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 August 5, 2025 is acknowledged.
Applicant has overcome the following by virtue of amendment of the specification and claims: (1) the objections to the claims have been withdrawn; (2) the 112(b) rejections of claims
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-2, 4-5, 7-22
Withdrawn claims:
16-18
Previously canceled claims:
None
Newly canceled claims:
3, 6
Amended claims:
1-2, 4-5, 7-18
New claims:
19-22
Claims currently under consideration:
1-2, 4-5, 7-15, 19-22
Currently rejected claims:
1-2, 4-5, 7-15, 19-22
Allowed claims:
None
Drawings
The drawings are objected to because Figures 2 through 5 are not legible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it is over 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
Claim 1 is 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.
Claim 1 recites the limitation “subjecting the tea suspension to distillation using condensed water… from 2[Symbol font/0xB0]C to 8[Symbol font/0xB0]C”. This limitation renders the claim indefinite because it is unclear if the condensed water is subjected to the reduced pressure and temperature distillation or if the condensed water is merely used for condensing the distillate. For the purposes of examination, it is presumed that the claim states “subjecting the tea suspension to distillation under a reduced pressure… and a remaining tea pulp, wherein the distillation uses condensed water at a temperature from 2[Symbol font/0xB0]C to 8[Symbol font/0xB0]C”.
Cited Prior Art
The following prior art are relied upon in the subsequent 35 U.S.C. §103 rejections:
Ekanayake (US PGPub 2005/0084544 A1)(IDS Reference filed 12/17/2024);
Kimberton (“How to Brew Loose Leaf Tea”, Kimberton Whole Foods, version from September 30, 2020 [accessed online April 22, 2025] https://web.archive.org/web/20200930024423/https://www.kimbertonwholefoods.com/how-to-brew-loose-leaf-tea/);
Sato (US PGPub 2010/0021615 A1);
Khan (Khan, Muhammad Imran, et al. “Green Tea Seed Isolated Saponins Exerts Antibacterial Effects against Various Strains of Gram Positive and Gram-Negative Bacteria, a Comprehensive Study In Vitro and In Vivo”, Evidenced-Based Complementary and Alternative Medicine, Article ID 3486106, published November 26, 2018 [accessed online April 23, 2025]);
Wang (Wang, Chao, et al. “Sensory and instrumental analysis-guided exploration of odor-active compounds recovery with oil during the water-boiling extraction of Pu-erh tea”, Food Research International, Vol. 134, published April 16, 2020 [accessed online April 23, 2025]);
Hakim (US PGPub 2020/0190449 A1);
Luyben (Luyben, William L., et al. “Distillation column pressure selection”, Separation and Purification Technology, Vol. 168, p. 62-67, published August 10, 2016 [accessed online April 23, 2025]);
Yang (Yang, Ting, et al. “Enantiomeric analysis of linalool in teas using headspace solid-phase microextraction with chiral gas chromatography”, Industrial Crops and Products, Vol. 83, p. 17-23, published December 29, 2015 [accessed online April 23, 2025]);
Ageev (Ageev, I.M., et al. “Features of Measuring the Electrical Conductivity of Distilled Water in Contact with Air”, Measurement Techniques, Vol. 62, No. 10, published January 2020 [accessed online October 14, 2025]);
Haus (“Decanter Centrifuges”, Haus, version from July 26, 2020 [accessed online April 23, 2025] https://web.archive.org/web/20200726053241/https://www.hausworld.com/product-8-decanters.html);
IBI (“Ethanol (Anhydrous Alcohol)”, IBI Scientific, version from November 30, 2020 [accessed online April 23, 2025] https://web.archive.org/web/20201130052630/https://www.ibisci.com/products/ethanol-anhydrous-alcohol#productSpecsTabs11);
Sandhaus (Sandhaus, Derek. “Better Know a Baijiu: Strong Aroma”, Drink Baijiu, The World of Chinese Spirits, published November 5, 2018 [accessed online October 14, 2025]).
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, 5, 7, 9-11, 13-15, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben as evidenced by Yang.
Regarding claim 1, Ekanayake teaches a process for theanine extraction from plant material (Abstract) comprising contacting plant material with water at a ratio of 1:15 tea leaf to water (which lies close to the claimed range of “4 to 14 times the weight”) to obtain an extract comprising theanine, where the plant material can be tea leaves (i.e., soaking tea leaves in a solvent to obtain a tea suspension)([0025]) and that the term water refers to deionized water, reverse osmosis water, or distilled water ([0020]) which are all understood in the art to be pure water. Ekanayake also teaches that the tea leaves are extracted at a temperature of 70-100[Symbol font/0xB0]C (which overlaps with the claimed range of “60-90[Symbol font/0xB0]C”) for 30 to 45 minutes (which falls within the claimed range of 0.5 to 2 hours; [0025]). Ekanayake further teaches that after extraction, the liquid is then filtered to obtain a theanine extract (i.e., filtering to obtain a filtrate; [0025]). After filtering, the extract is exposed to an adsorbent material such as resins or any hydrophobic cationic materials ([0028]). The solvent used during adsorption is preferably selected from ethanol ([0028]). After adsorption, the eluate is then subjected to a filtration step to remove solids (i.e., separating the solids from the mixture; [0031]) to obtain a tea theanine extract.
Although Ekanayake teaches adding the ethanol during the adsorption rather than after adsorption, MPEP §2144.04(IV)(C) states “Selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Therefore, it would have been obvious to one of ordinary skill in the art to add ethanol after the adsorption has been completed.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
With respect to the close range, MPEP §2144.05 states a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Furthermore, although Ekanayake does not explicitly state letting the mixture of ethanol and the adsorption eluent stand, one of ordinary skill in the art would have recognized that the mixture would necessarily stand at some point in time between processing steps. Because the amount of time that the mixture stands is not specified in the claim, the process of Ekanayake is sufficient to teach this limitation because the process of the prior art is not performed continuously ([0060], when the elute is clear, the elution is stopped, then filtration is carried out).
Ekanayake does not teach crushing the tea leaves prior to soaking, subjecting the tea suspension to distillation using condensed water under reduced pressure of from 30 kPa to 76 kPa and a temperature of from 65[Symbol font/0xB0]C to 90[Symbol font/0xB0]C to obtain a tea aroma extract and a remaining tea pulp, wherein a temperature of the condensed water used in the distillation is from 2[Symbol font/0xB0]C to 8[Symbol font/0xB0]C, wherein the tea aroma extract comprises at least one of linalool, geraniol, or methyl salicylate, subjecting the tea soup to concentration under pressure, using a macroporous resin during adsorption, using anhydrous alcohol when adding alcohol after adsorption, drying the solid to obtain a tea theanine extract, or mixing the tea aroma extract and tea theanine extraction with Chinese baijiu to obtain a tea wine.
Regarding crushing tea leaves prior to soaking, Kimberton teaches that crushing herbs (i.e., the tea leaves) before brewing is key because it releases the volatile oils and biochemical compounds (p. 3, ¶ 3).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process taught by Ekanayake with the step of crushing the tea leaves before soaking in water as taught by Kimberton. One of ordinary skill would be motivated to make this modification because Kimberton teaches that crushing the herbs releases the compounds that provide nutrients in the tea (p. 3, ¶ 3).
Regarding subjecting the tea suspension to distillation under reduced pressure to obtain a tea aroma extract and a remaining tea pulp, subjecting the tea soup to concentration under pressure, and drying the solid to obtain a tea theanine extract, Sato teaches of a tea extract (Abstract), and further teaches that the amount of organic solvent in the solution can be decreased using reduced pressure distillation ([0070]) and concentrating tea extract using reduced-pressure concentration ([0035]). Sato also teaches that the green tea extract can be powdered using drying if a solid form is desired ([0064]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the use of reduced pressure distillation after soaking leaves in a solvent. One would be motivated to make this modification because Sato teaches that reduced pressure distillation is known in the art to reduce the amount of solvent remaining in the extract, which would lead to a more concentrated product.
Furthermore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the use of concentration under reduced pressure after filtering out tea pulp to obtain a tea soup. One of ordinary skill would be motivated to make this modification because Sato teaches that concentration under reduced pressure is known in the art to concentrate a mixture.
Furthermore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the use of drying to obtain a solid tea theanine extract. One of ordinary skill in the art would have been motivated to make this modification because Sato teaches that for dispersibility in an organic solvent such as ethanol, a slurry, semi-solid, or solid form is preferred ([0035]).
Regarding using condensed water during the distillation and wherein the condensed water has a temperature from 2[Symbol font/0xB0]C to 8[Symbol font/0xB0]C, Luyben teaches that the heat sink used in a condenser for distillation can be cooling water (i.e., condensed water; p. 62, col. 1, ¶ 1). Luyben also teaches that based on the distillate composition, temperatures lower than that of cooling water may be used (p. 62, col. 1, ¶ 2) and that the temperature of cooling water inlet temperature is 304K (equivalent to 30.85[Symbol font/0xB0]C; p. 65, col. 1, ¶ 2). Therefore, the temperature range of water that is less than standard cooling water is 0[Symbol font/0xB0]C (i.e., the freezing point of water) to 30.85[Symbol font/0xB0]C, which encompasses the claimed range of “2[Symbol font/0xB0]C to 8[Symbol font/0xB0]C”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake modified by Sato to use cooling water taught by Luyben in the distillation process of Sato. One of ordinary skill would have been motivated to make this modification because Luyben teaches that cooling water is an inexpensive heat sink (p. 62, col. 1, ¶ 1).
Regarding using a macroporous resin during adsorption, Khan teaches a method of preparing a green tea extract by adding ethanol and then purifying using column chromatography with macroporous resin (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use column chromatography with a macroporous resin as taught by Khan as the adsorbent hydrophobic cation material treatment of Ekanayake. One of ordinary skill in the art would have found it obvious to apply the known technique of column chromatography to the process of Ekanayake and yield predictable results of a column chromatography process that refines a green tea extract. MPEP §2143(D) states “The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.”
Regarding using anhydrous alcohol when adding alcohol after adsorption, Wang teaches the release of odor-active compounds from tea during extraction (Abstract), the method comprising using anhydrous alcohol to extract the odor compounds in the oil (p. 3, col. 2, ¶ 5).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use of anhydrous alcohol as the solvent following column chromatography in Ekanayake. One of ordinary skill in the art would have found it obvious to apply the known technique of using anhydrous alcohol for extracting aromatic compounds to the process of making a tea extract taught by Ekanayake. MPEP §2143(D) states “The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.”
Regarding or mixing the tea aroma extract and tea theanine extraction with Chinese baijiu to obtain a tea wine, Hakim teaches of an alcohol beverage enriched with neurotransmitter precursors and one or more psychostimulants (Abstract), where psychostimulant substances that can be added include green tea and theanine extracted from green tea ([0097]) and that the alcohol can be baijiu.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the final step of adding the obtained tea extract, which includes theanine, to a baijiu to create an alcoholic beverage that has psychostimulants as taught by Hakim. One would be motivated to make this modification because Hakim teaches that consuming both alcohol and psychostimulants circumvented some of the non-pleasurable effects associated with alcohol consumption. Therefore, one of ordinary still would have chosen to add tea and theanine to baijiu to create a baijiu beverage that has less side effects.
Although the cited prior art does not teach wherein the distillation under pressure is performed at a pressure of 30-76 kPa, Luyben teaches that selection of the operating pressure of a distillation column is one of the most important design decisions (Abstract). One of ordinary skill in the art would have adjusted the pressure during routine optimization to determine the optimal distillation pressure. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted pressure during routine optimization because it is one of the most important design decisions. Thus, the claimed range is obvious.
Although the cited prior art does not teach wherein the distillation under pressure is performed at a temperature of 65-90[Symbol font/0xB0]C, Luyben teaches that selection of the operating pressure of a distillation column has a major impact on the column temperature (Abstract). One of ordinary skill in the art would have adjusted the temperature during routine optimization to determine the optimal distillation pressure. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted the temperature during routine optimization to determine the column temperature based on the selected pressure. Thus, the claimed range is obvious.
Although the cited prior art does not teach that the composition comprises one or more of linalool, geraniol, and methyl salicylate, linalool is a known fragrant component found in teas. Therefore, one of ordinary skill in the art would recognize that linalool would necessarily be present in the tea aroma extract made by Ekanayake. Evidence to support that green tea flower naturally comprise linalool, geraniol, and methyl salicylate is provided by Yang. Yang teaches that linalool is one of the major odor-active components of black tea, dark tea, oolong tea, and green tea (p. 17, col. 2, ¶ 2).
Regarding claim 4, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Although the cited prior art does not teach wherein the distillation under pressure is performed at a pressure of 43 to 68 kPa, Luyben teaches that selection of the operating pressure of a distillation column is one of the most important design decisions (Abstract). One of ordinary skill in the art would have adjusted the pressure during routine optimization to determine the optimal distillation pressure. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted pressure during routine optimization because it is one of the most important design decisions. Thus, the claimed range is obvious.
Regarding claim 5, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 4 as described above.
Although the cited prior art does not teach wherein the distillation under pressure is performed at a temperature of 75 to 85[Symbol font/0xB0]C, Luyben teaches that selection of the operating pressure of a distillation column has a major impact on the column temperature (Abstract). One of ordinary skill in the art would have adjusted the temperature during routine optimization to determine the optimal distillation pressure. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted the temperature during routine optimization to determine the column temperature based on the selected pressure. Thus, the claimed range is obvious.
Regarding claim 7, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 6 as described above.
Although the cited prior art does not teach the claimed ranges of linalool, geraniol, and/or methyl salicylate in the tea aroma extra, Yang teaches that linalool is one of the major odor-active components in tea (p. 17, col. 2, ¶ 2). One of ordinary skill would have adjusted the amount of linalool during routine processing. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted the amount of linalool in the tea aroma extract via routine optimization to arrive at an amount that would provide the correct aromatic profile of tea.
Regarding claim 9, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Ekanayake does not teach wherein the tea soup is subjected to concentration under reduced pressure at a vacuum degree of 76-85 kPa and a temperature of 55[Symbol font/0xB0]C-65[Symbol font/0xB0]C.
Regarding the temperature of the concentration under reduced pressure, Sato teaches reduced-pressure concentration performed at 55[Symbol font/0xB0]C ([0121]), which falls within the claimed range of “55[Symbol font/0xB0]C-65[Symbol font/0xB0]C”.
It would have been obvious to one of ordinary skill in the art to perform reduced-pressure concentration at 55[Symbol font/0xB0]C taught by Sato as a part of the tea extraction process taught by Ekanayake. One of ordinary skill would be motivated to make this modification because Sato teaches that concentration under reduced pressure is known in the art to concentrate a mixture.
Although the cited prior art does not teach the vacuum degree of reduced pressure concentration, Luyben teaches that selection of the operating pressure of a distillation column (a known form of reduced pressure concentration) is one of the most important design decisions (Abstract). One of ordinary skill in the art would have adjusted the pressure during routine optimization to determine the optimal pressure for concentration. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted pressure during routine optimization because it is such a critical variable for distillation. Thus, the claimed range is obvious.
Regarding claim 10, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 9 as described above. Ekanayake also teaches that the tea extract can be subjected to a microfiltration and a subsequent ultrafiltration step ([0006]).
Regarding claim 11, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Ekanayake does not teach wherein the macroporous adsorption resin is D101 macroporous adsorption resin and/or AB-8 macroporous adsorption resin.
However, in the same field of endeavor of tea extraction, Khan teaches a method of preparing a green tea extract by adding ethanol and then purifying using column chromatography with D101 macroporous resin (Abstract).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process taught by Ekanayake with the use of D101 macroporous resin during column chromatography as taught by Khan. One of ordinary skill in the art would have found it obvious to apply the known technique of column chromatography to the process of Ekanayake and yield predictable results of a column chromatography process that refines a green tea extract. MPEP §2143(D) states “The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.”
Regarding claim 13, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Ekanayake does not teach wherein the alcohol content of the Chinese baijiu is 20-60%.
However, in the same field of endeavor of compositions comprising tea extract, Hakim teaches that the alcoholic spirit can be baijiu ([0167]) and that the alcoholic spirit comprises up to 50% alcohol ([0168]), which overlaps with the claimed range of “20-60%”.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the final step of adding the obtained tea extract, which includes theanine, to a baijiu to create an alcoholic beverage that has psychostimulants as taught by Hakim. One would be motivated to make this modification because Hakim teaches that consuming both alcohol and psychostimulants circumvented some of the non-pleasurable effects associated with alcohol consumption. Therefore, one of ordinary still would have chosen to add tea and theanine to baijiu to create a baijiu beverage that has less side effects.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Regarding claim 14, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above. Ekanayake also teaches that extracts can be made from black tea ([0033]).
Regarding claim 15, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Although Ekanayake does not explicitly state that the method does not comprise a fermentation of the tea leaves, the method of Ekanayake does not teach fermenting the tea leaves anywhere in the process. Therefore, one of ordinary skill would presume that the process can be performed without a fermentation step on the tea leaves.
Regarding claim 20, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 9 as described above.
Although the cited prior art does not teach the final volume of the concentrated tea soup, Sato teaches that the elute may be concentrated as needed ([0062]). One of ordinary skill in the art would have adjusted the amount of concentration applied to the tea soup during routine optimization to arrive at a tea soup with the desired concentration. MPEP §2144.05(II) states where 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). Thus, the claimed range is obvious.
Regarding claim 21, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above. Ekanayake also teaches that microfiltration is involves a filter with a pore size of less than about 0.45 µm ([0011]), which overlaps with the claimed range of “0.1 µm to 0.5 µm”. Ekanayake also teaches that microfiltration is performed at the same temperature as nanofiltration ([0054]) and that nanofiltration is performed at a temperature from about 30[Symbol font/0xB0]C to about 50[Symbol font/0xB0]C ([0034]), which overlaps with the claimed range of “from 20[Symbol font/0xB0]C to 30[Symbol font/0xB0]C”.
With respect to the overlapping ranges, MPEP §2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben as evidenced by Yang as applied to claim 1 above, and further in view of Ageev.
Regarding claim 2, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
Although Ekanayake does not teach the electrical conductivity of the water used for the solvent, the distilled water (i.e., pure water) of Ekanayake would necessarily have an electrical conductivity that falls between from 1 µS/cm to 10 µS/cm. Evidence to support that the electrical conductivity of distilled water falls within 1 µS/cm to 10 µS/cm is provided by Ageev. Ageev teaches that distilled water has a conductivity of 1-2 µS/cm when exposed to air (p. 923, ¶ 1).
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben as evidenced by Yang as applied to claim 1 above, and further in view of Haus.
Regarding claim 8, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above. Ekanayake teaches centrifuging theanine extracts ([0066]).
The cited prior art does not teach wherein the tea pulp is filtered using a horizontal decanter centrifuge.
However, in the same field of endeavor of separate operation, Haus teaches decanter centrifuge (Title p. 1, ¶ 1), which is horizontal (p. 1, Image).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake with the use of a horizontal decanter centrifuge taught by Haus as the centrifuge used for separation. Because Ekanayake is silent regarding the type of centrifuge, one of ordinary skill would have been motivated to consult Haus to determine an efficient centrifuge to use for separation.
Regarding claim 19, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, Luyben, and Haus teaches all elements of claim 8 as described above.
Although the cited prior art does not teach the rotation speed of the horizontal decanter centrifuge, Haus teaches that the decanter centrifuge has variable speeds to handle different solid quality and desired dryness (p. 2, Product Based Performance). Therefore, one of ordinary skill in the art would have adjusted the speed of the centrifuge during routine optimization to find the rotations per minute that results the desired dryness of the composition. MPEP §2144.05(II) states where 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). The claimed range would thus be obvious.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben as evidenced by Yang as applied to claim 1 above, and further in view of IBI.
Regarding claim 12, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
The cited prior art does not teach wherein the purity of the anhydrous alcohol is 95% or more, and wherein the volume of the anhydrous alcohol is 2-10 times the volume of the filtrate adsorbed with the macroporous adsorption resin.
Regarding the purity of the anhydrous alcohol, IBI teaches of an anhydrous ethanol product that is 200 proof (equivalent to 100%) alcohol (p. 1, bullet 1).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute the anhydrous alcohol taught by Ekanayake modified by Wang as described above in claim 1 with the 100% pure anhydrous alcohol taught by IBI. The claim would have been obvious because one of ordinary skill in the art would have been able to make this simple substitution of one known element for another equivalent in the art and yield predictable results to one of ordinary skill in the art, see MPEP §2143(B). Therefore, one of ordinary skill would have found it obvious to substitute one anhydrous ethanol for another and yield predictable results.
Regarding the volume of the anhydrous alcohol, although the cited prior art does not teach the anhydrous ethanol being added at 2-10 times the volume of the filtrate adsorbed with the macroporous resin, Wang teaches that to improve recovery efficiency of the aroma compounds, the amount of ethanol was optimized (p. 3, col. 2, ¶ 6 – p. 4, col. 1, ¶ 1). One of ordinary skill would have adjusted the amount of ethanol used during routine processing. MPEP §2144.05(II) states where 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). Therefore, one of ordinary skill would have adjusted the amount of ethanol added to optimize the recovery efficiency.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben as evidenced by Yang as applied to claim 1 above, and further in view of Sandhaus.
Regarding claim 22, Ekanayake in view of Kimberton, Sato, Khan, Wang, Hakim, and Luyben teaches all elements of claim 1 as described above.
The cited prior art does not teach wherein the Chinese baijiu is a strong-flavor Chinese baijiu.
However, in the same field of endeavor, Sandhaus teaches that strong-aroma baijiu is complex and aromatic (p. 2, ¶ 3).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the process of Ekanayake in view of Hakim to utilize a strong-aroma Chinese Baijiu as taught by Sandhaus. One of ordinary skill would have been motivated to make this modification because Sandhaus teaches more than seventy percent of baijiu produced is the strong-aroma type (p. 7, ¶ 1).
Response to Arguments
Drawings: Applicant has submitted new copies of Figs. 2 through 5 in response to the objection presented in the Non-Final Rejection. However, the new drawings presented are still illegible after electronic processing. The objection is maintained herein.
Specification: Applicant has submitted a new Abstract in response to the objection presented in the Non-Final Rejection. However, the new abstract fails to remedy the objection because the new abstract is also greater than 150 words. The objection is maintained herein.
Claim Objections: Applicant has overcome the objections to the claims based on amendments in the Claims. Accordingly, the objections have been withdrawn.
Claim Rejections - 35 U.S.C. §112(b): Applicant has overcome the 35 U.S.C. § 112(b) rejections of claims 2-5, 8-10, 13 based on amendments to the claims and/or cancelation. Accordingly, the 35 U.S.C. § 112(b) rejections have been withdrawn.
Claim Rejections – 35 U.S.C. §103 of claims 1-3, 11, 13-15 over Ekanayake, Kimberton, Sato, Khan, Wang, and Hakim; claims 4, 5, 9, and 10 over Ekanayake, Kimberton, Sato, Khan, Wang, Hakim, and Luyben; claims 6 and 7 over Ekanayake, Kimberton, Sato, Khan, Wang, Hakim, and Yang; claim 8 over Ekanayake, Kimberton, Sato, Khan, Wang, Hakim, and Haus; and claim 12 over Ekanayake, Kimberton, Sato, Khan, Wang, Hakim, and IBI: Applicant’s arguments filed August 5, 2025 have been fully considered but they are not persuasive.
Applicant argued that the Examiner improperly isolates features of the claims and then maps the features to similar disclosures. Applicant states that this process ignores the order of the steps, which are parameter-dependent processes (Remarks, p. 14, ¶ 3- p. 15, ¶ 1).
This argument has been considered. However, the Examiner maintains that the combination of prior art made above would have been obvious to one of ordinary skill of the art at the time of filling. Furthermore, as stated in the above rejection, the order of performing the steps would have been obvious to one of ordinary skill to arrive at the claimed invention. Additionally, MPEP §2144.04(IV)(C) states “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results”, In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Therefore, absent evidence to the contrary, the steps of claim 1 could be performed in a different order than claimed.
Applicant also argued that the integrated technical approach results in a synergistic extraction of tea aroma and theanine followed by baijiu. Applicant further states that the technical solution of claim 1 form a complete tea-wine preparation process with enhanced product quality (Remarks, p. 15, ¶ 2-3).
This argument has been considered. However, MPEP 716.02(d) states “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)” and “To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).” Therefore, the Applicant must provide a sufficient amount of data to show unexpected results over the claimed ranges.
Applicant argued that Ekanayake has the tea residue discarded after filtration which results in a significant amount of aroma remaining that cannot be recovered. Applicant argued that Kimberton and Sato do not increase aroma recovery. Applicant argued that Khan is merely directed to macroporous resin and Wang only uses anhydrous alcohol for aroma extraction. Applicant argued that Hakim teaches is directed to enhancing the stimulant effects and mitigate alcohol side-effects, not to produce a tea wine with unique flavor. Applicant also argued that Luyben is focused on optimizing energy and not on recovering tea aroma. Applicant argued that Yang is merely for studying the aroma formation mechanism (Remarks, p. 15, ¶ 4- p. 16, ¶ 3).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argued that theanine purity in Ekanayake is only 20-20% with residual caffeine and pigments (Remarks, p. 15, ¶ 6).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the theanine purity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The rejections of claims 1-15 have been maintained herein.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793