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 .
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.
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.
Claims 1-2, 11-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent No. 4,265,920 (THIJSSEN) (IDS of 11/10/2022) in view of WO2014/159458 (See IDS of 11/10/2022). ProBrewer, Percent Alcohol Conversion Calculator, accessed at http ://probrewer.com/tools/percent-alcohol-conversion-calculator/ (ProBrewer) is cited as evidence.
Claim 1
THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). In the Example, an alcoholic beverage is with 10% of alcohol is used (col. 4, lines 60-65).
THIJSSEN teaches a first step in which substantially all of the alcohol and the more volatile aroma components are separated by a process of distillation at strongly reduced pressure, from the bulk of the aqueous solution and in which the vapors containing alcohol and more volatile aroma components obtained by the distillation process are condensed in a condenser (col. 3, lines 27-32)
THIJSSEEN teaches a second step in which the aqueous solution obtained in step (a), is concentrated by removing water in a process of freeze concentration while retaining in the solution the aroma components remaining from step a) (col. 3, lines 33-36).
The references above do not teach the ethanol content of each fraction or packaging the ethanol and flavor concentrate.
SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer [0010]. 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.
SCHUH also teaches a second compartment comprising an alcoholic liquid. 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, SCHUH teaches 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 [0060]. 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.
Claim 2
THIJSSEN teaches that the distillation is carried out with a reduced pressure and vacuum pump (col. 4, lines 32-40).
Claim 11
THIJSSEEN teaches a second step in which the aqueous solution obtained in step (a), is concentrated by removing water in a process of freeze concentration while retaining in the solution the aroma components remaining from step a) (col. 3, lines 33-36).
Claim 12
THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). In the Example, an alcoholic beverage is with 10% of alcohol is used (col. 4, lines 60-65). However, it would have been obvious to that the alcohol content would vary based on the type of wine and beer used.
It is noted that 1-10mg/l of hop acids includes zero. Thus, hop acids are c
Claim 14
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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The references above are silent as to the precise ratio of liquid beer concentrate to alcoholic liquid. However, SCHUH teaches in [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.").
Claims 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over THIJSSEN in view of SCHUH as evidenced by ProBrewer as applied to claim 1 above, and further in view of United States Patent No. 10,273,439 (PETERSON).
As noted above, THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer.
However, the references are silent as to using membranes.
PETERSON teaches reverse osmosis reverse can be used concentrate beverages. Reverse osmosis relies on membranes may be made of any suitable materials, such as polyamide, which is commonly used in reverse osmosis membranes and generally has ethanol rejection efficiencies lower than 30%. To drive the movement of alcohol, water and other components through the membrane, pressure may be applied to the feed stock. In this regard, it would have been obvious to vary the pressure based on the desire level of separation and membrane type (col. 7, lines 35-55).
As to claims 3-8, Example 1 of the present specification on page 20 shows that a membrane with a molecular weight cut off of approximately 200 Da. PETERSON teaches at col. 7, lines 40-45 that the Daltons range from 50 to about 500 Daltons. Thus, it appears that the membranes used by applicant fall within the range taught by PETERSON.
Additionally, PETERSON teaches that different size and techniques can be used in a process on the alcoholic beverage to form a concentrate (col. 7, lines 35-40). In this regard, it would have been obvious to vary the cutoff of the membrane based on technique and type of membrane used.
Moreover, the applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
As to claims 9-10, PETERSON teaches that reverse osmosis relies on membranes as noted above. To drive the movement of alcohol, water and other components through the membrane, pressure may be applied to the feed stock. In this regard, it would have been obvious to vary the pressure based on the desire level of separation and membrane type (col. 7, lines 35-55).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over THIJSSEN in view of 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).
As noted above, THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer.
The references above are silent as to the presence and amount of hop acids.
ALGAZZALI teaches that hop acids such as hulupones are naturally produced during the production of beer (pg. 37, first full paragraphs).
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 15 is rejected under 35 U.S.C. 103 as being unpatentable over THIJSSEN in view of 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).
As noted above, THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer.
The references above are 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 16 is rejected under 35 U.S.C. 103 as being unpatentable over THIJSSEN in view of 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).
As noted above, THIJSSEN teaches a method for preparing a beer concentrate (col. 3, lines 20-26). SCHUH teaches a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer.
The references above are silent as to the addition of ethyl acetate.
MEILGARD teaches that ethyl acetate is a component of beer (see Table I, pg. 1010). MEILGARD does not describe the ethyl acetate in terms of per mg/kg of ethanol but indicates that ethyl acetate is present in terms of mg/L – 20/40 g/l (see Table V, pg. 1012). However, it is noted that MEILGARD does teach that the compounds serves 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 (i.e. more would be in a concentrate as opposed to starting beer material) and level of dilution needed to make the final beer.
Response to Arguments
Applicant's arguments filed November 18, 2025, have been fully considered but they are not persuasive.
The applicant argues that Thijssen teaches a three-step process for preparing an alcoholic concentrate: a first step of removing the volatile components and alcohol from the bulk of the aqueous solution through distillation to produce an aqueous distillate, whereby the vapors containing the alcohol and volatile aroma components removed from the aqueous solution are condensed in a condenser to produce a condensate; a second step of removing water from the distillate through freeze concentration to produce a liquid concentrate, and a third step of recombining the liquid concentrate of the second step with the condensate comprising alcohol and volatile aroma components of the first step (see Thijssen, Abstract and claim 1), thereby providing a concentrated alcoholic beverage. It is argued that Thijssen requires the third recombination step to produce an alcoholic concentrate and that one skilled in the art would not combine such as process with SCHUH.
However, SCHUH is cited to show that a pod (i.e., a single-serve capsule) comprising a first compartment containing a liquid beer concentrate of an alcohol-free beer and a second compartment comprising an alcoholic liquid was known at the time the application was filed [0010]. One skilled in the art would have still needed a process to obtain the two components. Thus, it still would have been obvious to combine Thijssen and SCHUH.
The applicant also argues that a person of ordinary skill in the art would understand that failing to recombine the fractions, which would result in a de-aromatized concentrate and a separate alcohol fraction, neither of which represents a desirable end product, is contrary to the purpose of Thijssen, i.e., production of an alcoholic beverage concentrate.
However, there is no indication in Thijssen or SCHUH that such compounds are lost. Attorney arguments cannot replace factual evidence in patent prosecution; they must be supported by affidavits, declarations, or other objective evidence to rebut examiner rejections.
The applicant also argues that SCHUH is limited to dry or semi-solid products. However, [0027] of SCHUH indicates this is a preferred embodiment and notes that the semi-dry form can be obtained by conventional concentration processes.
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
The applicant also argues that SCHUH requires a “fresh” ethanol.
However, there is no such requirement. Moreover, [0027]-[0029] of SCHUH indicate that the concentrate can be obtained from beer.
The applicant also argues that their specification shows that the liquid beer concentrate produced by the claimed method offer significant advantages over ethanol-containing concentrates (e.g., those described in Thijssen). The liquid beer concentrate produced by the present method has high physicochemical stability due to its very low ethanol content, as "the physicochemical stability of the liquid beer concentrate obtained by the present process is very high due to the very low (or zero) ethanol content." It is argued that this stability contrasts sharply with the problems inherent in ethanol-containing concentrates such as the ones disclosed by Thijssen, which suffer from flavor degradation through "the formation of ethyl esters (e.g., ethyl acetate) and haze formation" due to precipitation of proteins and/or saccharides."
However, no comparison is actually with Thijssen is actually provided. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960) (deviations from example were inconsequential).
Conclusion
THIS ACTION IS MADE FINAL. 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.
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