DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/2025 has been entered.
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 later invention.
Claim(s) 1, 4, 9, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent Application Publication No. 2014/0272019 (SCHUH). ProBrewer, Percent Alcohol Conversion Calculator, accessed at http://probrewer.com/tools/percent-alcohol-conversion-calculator/ (ProBrewer) is cited as evidence.
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SCHUH teaches a pod (i.e., a single-serve capsule) [0010] comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer. SCHUH does not teach a specific range for the ethanol content of 0-1 % ABV but does characterize the concentrate as alcohol free [0027]. It would have been obvious to provide an ethanol content of 0-1% alcohol by volume (ABV) given SCHUH teaches the concentrate is ethanol free.
[0024] of SCHUH states that the term “beer” describes a beverage brewed by fermenting malt with sugar and yeast and flavoring with hops. Thus, SCHUH seeks to provide a beer that mimics a beverage brewed by fermenting malt with sugar and yeast and flavoring with hops. Additionally, [0028] teaches that the flavor system can be altered by substituting or adding additional flavor compounds, as described herein, to the flavor system. Thus, various flavor compounds can be combined to form a flavor system which will provide the same flavors and/or aromas as conventionally brewed, distilled, aged and/or fermented beer, wine, liquor or mixed beverages. It would have been obvious to one skilled in the art to provide the flavor compounds that mimic a fermented beer.
Moreover, it is noted that the claimed invention is a product. The manner in how the concentrate is obtained (i.e., whether by fermentation or adding exogenous ingredients) does not result in a patentable difference. “[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) (citations omitted)
SCHUH also teaches a second compartment comprising an alcoholic liquid [0059]. The alcoholic liquid comprises an alcohol content of 0.1 to 80% ABV [0060].
As evidenced by ProBrewer, a general rule of thumb is that 1% ABV is roughly equivalent to 0.8% alcohol by weight. A more precise conversion formula is: ABW = ABV * 0.8. Thus, the alcohol wt.% can be up to 64 wt.% (80 * 0.8 = about 64 wt.%). This overlaps that claimed (i.e., 12-100 wt.%).
Moreover, the amount of alcoholic liquid can be selected based on the type of beverage being formed and/or can be controlled by a control system of an apparatus used to form the beverage. In this regard, it would have been obvious to vary the amount of alcoholic liquid and corresponding amount of water in the concentrate based on the type of beverage being formed. For example, given up to 64 wt.% of ethanol can be provided, it would have been obvious to add water in an amount of 26 wt.% or greater (i.e., 64 wt.% ethanol/26 wt.% water) .
SCHUH does not specifically teach that the total amount of ethanol and water constitute 80-100 wt.% of the alcoholic liquid.
However, as noted above, the amount of alcohol concentrate can be selected based on the type of beverage being formed and/or can be controlled by a control system of an apparatus used to form the beverage. Thus, it would have been obvious to vary the amount of alcohol content and corresponding amount of water in the concentrate based on the type of beverage being formed. In this regard, it would have been obvious to provide an alcoholic liquid where the ethanol and water together constitute 80-100 wt.% of the alcoholic liquid.
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As to the ratio of liquid beer concentrate to alcoholic liquid, SCHUH teaches a pod with a liquid beer concentrate 12 and alcoholic liquid 14 (see [0060 and Figure 1) :
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SCHUH is silent as to the precise ratio of liquid beer concentrate to alcoholic liquid. However, SCHUH teaches in [0059]-[0060] that the amount of alcohol concentrate/alcoholic liquid and amount of ethanol can vary based on the type of beverage being formed. It would have been obvious to vary the ratio liquid beer concentrate to alcoholic liquid, including in a weight ratio of 7:1 to 1:1 based on the beverage being produced.
Additionally, 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, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); 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 (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 (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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Claim 9 recites that the liquid beer concentrate is obtained by concentrating alcohol-free beer by membrane separation and/or freeze concentration. The recitation has been considered but the manner in which the liquid beer concentrate is concentrated is a product by process recitation with no evidence that the manner in which the liquid beer is concentrated results in a different composition.
"[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) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
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SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer. SCHUH does not teach a specific range for the ethanol content of 0-1 % ABV but does characterize the concentrate as alcohol free [0027]. It would have been obvious to provide an ethanol content of 0-1% alcohol by volume (ABV) given SCHUH teaches the concentrate is ethanol free.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of Andrés-Lacueva C, Mattivi F, Tonon D. Determination of riboflavin, flavin mononucleotide and flavin-adenine dinucleotide in wine and other beverages by high-performance liquid chromatography with fluorescence detection. J Chromatogr A. 1998 Oct 9;823(1-2):355-63. doi: 10.1016/s0021-9673(98)00585-8. PMID: 9818412 (LACUEVA).
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SCHUH is cited for the reasons noted above but silent as to the amount of riboflavin.
LACUEVA teaches that the occurrence of an unpleasant taste, variously described as “skunky”, “cooked cabbage” and “onion-garlic” following exposure to light has been reported in many beverages such as sparkling and white wines, beer, cider, milk and fruit juices. The detrimental effect of light on the aroma of these beverages is connected with different chemical processes for which riboflavin is required (see pg. 355, 1. Introduction). RF contents in beers have been reported typically in the range 100–575 μg/l (see pg. 356, left column, last line to right column, lines 1-3). This range overlaps that the claimed range of 250-3,000 μg/l.
It would have been obvious to one skilled in the art to maintain the riboflavin in the claimed range as LACUEVA teaches that this range is an acceptable level for commercial beers so as to prevent unpleasant tastes that result from reactions that rely on riboflavin.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of Aso, Studies on Beer I. On The Sugar Composition of Beers, Tohoku Journal of Agricultural Research 12 (3) 1961 (ASO).
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SCHUH teaches a pod with a beverage concentrate [0027]. That concentrate contains a “flavor system” that contains one or more flavor compounds that are used in combination to create beverages having the flavor, mouthfeel and/or aromas of a wide variety of wines, beers, liquors, and/or mixed alcoholic beverages [0028]. SCHUH teaches that sugars can be added to the concentrate (see [0042]; Fig. 9) but silent as to the amount of maltotetraose.
ASO studies the sugar composition of beers (abstract). ASO teaches that the sugar composition of beers can vary based on the type of beer (see Table 4 and 5 on pg. 267). As to maltotetraose, it is shown that the maltotetraose varies in beers from 2.30 g /100 ml to 11.12 g/ 100ml. This ranges from 23 g/L to 111.12 g/L (i.e., it follows 1 g/100ml = 10 g/L; 1 g/L = 0.1 g/100ml). This overlaps that claimed
It would have been obvious to one skilled in the art to provide maltotetraose in the range taught by ASO, as ASO teaches that this range is an acceptable levels for commercial beers.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of Victor Alexander Algazzali for the degree of Master of Science in Food Science and Technology presented on August 8, 2014, The Bitterness Intensity of Oxidized Hop Acids: Humulinones and Hulupones, Oregon State University (ALGAZZALI).
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As to claims 5-6, the references above are silent as to the amount of hop acids.
ALGAZZALI teaches that hop acids such as hulupones are naturally produced during the production of beer (pp. 17-18).
ALGAZZI conducted sensory tasting to determine the role of hop acids such as Humulinone and hulupone. Humulinone and hulupone extracts were prepared for evaluating their bitterness intensity in beer. The range of hop acid concentration levels were purposefully chosen to cover a range of sensory bitterness of just above detection to a strong bitter sensation, hence an iso-α-acid range of 6 to 30 mg/L was selected. The humulinone and hulupone concentration range of 8 to 40 mg/L (i.e., falling within that of claim 5) was chosen based on bench trials to achieve a similar sensory bitterness range of iso-α-acids (pg. 37, first full paragraphs).
The impact of these hop acids on the flavor and bitterness of the beer is substantial (pg. 10, first paragraph; pg. 48, lines 1-10).
It would have been obvious to provide the same amount of humulinone and hulupones in the references above to provide a beer with a similar hop acids profile, as ALGAZZI teaches that these amounts reflect the hop acid profile of beer. It would have been obvious to vary the amounts based on the desired taste and bitterness of beer. Additionally, it would have been obvious to vary the amount of hops acids based on the level of concentrate and level of dilution needed to make the final beer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of Meilgard, Prediction of Flavor Differences Between Beers From Their Chemical Composition, J. Agric. Food Chem. 1982, 30 1009-1017 (MEILGARD).
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The references above are silent as to ethyl acetate.
MEILGARD teaches that ethyl acetate is a component of beer ranging in amount of 14 to 17 mg/l (see Table I, pg. 1010). MEILGARD does not describe the ethyl acetate in terms of per kg of ethanol. However, MEILGARD does serve as a flavor (see Table VI, pg. 1013). It would have been obvious to vary the amounts of ethyl acetate based on the desired taste. Additionally, it would have been obvious to vary the amount of ethyl acetate based on the level of concentrate and level of dilution needed to make the final beer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of RUSSO et al., Investigation of Osmotic Distillation Technique for BEER Dealcoholization, Chemical Engineering Transactions, 32, 1735-1740 2013 (RUSSO).
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The references above are silent as to the alcoholic liquid comprising a distillate.
RUSSO teaches that ethanol obtained from osmotic distillation in the dealcoholization of beer can be used as a potential blending stock in the manufacture of alcoholic beverages (see Conclusions, pg. 1740).
Thus, it would have been obvious to one skilled in the art to use ethanol recovered from an osmotic distillation technique for beer dealcoholization, as RUSSO teaches the ethanol can be used a potential blending stock in the manufacture of alcoholic beverages.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of Aso, Studies on Beer I. On The Sugar Composition of Beers, Tohoku Journal of Agricultural Research 12 (3) 1961 (ASO) and Meilgard, Prediction of Flavor Differences Between Beers From Their Chemical Composition, J. Agric. Food Chem. 1982, 30 1009-1017 (MEILGARD).
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As noted above, SCHUH teaches a pod with a beverage concentrate [0027]. That concentrate contains a “flavor system” that contains one or more flavor compounds that are used in combination to create beverages having the flavor, mouthfeel and/or aromas of a wide variety of wines, beers, liquors, and/or mixed alcoholic beverages [0027]- [0028]. SCHUH teaches that sugars can be added to the concentrate (see [0042] and Fig. 9) but silent as to the amount of maltotetraose.
ASO studies the sugar composition of beers (abstract). ASO teaches that the sugar composition of beers can vary based on the type of beer (see Table 4 and 5 on pg. 267).
As to maltotetraose, it is shown that the maltotetraose varies in beers from 2.30 g /100 ml to 11.12 g/ 100ml. This ranges from 23 g/L to 111.12 g/L (i.e., it follows 1 g/100ml = 10 g/L). This overlaps that claimed.
Maltose varies in beers form 0 to 4.15 g/100ml. Thus, maltose is found in amounts up to 41.5 g/L (i.e., overlapping that of claim 10). It would have been obvious to vary the amounts based on the desired taste and sweetness of beer. Additionally, it would have been obvious to vary the amount of maltose based on the level of concentrate and level of dilution needed to make the final beer.
It would have been obvious to one skilled in the art to add maltotetraose and maltose, as ASO teaches they are sugars found in beer and their amounts can be varied based on the desired type of beer and flavor of beer that one would like to produce.
The references above are silent as to acetic acid.
However, MEILGARD teaches that acetic acid is a flavor component of beer ranging in amount of 30-200 mg/l (see Table V, pg. 1012).
Thus, it would have been obvious to add acetic acid to the beer of the references above as acetic acid is a flavor component of beer.
It would have been obvious to vary the amounts of ethyl acetate based on the desired taste. Additionally, it would have been obvious to vary the amount of ethyl acetate based on the level of concentrate and level of dilution needed to make the final beer.
“It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious). **
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
The applicant argues that the first compartment comprises a liquid beer concentrate of an alcohol-free fermented beer, meaning the claimed liquid beer concentrate of an alcohol-free fermented beer possesses the specific chemical fingerprint of fermentation. Applicant refers the Office to Example 1 of the application (Table 2), which shows that the concentrate obtained from a liquid alcohol-free fermented beer contains maltotetraose (22 g/L) and Free Amino Nitrogen (FAN, 310 mg/L). Maltotetraose is an oligosaccharide naturally formed during mashing which is not fermented by yeast, and FAN is derived from the proteolytic breakdown of barley proteins. Such compounds characteristic of fermentation are not part of Schuh's "alcoholic beverage flavor system."
However, [0024] of SCHUH states that the term “beer” describes a beverage brewed by fermenting malt with sugar and yeast and flavoring with hops. Thus, SCHUH seeks to provide a beer that mimics a beverage brewed by fermenting malt with sugar and yeast and flavoring with hops. Additionally, [0029] teaches that the flavor system can be altered by substituting or adding additional flavor compounds, as described herein, to the flavor system. Thus, various flavor compounds can be combined to form a flavor system which will provide the same flavors and/or aromas as conventionally brewed, distilled, aged and/or fermented beer, wine, liquor or mixed beverages. It would have been obvious to one skilled in the art to provide the flavor compounds that mimic a fermented beer.
Moreover, the claims are not commensurate in scope with applicant arguments. None of the applicant’s claims require maltotetraose or FAN. The composition of the beer concentrate in Table 2 cited by applicant are from a very specific non-hopped lager containing 5% ABV that was de-alcoholised by vacuum distillation. The de-alcoholised beer is then treated with a very specific type of nanofiltration membrane (see pg. 21 of applicant’s specification). There is no indication that even de-alcoholised beers obtained by different methods would even have the same compounds.
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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