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 .
The amendment filed August 20, 2025 is acknowledged. Claims 1-11 are pending in the application. Claim 12 has been cancelled. Claims 7-11 have been withdrawn from consideration.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Casey et al. CA 2171650 (hereinafter “Casey”) in view of Shinsuke et al. JP 2012-239460 (hereinafter “Shinsuke”) (refer to the corresponding machine translation).
With respect to claim 1, Casey teaches a beer beverage (Abstract; P6, L8-10; and P17, L3-8).
Regarding the limitation of comprising less than 0.07 ppm by mass of diacetyl, 0.5 (v/v)% or more and less than 1.5 (v/v)% of ethanol, having an H2S content of less than 5 ppb by mass as recited in claim 1, Casey teaches the beverage comprises an alcohol (ethanol) content of 0.5% to 3.0% (v/v) and below 50 ppb (0.05 ppm) of vicinyl diketones which include 2,3-butanediol (diacetyl) (P5, L3-6; P7, L12-14; P9, L13-17; and P17, L3-8). The alcohol (ethanol) content as disclosed in Casey encompasses the presently claimed range As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). Additionally, it is noted that the claimed amount of H2S includes zero. The beverage of Casey does not include H2S (P13, Table III; and P16, Table V). Hence, the beverage of Casey meets the claimed H2S content.
Regarding the limitation of comprising 5 (w/w)% or more and 10 (w/w) or less of real extract concentration and comprising 1.7 ppm by mass or more of ethyl acetate as recited in claim 1, Casey teaches the beverage comprises a real extract of 4.62% (w/w) and an ethyl acetate content of 1.16 ppm in the examples (P13, Table III; and P16, Table V). It is apparent that the instantly claimed real extract concentration and ethyl acetate quantity and that taught by Casey are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”. In light of the case law cited above and given that there is only a “slight” difference between the quantities taught in Casey (4.62% real extract and 1.16 ppm of ethyl acetate) and the range disclosed in the present claim (5 (w/w)% to 10 (w/w) real extract concentration and at least 1.7 ppm mass of ethyl acetate), it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the concentration of real extract and amount ethyl acetate disclosed in the present claim is but an obvious variant of that taught in Casey, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the real extract concentration and ethyl acetate quantity in the beverage of Casey through routine experimentation with the expectation of successfully preparing an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because the flavor of the beverage product is contingent upon the final components produced and their quantities, such as the real extract concentration and ethyl acetate, Casey teaches the beverage is prepared by conventional techniques which can be adjusted to obtain the desired flavor of the final beverage product (P6, L8-18), the flavor is a matter of choice and does not provide a patentable feature over the prior art, and it is understood that, generally, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
Regarding the limitation of comprising 50 to 1000 ppm by mass of lactic acid and 50 to 1000 ppm by mass of phosphoric acid as recited in claim 1, Casey does not expressly disclose this limitation.
Shinsuke teaches a low alcohol beer composition. The beverage has an alcohol (ethanol) concentration of 4% by volume or less and comprises 100 to 600 ppm of lactic acid and 100 to 600 ppm phosphoric acid (paragraphs [0012], [0019], [0020], and [0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, given the teachings of Shinsuke, to select lactic acid and phosphoric acid in the beverage of Casey based in their suitability for their intended purpose with the expectation of successfully preparing an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because Shinsuke and Casey similarly teach low alcohol beer beverages, Shinsuke teaches the beverage product has excellent flavor that is well-balanced and has excellent storage stability (paragraphs [0001], [0011], and [0016]), Casey teaches the beverage has improved long term flavor stability (P6, L8-10), and said combination would amount to the use of a known element for its intended use in a known environment to accomplish entirely expected result. There would have been a reasonable expectation of success with said modification. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. (“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious)) (MPEP 2144.07).
With respect to claim 2, modified Casey is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the limitation of comprising 55 ppm by mass or less of ethyl acetate as recited in claim 2, modified Casey teaches this limitation since Casey is relied upon for the teaching of the ethyl acetate content as addressed above in claim 1, and Casey teaches the beverage has an ethyl acetate content of 1.16 ppm in the example (P16, Table V).
With respect to claim 3, modified Casey is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the limitation of having a pH value of less than 4.0 as recited in claim 3, Casey as modified by Shinsuke teaches this limitation since Shinsuke is relied upon for the teaching of lactic acid and phosphoric acid as addressed above in claim 1, and Shinsuke teaches the pH of the final product is 4.4 or less (paragraphs [0016] and [0020]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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).
With respect to claim 4, modified Casey is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the limitation of comprising 0.3% to 6.0% by mass of maltose as recited in claim 4, modified Casey does not expressly disclose this limitation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the maltose content in the beverage of modified Casey through routine experimentation with the expectation of successfully preparing an organoleptically desirable beverage. One of ordinary skill in the art would have been motivated to do so because Casey teaches the beverage comprises maltose as well as adjusting the beverage by adding carbohydrate (P9, L25-29 and; P16, Table V), and it is understood that, generally, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 5, modified Casey is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the limitation of having a real extract concentration of 6 (w/w)% or more as recited in claim 5, modified Casey does not expressly disclose this limitation. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the real extract concentration in the beverage of Casey through routine experimentation with the expectation of successfully preparing an organoleptically desirable product. One of ordinary skill in the art would have been motivated to do so because the flavor of the beverage product is contingent upon the final components produced and their quantities, such as the real extract concentration, Casey teaches the beverage is produced by conventional techniques which can be adjusted to obtain the desired flavor of the final beverage product (P6, L8-18), the flavor is a matter of choice and does not provide a patentable feature over the prior art, and it is understood that, generally, 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. There would have been a reasonable expectation of success. “[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) (MPEP 2144.05 II).
With respect to claim 6, modified Casey is relied upon for the teaching of the beverage of claim 1 as addressed above.
Regarding the limitation of wherein the beer-taste beverage is a fermented beer-taste beverage as recited in claim 6, modified Casey teaches this limitation since Casey teaches the beverage is a fermented beer beverage (P6, L12-13; and P17, L3-8).
Response to Arguments
Applicant’s remarks filed August 20, 2025 are acknowledged.
Applicant’s arguments with respect to Casey have been fully considered, but they are unpersuasive.
Applicant argues the real extract content in Casey’s non-alcoholic beers is 4.62% and 3.23%. This is outside the currently claimed. Casey discloses that the ethyl acetate concentrations in the examples are 0.70 mg/L and 1.16 mg/L. Casey does not suggest increasing ethyl acetate concentration.
Examiner disagrees. Modified Casey teaches the claimed invention. As addressed above, it would have been obvious to one of ordinary skill in the art that the concentration of real extract and amount ethyl acetate disclosed in claim 1 is but an obvious variant of that taught in Casey, and thereby one of ordinary skill in the art would have arrived at the claimed invention, since there is only a “slight” difference between the quantities taught in Casey (4.62% real extract and 1.16 ppm of ethyl acetate-P13, Table III; and P16, Table V) and the range disclosed in the present claim (5 (w/w)% to 10 (w/w) real extract concentration and at least 1.7 ppm mass of ethyl acetate). See In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985).
Additionally, one of ordinary skill in the art would have been motivated to optimize the real extract concentration and ethyl acetate quantity in the beverage of Casey through routine experimentation with the expectation of successfully preparing an organoleptically desirable product because the flavor of the beverage product is contingent upon the final components produced and their quantities, such as the real extract concentration and ethyl acetate, Casey teaches the beverage is prepared by conventional techniques which can be adjusted to obtain the desired flavor of the final beverage product (P6, L8-18), the flavor is a matter of choice and does not provide a patentable feature over the prior art, and it is understood that, generally, 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) (MPEP 2144.05 II).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 TYNESHA L. MCCLAIN whose telephone number is (571)270-1153. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM ET.
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/T.L.M/Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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