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 .
Election/Restrictions
Claims 13-15 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/28/2025.
Applicant’s election without traverse of claims 1-12 and 16 in the reply filed on 05/28/2025 is acknowledged.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 1-12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Medvedeva (RU 2 070 569 C1).
In regard to claim 1, Medvedeva discloses a method of mashing where the first portion of malt is being mashed first and then after the first cycle of mashing is complete the second portion of malt is added and the mixture undergoes additional mashing cycle (page 3 col. 2 lines 20-30 of the original document).
Hence, Medvedeva meets the limitation of mashing of a first portion of the milled malt in a separate tun/container, combining the first portion of the malt which completes the first mashing cycle with the other second portion of malt, subjecting that combination to a second mashing cycle and mashing them together.
Medvedeva discloses heating the first portion of milled malt to a temperature of 63°C and then resting the first portion of milled malt for 20 minutes with further heating the rested first portion of milled malt to a temperature of 70°C and then resting the first portion of milled malt for 20 minutes (page 3 col. 2 lines 20-30 of the original document).
Hence, Medvedeva meets the limitation of
a. Heating (101) the first portion of the milled malt to a temperature in the range of 60 to 65°C,
b. Resting (102) the first portion at a temperature in the range of 60 to 65°C for t1 time for the first enzyme activation,
c. After resting, raising (103) the temperature of the first portion to a temperature of 70 to 75°C,
d. Resting (104) the temperature of the first portion at a temperature in the range of 70 to 75°C for t2 time for the second enzyme activation.
Medvedeva discloses that after the first cycle of mashing is complete, combining the first mashed malt portion with the second malt portion and then heating the mixture to a temperature of 63C and then resting the mixture for 40 minutes with further heating the rested first portion of milled malt to a temperature of 70C and then resting until complete saccharification (page 3 col. 2 lines 20-30 of the original document).
Therefore, Medvedeva meets limitations as recited in step “e” of claim 1.
In regard to the recitation of the amount of first malt portion as recited in claims 1 and 2, Medvedeva discloses that the first portion of malt is 20% by weight (page 3 col. 2 lines 20-21 of the original document).
Further in regard to the time, temperature and concentration recitations, it is noted 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 A).
Further, regarding the temperature ranges as examined above, it is noted that in the case where the claimed ranges “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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claim 4, Medvedeva discloses that the temperature in step “b” is 63°C.
In regard to claim 5, Medvedeva discloses that the temperature in step “c” is 70°C.
In regard to claims 6-9, Medvedeva discloses that resting time in the first mashing cycle is 20 minutes.
In regard to claims 10-12, it is noted that claims 10-12 recites and optional limitations that are not required.
In regard to claims 16, Medvedeva discloses that additional resting steps could be performed after additional heating steps and various temperatures (page 3 col. 2 lines 20-30 of the original document).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791