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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/3/2026 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.
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 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) and Scheer et al., Simulation of vacuum distillation to produce alcohol-free beer, J. Inst. Brew. 2020; 126: 77–82, published online on 14 November 2019 (SCHEER). ProBrewer, Percent Alcohol Conversion Calculator, accessed at http ://probrewer.com/tools/percent-alcohol-conversion-calculator/ (ProBrewer) is cited as evidence.
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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 a greater part of the alcohol and volatile aroma components are separated by a process of distillation, preferably at a strongly reduced pressure (col. 3, lines 27-32) (col. 4, lines 20-25
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]. ). It would have been obvious that a fraction with lesser amounts ethanol would include a greater water content (i.e., the amount of ethanol directly affects the amount of water present).
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.
The references above are silent as to the amount of amyl alcohols.
SCHEER teaches that amyl alcohols such as 2-methyl-1-butanol and 3-methyl-1-butanol are natural flavor compounds found in beer (see pg. 79,Table 1). It is taught that the two compounds are in an amount of 54.4 mg/L (see pg. 79,Table 1). Given an average alcohol content of 5% for a beer, 1,379 mg of isoamyl alcohol per kg of ethanol is present (i.e., ethanol per liter of 50 ml; density of ethanol of 0.789 g/mL, 50 mL x 0.789 g/mL =39.45 g (0.03945); 54.4 mg of amyl alcohols/0.03945 = 1,378.96). SCHEER teaches in the right column on pg. 79 that the main purpose of distillation for both the production of distilled beverages and ethanol is to control the ethanol. One can control the ethanol fraction and resulting remaining beer concentrate by controlling the parameters (i.e., pressure used) of vacuum distillation (pg. 80). In particular, the concentration of flavor compounds, including amyl alcohols, in the feed stream of the distillation column for the three Processes (A, B and C) are shown in Table 3. Thus, it would have been obvious to vary the total amount of amyl alcohols in the beer concentrate and ethanol fraction based on the desired flavor of the resulting fractions. It also would have been obvious that the total amount of amyl alcohols in the ethanol fraction would vary based on the length of distillation and desired amount of the ethanol one would want on the ethanol fraction.
Claim 2
THIJSSEN teaches that the distillation is carried out with a reduced pressure and vacuum pump (col. 4, lines 32-40). The distillation temperature does not exceed 40-50oC for 30 minutes (col. 4, lines 1-5). In Example 6, THIJSSEN teaches a reduced pressure of 60 mm mercury is used ( 60 mm mercury = 79bar). Thus, both the temperature and pressure fall within the claimed ranges.
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 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, SCHUH, and SCHEER 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 to concentrate beverages. Reverse osmosis relies on membranes that may be made of any suitable material, 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, SCHUH, and SCHEER 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, SCHUH, and SCHEER 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, SCHUH, and SCHEER 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 6/3/2026 have been fully considered but they are not persuasive.
The applicant argues that the current claims now require that the alcoholic liquid fraction obtained following distillate provides for the removal of less ethanol and 400-5,000 mg amyl alcohols per kg of ethanol. These amyl alcohols are important beer flavor volatiles that originate from the alcoholic beer and allegedly have boiling points in the range of 102-138.5°C (215.6-281.3°F). Since these boiling points are substantially higher than the boiling point of ethanol, which is 78.2 °C (172.8 °F) amyl alcohols do not qualify as aroma components that are more volatile than alcohol according to THIJSSEN's process.
However, SCHEER teaches this feature.
Additionally, this does not take the overall teachings of THIJSSEN into consideration. THIJSSEN teaches a first step in which a greater part of the alcohol and volatile aroma components are separated by a process of distillation, preferably at a strongly reduced pressure (col. 3, lines 27-32). Thus, the amount of ethanol and amyl alcohols (i.e. aroma components) in the resulting fraction would vary based on the distillation parameters (e.g. time, temperature, pressure) and type of beverages being concentrated.
While the applicant also argues that THIJSSEN does not teach the temperature and pressure parameters required to obtain the claimed amount of amyl alcohols, the claims are largely silent as to the temperature and pressure of the distillation. It is also noted that claim 2 recites that the vacuum distillation is at a temperature of 10-100oC and pressure of not more than 500 mbar. This appears to be the same as some of the preferred embodiments (i.e., not overall teaching of THIJSSEN) of THIJSSEN (e.g., THIJSSEN teaches 40-50oC at col. 4, lines 1-2 and pressure of 60 mm mercury which is the same as 79 mbar). Thus, applicant’s arguments are not commensurate in scope with the claims and THIJSSEN appears to teach preferred parameters of the present invention.
The applicant also argues that wine is distilled to produce a distillate having an ethanol content of 90 wt.%, which is substantially greater than the claimed 13-82 wt% ethanol present in the alcoholic liquid of the present claims.
However, this is merely a preference and does not reflect the overall teachings of THIJSSEN. As noted above, THIJSSEN teaches a first step in which only a greater part of the alcohol is removed. The overall teachings do not limit THIJSSEN to 90%.
Conclusion
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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