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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 22, 2026 has been entered.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
49-62
Withdrawn claims:
60-61
Previously canceled claims:
1-48
Newly canceled claims:
None
Amended claims:
58
New claims:
None
Claims currently under consideration:
49-59, 62
Currently rejected claims:
49-59, 62
Allowed claims:
None
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 49-54 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Czarnik (US 2011/0046236 A1)(IDS Reference filed 11/14/2022) in view of Richter (DE 952441C)(IDS Reference filed 11/14/2022), Quertemont (Quertemont, Etienne, et al. “Role of Acetaldehyde in Mediating the Pharmacological and Behavioral Effects of Alcohol”, Alcohol Research and Health, Vol. 29, No. 4, published 2006 [accessed online July 2, 2026]), and Haadsma (US 5,708,018 A)(IDS Reference filed 11/14/2022).
Regarding claims 49-52 and 62, Czarnik teaches a deuterated alcohol (i.e., a substitute to normal alcohol; Abstract) where the beverage base can be beer ([0051]) or alcopop ([0050]).
Czarnik does not teach the beverage comprising 5-methoxy-2-aminoindan or wherein the beverage is a beer substitute comprising up to 0.70 mg/mL of 5-methoxy-2-aminoindan or the beverage is an alcopop substitute comprising up to 0.60 mg/mL.
Regarding the beverage comprising 5-methoxy-2-aminoindan, Richter teaches of analgesically active 2-aminoindan compounds ([0001]) including 5-methoxy-2-aminoindan ([0004]) (claims 52 and 62). 5-methoxy-2-aminoindan corresponds to R1 of -O(C1-C8)alkyl (i.e., -OCH3)(claim 51); R2 of H (claim 51); R3 of H (claim 50); and R4 of H (claim 50).
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 beverage of Czarnik with the addition of 5-methoxy-2-aminoindan taught by Richter. One of ordinary skill would have been motivated to make this modification because Czarnik teaches that the composition of the invention (i.e., the deuterated ethanol) leads to a slower formation of acetaldehyde ([0026]) and Quertemont teaches that acetaldehyde alters various brain signaling mechanisms, including the mechanism of brain opioids that induce pain relief (i.e., analgesia; p. 260, col. 2, ¶ 5). Therefore, one of ordinary skill would be motivated to add 5-methoxy-2-aminoindan because Richter teaches that the compound has analgesic properties ([0001]) to replace the lost analgesic properties from slower production of acetaldehyde.
Although the cited prior art does not teach the amount of 5-methoxy-2-aminoindan to add to the beverage, Haadsma teaches of 2-aminoindan analogs (col. 1, lines 10-11) including 5-methoxy-2-aminoindan (col 6, line 52), and administering the 2-aminoindan analogs in a therapeutically effective amount orally (col. 4, lines 8-13). Therefore, one of ordinary skill in the art would have adjusted the amount of 5-methoxy-2-aminoindan during routine optimization to find the amount that results in the desired therapeutic amount to replace the analgesic effect that was lost by deuterizing the ethanol of Czarnik. 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 ranges would thus be obvious.
Regarding claim 53, Czarnik in view of Richter and Haadsma teach all elements of claim 49. Czarnik also teaches when the beverage is beer, it comprises between 0.25% and 15.0% alcohol ([0051]), which overlaps with the claimed range of “more than 0.01% by volume but less than 0.50% by volume”.
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 54, Czarnik in view of Richter and Haadsma teach all elements of claim 49. Czarnik also teaches when the beverage is an alcopop, it comprises between 0.25% and 20.0% alcohol ([0050]), which overlaps with the claimed range of “more than 0.01% by volume but less than 1.00% by volume”.
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.
Claims 55-59 are rejected under 35 U.S.C. 103 as being unpatentable over Czarnik (US 2011/0046236 A1)(IDS Reference filed 11/14/2022) in view of Richter (DE 952441C)(IDS Reference filed 11/14/2022) and Quertemont (Quertemont, Etienne, et al. “Role of Acetaldehyde in Mediating the Pharmacological and Behavioral Effects of Alcohol”, Alcohol Research and Health, Vol. 29, No. 4, published 2006 [accessed online July 2, 2026]).
Regarding claim 55, Czarnik teaches a deuterated alcohol (i.e., a substitute to normal alcohol; Abstract) where the beverage base can be beer ([0051]), wine ([0052]), or other ingredients including water, fruit juice, and/or soda ([0078]).
Czarnik does not teach the beverage comprising 5-methoxy-2-aminoindan.
Regarding the beverage comprising 5-methoxy-2-aminoindan, Richter teaches of analgesically active 2-aminoindan compounds ([0001]) including 5-methoxy-2-aminoindan ([0004]).
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 beverage of Czarnik with the addition of 5-methoxy-2-aminoindan taught by Richter. One of ordinary skill would have been motivated to make this modification because Czarnik teaches that the composition of the invention (i.e., the deuterated ethanol) leads to a slower formation of acetaldehyde ([0026]) and Quertemont teaches that acetaldehyde alters various brain signaling mechanisms, including the mechanism of brain opioids that induce pain relief (i.e., analgesia; p. 260, col. 2, ¶ 5). Therefore, one of ordinary skill would be motivated to add 5-methoxy-2-aminoindan because Richter teaches that the compound has analgesic properties ([0001]) to replace the lost analgesic properties from slower production of acetaldehyde.
Regarding claim 56, Czarnik teaches a deuterated alcohol (i.e., a substitute to normal alcohol; Abstract) where the beverage base can be wine ([0052]).
Czarnik does not teach the beverage comprising 5-methoxy-2-aminoindan.
Regarding the beverage comprising 5-methoxy-2-aminoindan, Richter teaches of analgesically active 2-aminoindan compounds ([0001]) including 5-methoxy-2-aminoindan ([0004]).
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 beverage of Czarnik with the addition of 5-methoxy-2-aminoindan taught by Richter. One of ordinary skill would have been motivated to make this modification because Czarnik teaches that it is known in the art deuterization results in a reduction is analgesic properties. Therefore, one of ordinary skill would be motivated to add 5-methoxy-2-aminoindan because Richter teaches that the compound has analgesic properties.
Regarding claim 57, Czarnik in view of Richter teach all elements of claim 56. Czarnik also teaches that when the beverage is wine, it typically comprises between 0.25% and 15.0% alcohol ([0052]), which overlaps with the claimed range of “more than 0.01% by volume but less than 5.0% by volume”.
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 58, Czarnik teaches a deuterated alcohol (i.e., a substitute to normal alcohol; Abstract) where the beverage base can be soju ([0059]), which is a spirit ([0046]).
Czarnik does not teach the beverage comprising 5-methoxy-2-aminoindan.
Regarding the beverage comprising 5-methoxy-2-aminoindan, Richter teaches of analgesically active 2-aminoindan compounds ([0001]) including 5-methoxy-2-aminoindan ([0004]).
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 beverage of Czarnik with the addition of 5-methoxy-2-aminoindan taught by Richter. One of ordinary skill would have been motivated to make this modification because Czarnik teaches that it is known in the art deuterization results in a reduction is analgesic properties. Therefore, one of ordinary skill would be motivated to add 5-methoxy-2-aminoindan because Richter teaches that the compound has analgesic properties.
Regarding claim 59, Czarnik in view of Richter teach all elements of claim 56. Czarnik also teaches that when the beverage is soju (i.e., a spirit), it comprises between 0.25% to 50.0% alcohol ([0059]), which overlaps with the claimed range of “more than 0.01% by volume but less than 15% by volume”.
Response to Arguments
Claim Rejections – 35 U.S.C. §103 of claims 49-54 and 62 over Czarnik, Richter, and Haadsma: Applicant’s arguments filed May 22, 2026 have been fully considered but they are not persuasive.
Applicant argued that one of ordinary skill in the art wouldn’t have modified Czarnik because Czarnik does not identify any deficiencies (Remarks, p. 10, ¶ 3-4).
This argument has been considered. However, although Czarnik does not suggest any deficiency, Czarnik does not allege to have perfected the product in a way that would leave no room for improvement. Thus, one of ordinary skill would recognize that the beverage of Czarnik is open to further improvements.
Applicant argued that Czarnik is silent regarding the impact of deuteration on ethanol and only teaches the benefits of deuterizing ethanol. Applicant further argued that Examiner’s reliance on Zambelli is improper because Zambelli was published after the priority date of the application (Remarks, p. 11, ¶1- p. 12, ¶ 1).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have expected the deuterated ethanol to have a similar property as that of deuterated morphine as taught by Czarnik. There is nothing to suggest in Czarnik that deuterization would have different effects on different products that all have analgesic properties. Zambelli is not relied upon in the obviousness rejection of claim 49, but is merely used to provide evidence that the slower formation of acetaldehyde as disclosed by Czarnik (prior to the EFD of the application) inherently results in reduced analgesic effects. Regardless, the rejection of claim 49 has been amended to include Quertemont, who teaches the analgesic effect of acetaldehyde formation.
Applicant also argued that Czarnik includes a list of analgesics suitable for use with deuterated ethanol that does not include the Applicant’s claimed compounds of Formula I (Remarks, p. 12, ¶ 2- p. 13, ¶ 2).
This argument has been considered. However, Czarnik’s disclosure of specific analgesic compounds to include in the invention does not teach away from the use of addition analgesics that were not disclosed by Czarnik. MPEP §2123(I) states “The court held that the prior art anticipated the claims even though it taught away from the claimed invention. ‘The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.’” Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998). The Examiner maintains that one of ordinary skill would have found it obvious to include 5-methoxy-2-aminoindan as the analgesic of Czarnik.
Applicant further argued that Czarnik does not teach or suggest any deficiencies with the deuterated ethanol and does not provide a motivation to include a different analgesic. Applicant then argued that Richter does not cure the deficiencies as Richter is silent regarding deuterated ethanol (Remarks, p. 13, ¶ 3-5).
This argument has been considered. However, as stated above, although Czarnik does not suggest any deficiency, Czarnik does not allege to have perfected the product in a way that would leave no room for improvement. Thus, one of ordinary skill would recognize that the beverage of Czarnik is open to further improvements. Additionally, the Examiner maintains that one of ordinary skill in the art would have included 5-methoxy-2-aminoindan in the product of Czarnik because of the reduced analgesic effect of deuterated alcohol as described above. Furthermore, 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 merely identifying components in the claims is not sufficient to form a prima facie case of obviousness and that the Examiner has relied on impermissible hindsight (Remarks, p. 14, ¶ 2- 3).
This argument has been considered. However, MPEP §2143.01(IV) states “A statement that modifications of the prior art to meet the claimed invention would have been "‘well within the ordinary skill of the art at the time the claimed invention was made’" because the references relied upon teach that all aspects of the claimed invention were individually known in the art is not sufficient to establish a prima facie case of obviousness without some objective reason to combine the teachings of the references. Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993).” MPEP §2142 states “After indicating that the rejection is under 35 U.S.C. 103, the examiner should set forth in the Office action: (A) the relevant teachings of the prior art relied upon, preferably with reference to the relevant column or page number(s) and line number(s) where appropriate, (B) the difference or differences in the claim over the applied reference(s), (C) the proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter, and (D) an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the relevant time.” The Examiner has provided all of the requirements to establish a prima facie case of obviousness above in the 35 USC §103 rejections of the claims. The rejection of claim 49 includes the proposed modification to arrive at the claimed subject matter and an explanation to why it would have been obvious at the relevant time.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant also argued that Haadsma does not cure the deficiencies because Haadsma does not teach adding the claimed compounds to an alcoholic beverage-substitute and that again, it appears that the Examiner relies on impermissible hindsight reasoning (Remarks, p. 14, ¶ 4- p. 15, ¶ 3).
This argument has been considered. However, 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). Examiner maintains that Haadsma is adequate for all that is relied on in the present claim rejections, and the combination of references is adequate to deem the present claims obvious.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Rejections – 35 U.S.C. §103 of claims 55-59 over Czarnik and Richter: Applicant’s arguments filed May 22, 2026 have been fully considered but they are not persuasive.
Applicant argued that one of ordinary skill would not have been motivated to combine Czarnik and Richter’s teachings with a reasonable expectation of success (Remarks, p. 16, ¶ 1-2).
This argument has been considered. However, the Examiner maintains that one of ordinary skill would have expected the deuterated ethanol to have a similar property as that of deuterated morphine as taught by Czarnik. There is nothing to suggest in Czarnik that deuterization would have different effects on different products that all have analgesic properties. Regardless, the rejection of claim 49 has been amended to include Quertemont, who teaches the analgesic effect of acetaldehyde formation.
The rejections of claims 49-59 and 62 have been maintained herein.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.S.H./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
Prosecution Insights