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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 1, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. US 2014/0255585 in view of Possner et al. “Methanol contents of fruit juices and smoothies in comparison to fruits and a simple method for the determination thereof” (published February 2014) (herein referred to as “Possner”), Oh “Simultaneous Gas Chromatographic Quantitation of Ethanol and Methanol from Beer” (published February 2020) (herein referred to as “Oh”), Nakajima US 2016/0143339, Dorr et al. US 2008/0220121, and Teranishi et al. US 2015/0313271.
Regarding Claim 1, Joshi et al. discloses a beer taste beverage (‘585, Paragraphs [0006] and [0093]) obtained without using fruit, fruit skin, or fruit juice (beverage contains aqueous vegetable sugar containing extract) (‘585, Paragraph [0009]).
Joshi et al. discloses the beer taste beverage being made using aqueous vegetable sugar containing extract (‘585, Paragraph [0009]). However, Joshi et al. is silent regarding the methanol concentration of the beer taste beverage being 9.6 to 478 mg/L.
Possner et al. discloses that methanol occurs naturally in vegetables where it is bonded to pectins and can be released during processing to derived products like vegetable juice by enzymatic activities and that food additives that contain methanol in non-alcoholic beverages are dimethyldicarbonate (DMDC) which is added to increase microbiological stability and decomposes rapidly into carbon dioxide and methanol after being added (Possner, Page 65) wherein the methanol concentration of vegetable juices ranges from 12 mg/L to 200 mg/L (Possner, Page 66), which falls within the claimed methanol concentration range of 9.6 to 478 mg/L. Oh discloses methanol is present at low concentrations in various plant based products and dimethyl dicarbonate (DMDC) (Oh, Page 3249).
Both Joshi et al. and Possner are directed towards the same field of endeavor of vegetable based non-alcoholic beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the methanol concentration of the beverage of Joshi et al. to fall within the claimed methanol concentration range as taught by Possner et al. since where the claimed methanol concentration ranges encompasses methanol concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the methanol concentration within the non-alcoholic beverage comprising vegetable juices will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such methanol concentration of the non-alcoholic beverage comprising vegetable juices is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the methanol concentration of the vegetable based non-alcoholic beverage of Joshi et al. based upon the desired microbiological stability as suggested by Possner et al. Furthermore, Oh teaches that methanol is already present at low concentrations in various plant based products and dimethyl dicarbonate (DMDC) (Oh, Page 3249).
Further regarding Claim 1, Joshi et al. modified with Possner et al. and Oh is silent regarding the total nitrogen content of the beer taste beverage to be 0.5000 to 40.0 mg/100 mL or more.
Nakajima et al. discloses a non-alcoholic beer taste beverage (‘339, Paragraph [0001]) containing a nitrogen source composed of an amino acid containing material other than barley or malt, and hops (‘339, Paragraph [0033]) and an apparent extract concentration (‘339, Paragraphs [0034] and [0039]). Nakajima et al. further discloses a raw material having a comparatively high amino acid content such as protein (‘339, Paragraph [0029]) wherein the raw material protein is a soybean protein, which has good nutritional properties and exhibits good digestibility and absorbability (‘339, Paragraph [0038]).
Both modified Joshi et al. and Nakajima et al. are directed towards the same field of endeavor of non-alcoholic beer taste beverages. Although Nakajima et al. does not explicitly state that the nitrogen content of the beer taste beverage is 0.500 to 40.0 mg/100 mL or more, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beer taste beverage of modified Joshi et al. and adjust the nitrogen content that encompasses the soybean protein and amino acid content of the beer taste beverage and adjust the nitrogen content to be within the claimed nitrogen concentration range of 0.500 to 40.0 mg/100 mL or more since differences in the nitrogen concentration within the non-alcoholic beverage will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such nitrogen concentration of the non-alcoholic beverage is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the nitrogen content of the beer taste beverage of modified Joshi et al. based upon the desired digestibility and absorbability of the beverage as suggested by Nakajima et al. (‘339, Paragraph [0038]).
Further regarding Claim 1, Joshi et al. modified with Possner et al., Oh, and Nakajima et al. is silent regarding the apparent extract concentration of the beer taste beverage to be 0.300 to 2.2% by mass.
Dorr et al. discloses a nonalcoholic beer taste beverage comprising an apparent extract sweetener of 2.40 wt% (‘121, Table 11), which is close to but does not overlap the claimed apparent extraction concentration of 0.300 to 2.2% by mass. Teranishi et al. also discloses a non-alcohol non-fermented beer taste beverage (‘271, Paragraph [0013]) wherein the total amount of extract components affects the foam formed on the surface of the non-alcohol beer taste beverage (‘271, Paragraph [0022]) wherein non-alcohol beer taste beverages are often produced without fermenting the ingredients since fermentation produces alcohol (‘271, Paragraph [0003]) wherein the total amount of the extract components is the sum of the extract component contained in the non-alcohol beer taste beverage (‘271, Paragraph [0021]) wherein the total amount of the extract component is in the range of between 0.1% to 2% by weight to provide a sufficient quality of high foam retention to the foam formed on the surface to provide a beer like appearance (‘271, Paragraph [0022]) wherein soybean saponin and soybean plant protein additives are used (‘271, Paragraph [0054]). The disclosure of the total amount of extract being in the range of between 0.1% to 2% by weight overlaps the claimed apparent extract concentration of 0.300 to 2.22% by mass.
Modified Joshi et al., Dorr et al., and Teranishi et al. are all directed towards the same field of endeavor of nonalcoholic beer taste beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the apparent extract concentration of the beer taste beverage of modified Joshi et al. and incorporate an extract concentration that falls within the claimed apparent extract concentration as taught by Teranishi et al. since where the claimed apparent extract concentration ranges overlaps apparent extract concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Additionally, it would have also been obvious to one of ordinary skill in the art at the time of the invention to modify the apparent extract concentration of the beer taste beverage of modified Joshi et al. and incorporate an extract concentration that falls within the claimed apparent extract concentration as taught by the close concentration of Dorr et al. since a prima facie case of obviousness exists where the claimed apparent extract concentration ranges or amounts do not overlap with the prior art but are merely close in view of Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (MPEP § 2144.05.I.). Furthermore, differences in the apparent extract concentration of the beer taste beverage will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such apparent extract concentration is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the apparent extract concentration of modified Joshi et al. based upon the desired foaming abilities as taught by Teranishi et al. (‘271, Paragraph [0022]).
Further regarding Claim 1, Joshi et al. modified with Possner et al., Oh, Nakajima et al., Dorr et al., and Teranishi et al. is silent regarding a ratio of the total nitrogen content to the apparent extract concentration being 0.333 to 133. However, Nakajima et al. discloses a non-alcoholic beer taste beverage (‘339, Paragraph [0001]). The non-alcoholic beer taste beverage comprises a nitrogen source composed of an amino acid containing material other than barley or malt, and hops (‘339, Paragraph [0033]) and an apparent extract concentration (‘339, Paragraphs [0034] and [0039]). Nakajima et al. further discloses the raw material having a comparatively high amino acid content such as protein (‘339, Paragraph [0029]) wherein the raw material protein is a soybean protein, which has good nutritional properties and exhibits good digestibility and absorbability (‘339, Paragraph [0038]). Teranishi et al. also discloses a non-alcohol non-fermented beer taste beverage (‘271, Paragraph [0013]) wherein the total amount of extract components affects the foam formed on the surface of the non-alcohol beer taste beverage (‘271, Paragraph [0022]) wherein non-alcohol beer taste beverages are often produced without fermenting the ingredients since fermentation produces alcohol (‘271, Paragraph [0003]) wherein the total amount of the extract components is the sum of the extract component contained in the non-alcohol beer taste beverage (‘271, Paragraph [0021]) wherein the total amount of the extract component is in the range of between 0.1% to 2% by weight to provide a sufficient quality of high foam retention to the foam formed on the surface to provide a beer like appearance (‘271, Paragraph [0022]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the ratio of the total nitrogen content to the apparent extract concentration of the beer taste beverage of modified Joshi et al. since differences in the ratio of the total nitrogen content to the apparent extract concentration within the non-alcoholic beverage comprising vegetable juices of modified Joshi et al. will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such methanol concentration of the non-alcoholic beverage comprising vegetable juices is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the ratio of the total nitrogen content to the apparent extract concentration of the beer taste beverage of modified Joshi et al. based upon the desired digestibility and absorbability as taught by Nakajima et al. (‘339, Paragraph [0038]) as well as the desired foam retention as taught by Teranishi et al. (‘271, Paragraph [0022]).
Regarding Claim 8, Joshi et al. discloses the beverage being carbonated so it contains 100% to 500% by volume of carbon dioxide (‘585, Paragraph [0031]), which falls within the claimed carbon dioxide concentration of 0.460% by mass or more. Where the claimed carbon dioxide concentration ranges overlaps carbon dioxide concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the carbonation levels of the beer taste beverage will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such carbonation levels is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the carbonation levels of modified Joshi et al. based upon the carbonation and mouthfeel of the final beer taste beverage.
Regarding Claim 9, Joshi et al. discloses the beer taste beverage being a packaged beverage (‘585, Paragraph [0094]). Furthermore, it is known in the art to package beverages to storage and for later shipping.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. US 2014/0255585 in view of Possner et al. “Methanol contents of fruit juices and smoothies in comparison to fruits and a simple method for the determination thereof” (published February 2014) (herein referred to as “Possner”), Oh “Simultaneous Gas Chromatographic Quantitation of Ethanol and Methanol from Beer” (published February 2020) (herein referred to as “Oh”), Nakajima US 2016/0143339, Dorr et al. US 2008/0220121, and Teranishi et al. US 2015/0313271 as applied to claim 1 above in further view of Takeuchi et al. US 2017/0318848.
Regarding Claim 6, Dorr et al. discloses the beer taste beverage comprising preservatives (‘271, Paragraph [0051]). However, Joshi et al. modified with Possner et al., Oh, Nakajima, Dorr et al., and Teranishi et al. is silent regarding the preservative being benzoic acid, benzoate, or benzoic acid ester.
Takeuchi et al. discloses a non-alcoholic beer comprising a flavor improving agent or flavor composition (‘848, Paragraph [0047]) comprising an antibacterial agent of benzoic acid or sodium benzoate (‘848, Paragraph [0033]).
Both modified Joshi et al. and Takeuchi et al. are directed towards the same field of endeavor of non-alcoholic beer taste beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beer taste beverage of modified Joshi et al. and supplement the beer taste beverage with benzoic acid as taught by Takeuchi et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Takeuchi et al. establishes that there was known utility in the beverage art to incorporate benzoic acid into a beer taste beverage.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. US 2014/0255585 in view of Possner et al. “Methanol contents of fruit juices and smoothies in comparison to fruits and a simple method for the determination thereof” (published February 2014) (herein referred to as “Possner”), Oh “Simultaneous Gas Chromatographic Quantitation of Ethanol and Methanol from Beer” (published February 2020) (herein referred to as “Oh”), Nakajima US 2016/0143339, Dorr et al. US 2008/0220121, and Teranishi et al. US 2015/0313271 as applied to claim 1 above in further view of Oono et al. US 2006/0016513.
Regarding Claim 7, Joshi et al. discloses adding hops for additional bitterness (‘585, Paragraph [0087]). However, Joshi et al. modified with Possner et al., Oh, Nakajima, Dorr et al., and Teranishi et al. is silent regarding the beer taste beverage having a bitterness unit of 5 to 50 BUs.
Oono et al. discloses a method of making beer taste low alcoholic beverages (‘513, Paragraph [0002]) wherein extracts such as malt extract, barley extract, wheat extract, and rice extract are added (‘513, Paragraph [0038]) and dietary fibers are added (‘513, Paragraph [0042]) wherein hop pellets, hop extracts, and isomerized hop are added to contribute to adjustment of bitter taste in the range of the amount of 5-30 BU (‘513, Paragraph [0032]), which falls within the claimed bitterness unit range of 5 to 50 BUs.
Modified Joshi et al. and Oono et al. are directed towards the same field of endeavor of low or non-alcoholic beer taste beverages comprising dietary fibers and having a bitter flavor. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the bitterness of the beer taste beverage of modified Joshi et al. to have a bitterness unit that falls within the claimed bitterness unit range as taught by Oono et al. since where the claimed bitterness unit ranges overlaps bitterness unit ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, differences in the bitterness unit of the beer taste beverage will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such bitterness unit is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the apparent extract concentration of modified Joshi et al. based upon the desired bitterness of the final beer taste beverage.
Response to Arguments
Applicant's arguments filed July 1, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pages 4-5 of the Remarks that Joshi teaches a beverage prepared from a high extract bitter wort wherein Joshi discloses an OG of 1.045-1.085, a mash containing 10-40% solids, and a bitter wort containing a relatively high level of extracts from malted grains wherein Joshi employs a high extract beverage design. Applicant contends that OG is a fundamental parameter that reflects the concentration of dissolved extract in the beverage and directly affects flavor characteristics and because Joshi discloses an OG value a person of ordinary skill in the art would have been motivated to modify the beverage of Joshi to have the substantially lower extract concentrations disclosed in Dorr or Teranishi as such a modification would materially alter the character and intended properties of the beverage of Joshi. Applicant continues to argue on Pages 5-6 of the Remarks that the apparent extract concentrations of Dorr or Teranishi should not be applied to the beverage of Joshi since the beverage of Joshi is an unfermented carbonated beverage containing fruit juice or vegetable juice and that because it contains solids from the fruit or vegetable juice its specific gravity is inherently high. Applicant points to Paragraphs [0017]-[0018] and [0020] of Joshi as disclosing the wort has an OG of between about 1.045 and about 1.085 and the ratio of mash ingredients to water being between 10-40% solids to water by weight when the wort is produced and the aqueous extract to preferably be a bitter wort containing a relatively high level of extracts including sugars from malted grains. Applicant continues that the beverages of Dorr and Teranishi do not contemplate the use of fruit or vegetable juice and their extract concentrations are as low as 0.1 to 2.4% by mass, which is different from Joshi. Applicant concludes that a person skilled in the art would not be motivated to reduce the extract concentration to be 0.1-2.4% by mass for the beverage of Joshi, which utilizes fruit/vegetable juice having a high solids concentration of 10-40% by weight and contains a bitter wort with a high extract level.
Examiner first notes that applicant’s comment that Joshi teaches an unfermented carbonated beverage does not reflect the limitations of Claim 1. Claim 1 does not specify the beverage to be fermented or unfermented. Applicant argues limitations that are not commensurate in scope with the claimed invention. Claim 1 recites the transitional phrase “comprising,” which is open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). Claim 1 does not limit its beverage to fermented or unfermented beverages. Additionally, Joshi discloses “Preferably, the wort has an OG of between about 1.045 and about 1.085 (‘585, Paragraph [0017]). Joshi also discloses the aqueous extract containing sugars from malt and is preferably a bitter wort wherein a bitter wort is a wort containing a relatively high level of extracts from malted grains and a relatively low level of extracts from other adjuncts. The term “preferably” is a preferred embodiment. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments in view of In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123.II.). Joshi does not explicitly exclude the presence of worts having an OG of below about 1.045, which OG is related to the apparent extract concentration. Dorr et al. teaches a non-alcoholic beer taste beverage having an apparent extract concentration close to the apparent extract concentration claimed. Teranishi et al. teaches a non-alcoholic beer taste beverage having an apparent extract concentration that overlaps the claimed apparent extract concentration. One of ordinary skill in the art would adjust the apparent extract concentration of modified Joshi et al. based upon the desired foaming abilities as taught by Teranishi et al. (‘271, Paragraph [0022]). Joshi also does not explicitly teach the worts being worts other than bitter worts having a relatively high level of extracts form malted grains since the wort is “preferably” a bitter wort (‘585, Paragraph [0018]). The term “preferably” is a preferred embodiment and one of ordinary skill in the art can envisage embodiments of worts having lower levels of extracts. Furthermore, Joshi also discloses the extract may comprise between about 10% and about 40% by volume of the beverage (‘585, Paragraph [0021]). Again, the phrase “may comprise” is an optional embodiment that is not required by Joshi. With respect to applicant’s arguments that the beverages of Dorr and Teranishi do not contemplate the use of fruit or vegetable juice and their extract concentrations are as low as 0.1 to 2.4% by mass, which is different from Joshi, Dorr et al. discloses a nonalcoholic beer taste beverage comprising an apparent extract sweetener of 2.40 wt% (‘121, Table 11), which is close to but does not overlap the claimed apparent extraction concentration of 0.300 to 2.2% by mass. Teranishi et al. also discloses a non-alcohol non-fermented beer taste beverage (‘271, Paragraph [0013]) wherein the total amount of extract components affects the foam formed on the surface of the non-alcohol beer taste beverage (‘271, Paragraph [0022]) wherein non-alcohol beer taste beverages are often produced without fermenting the ingredients since fermentation produces alcohol (‘271, Paragraph [0003]) wherein the total amount of the extract components is the sum of the extract component contained in the non-alcohol beer taste beverage (‘271, Paragraph [0021]) wherein the total amount of the extract component is in the range of between 0.1% to 2% by weight to provide a sufficient quality of high foam retention to the foam formed on the surface to provide a beer like appearance (‘271, Paragraph [0022]) wherein soybean saponin and soybean plant protein additives are used (‘271, Paragraph [0054]). The disclosure of the total amount of extract being in the range of between 0.1% to 2% by weight overlaps the claimed apparent extract concentration of 0.300 to 2.22% by mass. Modified Joshi et al., Dorr et al., and Teranishi et al. are all directed towards the same field of endeavor of nonalcoholic beer taste beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the apparent extract concentration of the beer taste beverage of modified Joshi et al. and incorporate an extract concentration that falls within the claimed apparent extract concentration as taught by Teranishi et al. since where the claimed apparent extract concentration ranges overlaps apparent extract concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Additionally, it would have also been obvious to one of ordinary skill in the art at the time of the invention to modify the apparent extract concentration of the beer taste beverage of modified Joshi et al. and incorporate an extract concentration that falls within the claimed apparent extract concentration as taught by the close concentration of Dorr et al. since a prima facie case of obviousness exists where the claimed apparent extract concentration ranges or amounts do not overlap with the prior art but are merely close in view of Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (MPEP § 2144.05.I.). Furthermore, differences in the apparent extract concentration of the beer taste beverage will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such apparent extract concentration is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the apparent extract concentration of modified Joshi et al. based upon the desired foaming abilities as taught by Teranishi et al. (‘271, Paragraph [0022]). Examiner notes that applicant comments that OG is a fundamental parameter that reflects the concentration of dissolved extract in the beverage and directly affects flavor characteristics. However, the claims recite an apparent extract concentration. Applicant has not commented on how OG disclosed in prior art can be converted to the claimed apparent extract concentration. Additionally, the claims do not specify the flavor characteristics of the beverage other than the beverage is a beer taste beverage. Applicant argues limitations that are not commensurate in scope with the claimed invention. Joshi already teaches a beer taste beverage (‘585, Paragraph [0006]). Therefore, these arguments are not found persuasive.
Applicant argues on Page 6 of the Remarks that claimed range of ratio of the total nitrogen content to the apparent extract concentration is supported by the Examples and not an arbitrary selection. With respect to the lower limit of 0.333, Example 3a has a ratio of 0.333 whereas Comparative Example 1a has a ratio of 0.144. Applicant alleges that Example 3a exhibits improved drinkability compared with Comparative Example 1a and applicant alleges the lower limit of 0.333 represents a technically meaningful boundary. Applicant continues with respect to the upper limit of 133 that Example 4a has a ratio of 133 and demonstrates that the desired beverage characteristics are achieved at this value. Applicant also points to Example 2a having a ratio of 26.7 has a sweet aroma score of 2.8 while Example 4 having a ratio of 133 has a sweet aroma score of 2.3. Applicant alleges that if the ratio further increases beyond 133 it is reasonably expected that the evaluation score will fall below 2.3 resulting in a beverage with an unacceptable level of the unsuitable sweet aroma and that by restricting the upper limit of the ratio to 133 the beverage effectively suppresses the sweet aroma for a beer taste beverage.
Examiner argues applicant’s statement that if the ratio further increases beyond 133 it is reasonably expected that the evaluation score will fall below 2.3 resulting in a beverage with an unacceptable level of the unsuitable sweet aroma is not supported by the data presented in applicant’s Examples and is mere conjecture. The evidence relied upon should establish that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance in view of Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Mere conclusions in applicant’s remarks that the if the ratio further increases beyond 133 it is reasonably expected that the evaluation score will fall below 2.3 resulting in a beverage with an unacceptable level of the unsuitable sweet aroma are not entitled to the weight of conclusion accompanying the evidence in the specification in view of Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992) (MPEP § 716.02(b).I.). Nevertheless, applicant discloses Example 3b on Table 6 of the Specification as having a total nitrogen content/apparent extract ratio of 533.3 having a sweet aroma score of 2.7, which contradicts applicant’s allegation that if the ratio further increases beyond 133 it is reasonably expected that the evaluation score will fall below 2.3 resulting in a beverage. Examples 4b and 5b in Table 6 both have the same sweet scent scores unsuitable for beer taste beverage and sweet taste left on tongues unsuitable for beer taste beverage of 2.7 and 2.3 respectively. Example 4b has a total nitrogen content/apparent extract ratio of 533.3 (above the claimed total nitrogen content/apparent extract ratio) whereas Example 5b has a total nitrogen content/apparent extract ratio of 18.3 (which falls within the claimed total nitrogen content/apparent extract ratio). Since Examples 4b and 5b both have the same sweet scent scores while Example 4b has a ratio of total nitrogen content above the claimed ratio whereas Example 5b has a ratio of total nitrogen content within the claimed ratio, applicant has not shown any data that supports applicant’s allegations of unexpected results pertaining the claimed ratio of total nitrogen content to apparent extract concentration. Applicant’s data in the examples and tables of the specification is not sufficient to overcome the obviousness rejections. Joshi et al. modified with Possner et al., Oh, Nakajima et al., Dorr et al., and Teranishi et al. is silent regarding a ratio of the total nitrogen content to the apparent extract concentration being 0.333 to 133. However, Nakajima et al. discloses a non-alcoholic beer taste beverage (‘339, Paragraph [0001]). The non-alcoholic beer taste beverage comprises a nitrogen source composed of an amino acid containing material other than barley or malt, and hops (‘339, Paragraph [0033]) and an apparent extract concentration (‘339, Paragraphs [0034] and [0039]). Nakajima et al. further discloses the raw material having a comparatively high amino acid content such as protein (‘339, Paragraph [0029]) wherein the raw material protein is a soybean protein, which has good nutritional properties and exhibits good digestibility and absorbability (‘339, Paragraph [0038]). Teranishi et al. also discloses a non-alcohol non-fermented beer taste beverage (‘271, Paragraph [0013]) wherein the total amount of extract components affects the foam formed on the surface of the non-alcohol beer taste beverage (‘271, Paragraph [0022]) wherein non-alcohol beer taste beverages are often produced without fermenting the ingredients since fermentation produces alcohol (‘271, Paragraph [0003]) wherein the total amount of the extract components is the sum of the extract component contained in the non-alcohol beer taste beverage (‘271, Paragraph [0021]) wherein the total amount of the extract component is in the range of between 0.1% to 2% by weight to provide a sufficient quality of high foam retention to the foam formed on the surface to provide a beer like appearance (‘271, Paragraph [0022]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the ratio of the total nitrogen content to the apparent extract concentration of the beer taste beverage of modified Joshi et al. since differences in the ratio of the total nitrogen content to the apparent extract concentration within the non-alcoholic beverage comprising vegetable juices of modified Joshi et al. will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such methanol concentration of the non-alcoholic beverage comprising vegetable juices is critical. 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the ratio of the total nitrogen content to the apparent extract concentration of the beer taste beverage of modified Joshi et al. based upon the desired digestibility and absorbability as taught by Nakajima et al. (‘339, Paragraph [0038]) as well as the desired foam retention as taught by Teranishi et al. (‘271, Paragraph [0022]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Smith “Correcting Low Original Gravity in All Grain Brewing” <https://beersmith.com/blog/2015/02/24/correcting-low-original-gravity-in-all-grain-brewing/> (published February 24, 2015) discloses a method of adjusting original gravity (OG) when brewing all grain beer wherein if the gravity is too high adding water to dilute and if the gravity is too low adding dry extract (Smith, Pages 2-3).
Thesseling et al. “A Hands On Guide to Brewing and Analyzing Beer in the Laboratory” (published September 13, 2019) discloses a recipe ideal for yeast propagation comprising dried malt extract (DME) wort used as a concentrated stock if lower gravity wort is required, e.g. for yeast propagation (Thesseling et al., Page 11).
Sparhawk “Defining Beer Gravity” <https://www.craftbeer.com/craft-beer-muses/defining-gravity> (published July 17, 2012) discloses beer gravity refers to the total amount of dissolved sugar solids in water wherein these sugars are consumed by yeast to convert the wort (unfermented ingredients) into beer wherein a gravity reading taken just prior to yeast being added or pitched is referred to as the original gravity (OG) which OG will provide the brewer with a good idea of the potential alcohol percentage for that particular beer (Sparhawk, Page 3) wherein as yeast works to consume the sugar the density of the wort is decreased, which causes the hydrometer to deliver a reading closer to 1.000 (Sparhawk, Page 4) wherein different fermentables, e.g. rye, barley, honey, fruit, maple syrup, etc., yield different increases in gravity due to the varying amounts of fermentable sugar found in them wherein two row malted barley will not provide as large an increase in gravity as table sugar because table sugar is fully fermentable wherein knowing the amount of fermentable sugar in different ingredients allows brewers to figure out how much of each fermentable will achieve the desired OG of the beer (Sparhawk, Pages 4-5).
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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