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 9/16/2025 has been entered. Claims 1-10, 12-14 are pending. Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.
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 1-3, 5-6, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Agilent (“Fast Determination of the Bitter and Clove-like Flavor in Beer with the Agilent 1290 Infinity II LC”, https://www.perlan.com.pl/uploaded/AppBundleEntityProductApplication/fileKey/123/5991-6665en.pdf, 2016) in view of Beer Sensory Science (https://beersensoryscience.wordpress.com/2011/02/04/esters/ , 2011) and Kunshan Odowell Co, Ltd (https://web.archive.org/web/20200126082313/https://www.odowell.com/us-natural-gamma-decalactone.html, reference is made to the provided archival version).
Regarding Claims 1 and 2, Agilent teaches that 4-vinylguaiacol is typically found at .05-0.25 ppm (50-250 ppb) in beers (Page 2, Paragraph 2). Agilent teaches that beer is made only with water, barley, and natural hops (i.e. lacking wheat) for certain markets (Page 2, Paragraph 1).
Agilent does not discuss the ethyl hexanoate content of beer.
Beer Sensory Science teaches that ethyl hexanoate is typically present in beer at 70-500 ppb (Page 3, last paragraph), which overlaps the claimed range.
Agilent additionally does not address the addition of γ-decalactone or ethyl 2-methylbutyrate. Note that “γ-decanolactone” is the same compound as γ -decalactone, or gamma-decalactone.
Kunshan Odowell Co, Ltd teaches that γ-decalactone is commonly found in beer (“US Natural Gamma Decalactone Usage and Synthesis, Occurrence) and that the aroma detection threshold is above 1 ppb (US Natural Gamma Decalactone Usage and Synthesis. Aroma Threshold Values).
The disclosed composition is so close in value to the claimed composition that there is an expectation is will provide an identical product. No material difference is expected between a composition comprising 0.91 ppb of γ-decalactone as claimed and >1 ppb (e.g. 1.01 ppb) as taught by Kunshan Odowell Co. The Applicant’s claimed range is thus obvious over the prior art range. Note that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I.
Note that the level of ethyl hexanoate as taught by Beer Sensory Science (70-500 ppb) and γ-decalactone as taught by Kunshan Odowell Co (greater than 1 ppb) lies within the claimed ratio range of 1100:1 or less.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize the compounds as claimed, and additionally in the ratios as claimed, in a beer-style beverage. One would have been motivated to make such a modification since modified Agilent teaches that the levels and ratios of such compounds are in typical ranges for a beer.
Regarding Claims 3 and 11, the combined amount of ethyl hexanoate as taught by Beer Sensory Science (70-500 ppb, Page 3, last paragraph) and γ-decalactone as taught by Kunshan Odowell Co (which is >1 ppb) is >71 ppb, and the amount of 4-vinylguaiacol as taught by Coghie (90-24,990 ppb) (Page 605, Table 4), is a ratio of >0.78, which encompasses the claimed range.
Regarding Claim 6, Agilent teaches that the beer is made with yeast. Agilent therefore teaches that the beer is a fermented product (Page 2, Column 1, Paragraph 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Saison (“Decrease of Aged Beer Aroma by the Reducing Activity of Brewing Yeast, DOI: 0.1021/jf9037387, 2010).
Regarding Claim 4, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss ethyl 2-methylbutyrate content.
Saison teaches that a typical beer contains ethyl 2-methylbutyrate at 0.41-1.15 micrograms/L, which is 0.41-1.15 ppb (Page 3109, Table 1). Note that the amount of ethyl 2-methylbutyrate as taught by Saison (0.41-1.15 ppb) and the amount of γ-decalactone as taught by Kunshan Odowell Co (>1 ppb) is a ratio of >0.87, which overlaps the claimed range.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Thermo Fisher Scientific (“UV-Visible analysis of bitterness and total carbohydrates in beer”, https://assets.fishersci.com/TFS-Assets/MSD/Application-Notes/uv-visible-beer-analysis-bitterness-total-carbohydrates-AN52467.pdf, 2018).
Regarding Claim 5, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss the bitterness content.
Thermo Fisher Scientific teaches that beers typically range from 0-100 bitterness units (Page 2, Column 2, “Bitterness”).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to formulate a beverage with fewer than 60 bitterness units in a beer style beverage, as claimed. One would have been motivated to make such a modification since Thermo Fisher Scientific teaches that the range is typical for beers.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co, Ltd in view of Beer & Brewing (https://www.beerandbrewing.com/dictionary/c9EBwhgZpA, 2012).
Regarding Claim 7, Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss the original extract.
Beer & Brewing teaches that a typical original extract for beer is 12%, which lies within the claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize an original extract for beer at the levels claimed. One would have been motivated to make such a modification since Beer & Brewing teaches that such a level is typical for beer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Nardini (“Phenolics Profile and Antioxidant Activity of Special Beers”, DOI: 10.3390/molecules25112466, May 2020).
Regarding Claim 8, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss the total polyphenol content.
Nardini teaches that total polyphenol content in conventional beer ranges from 274-446 mg/L (Page 4, Table 3), which is 274-446 ppm, which overlaps the claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the beer of Agilent to have the total polyphenol content as claimed. One would have been motivated to make such a modification since Nardini teaches that the claimed polyphenol range is typical for beer.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Gorinstein (“Proteins and amino acids in beers, their contents and relationships with other analytical data”, DOI: 10.1016/S0308-8146(99)00071-0, October 1999).
Regarding Claim 9, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss the proline concentration.
Gorinstein teaches that a standard beer has a proline concentration of 3.13-4.54 mg/L, which is 3.13-4.54 ppm, which overlaps the claimed range (Page 74, Table 1, Beers M & G).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the beer of Agilent to have the total proline content as claimed. One would have been motivated to make such a modification since Gorinstein teaches that the claimed proline content is typical for beer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Life Fermented ( “How to Build a Beer Recipe”, https://lifefermented.wordpress.com/2013/07/02/how-to-build-a-beer-recipe/, July 2013),
Regarding Claim 10, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss the malt ratio.
Life Fermented teaches that a typical beer comprises about 20% of grains (or malt), and <1% yeast (Page 1, Figure). Life Fermented therefore teaches that a typical beer comprises greater than 95% malt ratio, which is the ratio of grains (or malt) to other ingredients, excluding hops and water as detailed in the Claim.
Claim 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Beer Connoisseur (https://web.archive.org/web/20150426045156/https://beerconnoisseur.com/articles/beer-101-fundamental-steps-brewing, reference is made to the provided archival version).
Regarding Claim 12, modified Agilent teaches a beer as discussed above in regards to Claim 1 but does not discuss specific steps for producing the beer.
Beer Connoisseur teaches that a typical beer is made by adding yeast to a mixture comprising malt, hops, and water (Page 4, “Fermentation”, note that Pages 1-3 detail preparation of wort which comprises malt, hops and water).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to add yeast to a mixture comprising malt, hops, and water to make beer. One would have been motivated to make such a modification since Beer Connoisseur teaches that beer is typically made utilizing such a step.
Regarding Claim 13, Beer Connoisseur teaches that a typical ale-style beer is made by adding yeast which rises to the top of the wort (Page 4, “Fermentation”), which is a top fermenting yeast.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize a top fermenting yeast in the beer of Agilent. One would have been motivated to make such a modification since Beer Connoisseur teaches that such a yeast is typical for a common beer style.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Agilent in view of Beer Sensory Science and Kunshan Odowell Co as applied to claim 1 above, and further in view of Takoi (“Behaviour of hop-derived branched-chain fatty acids during fermentation and their sensory effect on hopped beer flavours”, Brewing Science, 72, November/December 2019).
Regarding Claim 14, Agilent teaches that 4-vinylguaiacol is typically found at .05-0.25 ppm (50-250 ppb) in beers (Page 2, Paragraph 2).
Agilent does not discuss the ethyl hexanoate content of beer.
Beer Sensory Science teaches that ethyl hexanoate is typically present in beer at 70-500 ppb (Page 3, last paragraph), which overlaps the claimed range.
Agilent additionally does not address the addition of γ-decalactone or ethyl 2-methylbutyrate. Note that “γ-decanolactone” is the same compound as γ -decalactone, or gamma-decalactone.
Kunshan Odowell Co, Ltd teaches that γ-decalactone is commonly found in beer (“US Natural Gamma Decalactone Usage and Synthesis, Occurrence) and that the aroma detection threshold is above 1 ppb (US Natural Gamma Decalactone Usage and Synthesis. Aroma Threshold Values).
The disclosed composition is so close in value to the claimed composition that there is an expectation is will provide an identical product. No material difference is expected between a composition comprising 0.91 ppb of γ-decalactone as claimed and >1 ppb (e.g. 1.01 ppb) as taught by Kunshan Odowell Co. The Applicant’s claimed range is thus obvious over the prior art range. Note that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I.
Agilent additionally does not address the amount of ethyl 2-methylbutyrate in the beer.
Takoi teaches that beer made with hops typically comprises 0.5-0.8 μg/L ethyl 2-methylbutyrate (Page 200, Table 1), which is 0.5-0.8 ppb, which lies within the claimed range. Note that Takoi teaches that the beer is made without wheat (Page 198, Paragraph 1).
Note that the amount of aroma component taught by Takoi and Kunshan Odowell Co, Ltd is 1.5-1.8 ppb, and the amount of ethyl hexanoate taught by Beer Sensory Science is 70-500 ppb (Page 3, last paragraph). The ratio of ethanol hexanoate to aroma compound is therefore 38.9-333.3, which overlaps the claimed range.
Response to Arguments
Applicant's arguments filed 9/16/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the prior art of Coghie as applied to claim(s) 1-10, 12-14 (Page 9 of Remarks) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding arguments regarding the claimed amount of gamma-decanolactone and the disclosure of Kunshan Odowell Co Ltd (Page 10 of Remarks), the disclosed composition is so close in value to the claimed composition that there is an expectation is will provide an identical product. No material difference is expected between a composition comprising 0.91 ppb of γ-decalactone as claimed and >1 ppb (e.g. 1.01 ppb) as taught by Kunshan Odowell Co. The Applicant’s claimed range is thus obvious over the prior art range. Note that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 I.
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 DEBORAH LIU whose telephone number is (571)270-5685. The examiner can normally be reached 12-8 Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791
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