reaction rate therebetween [0034]. Thus, it would have been obvious to vary the pressure based on the desired amount of oxygen released into system and reaction rate. Moreover, this would naturally remove sulphur compounds while maintaining desirable congeners.
Moreover, WATSON teaches providing a spirit to a reaction vessel [0017], introducing oxygen into the vessel to maintain a predetermined pressure [0017], heating the spirit to a predetermined temperature [0017], and maintaining the pressure and temperature period [0017]. The pressure can be maintained at a constant level over a predetermined time [0039]. [0061] teaches that this predetermined time can range from a few hours to fourteen days.
It would have been obvious to vary the temperature and pressure based on the length of the process, whether the process uses agitation and desired attributes one wanted to obtain in the spirit.
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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
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As to claim 10, it is taught that the oxygen can be pure (i.e., up to 100%). The oxygen is added by bubbling the gas though the distilled alcohol [0033] and [0035].
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As to claims 13-17, WATSON teaches an accelerated aging of distilled spirits to improve the flavor and taste of the distilled spirit [0017]. This includes a reduced harshness, enhanced sweetness, increased fruity noted, increased floral noted and increased mellow notes. The process also eliminates acids that may produce an undesirable taste. In some implementations, increasing the reaction rates of the ethanol with oxygen, acids, sugars, and/or other components can generate an aged alcohol in a few hours or days relative to conventional aging that requires years. The process also accelerates the reduction of tannins in ethanol-based solutions.
Response to Arguments
Applicant's arguments filed 2/1/2026 have been fully considered but they are not persuasive.
The applicant argues that the cited art does not disclose the subranges of pressure and temperature of the present application. Moreover, it is argued that the claimed subranges for these parameters are critical.
However, at the outset, it is noted that applicant does not provide any data that show the ranges are critical. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims.... In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See also Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 271 (1916).
Indeed, the process of WATSON would naturally oxidize sulphur compounds without substantial degradation of congeners. WATSON may not specifically discuss the removal of sulphur compounds but WATSON does relate to aging spirits. The purpose of aging spirits in wooden barrels is to transform raw, harsh distillate into a mellow, complex, and flavorful product. This process naturally introduces flavors from the wood (like vanilla and caramel), adds color, and reduces harsh undesirable flavors. This would naturally include sulphur compounds.
As previously noted, WATSON teaches that it would have been obvious to one skilled in the art to vary the temperature and pressures of the process. Indeed, at [0017] teaches that temperature and pressure can be used to increase the reaction rate (i.e., stirring/agitation is also mentioned). It is also noted that the process can be carried out in a matter of a few hours [0017] or up to 14 days [0061]. In [0044], it is taught that the pressure can vary greatly. Likewise, it is also taught that the temperature can vary greatly [0046] – [0047]. It would have been obvious to vary the temperature and pressure based on the length of the process, whether the process uses agitation and desired attributes one wanted to obtain in the spirit.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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