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 .
Application Status
Amended claim 1-7 is under examination.
Claim 1-7 is rejected.
Claim Objections
Claim 1 and 2 are objected to because of the following informalities:
in claim 1, the recitation of “500ppm” in line 3 should be spaced between “500” and “ppm”; and
in claim 2, the recitation of “lactic acid” in line 2, should be “the lactic acid” since amended claim 1, line 2-3 recites new limitation “a content of lactic acid” which established antecedent basis. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites a range “800 ppm by mass or less of lactic acid” which is confusing and not limiting to amended claim 1. The range of “800 ppm by mass or less” does not farther limit the new limitation set forth in claim 1, line 2-3, “…100 to 500 ppm by mass…”. The recitation of claim 2 broadens the range as set forth in claim 1, line 2-3; hence claim is indefinite.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Someya T. (JP 2015027309-A) in view of Kitamura Y. (TW 201424606-A).
Regarding claim 1, 5 and 6, Someya T. (Someya) discloses a beer-flavored (beer-taste) drink comprising no alcohol, ethanol (‘309, pg. 1, 1st – 3rd paragraph). Someya discloses an amount of no alcohol, ethanol (‘309, pg. 1, 1st – 3rd paragraph) is in range with the cited range of less than 1.0 (v/v) %, in other words zero amount of amount of no alcohol, ethanol.
Someya discloses the beer-flavored (beer taste) drink comprising a beer flavor improving agent including (‘309, pg. 2, 5th paragraph) 2-methyl-2-pentenoic acid (‘309, pg. 5, 3rd paragraph; pg. 11, 10th paragraph) with a range of 0.0000001 to 0.05% by weight (‘309, pg. 12, 4-5th paragraph), which corresponds to 1 ppb to 500,000 ppb by weight (mass) and overlaps the cited range of 50 to 10,000 ppb. 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).
With respect to new limitation of a content of carbon dioxide gas range of 2.0 to 5.0 kg/cm2; Someya discloses the beer-flavored (beer taste) drink comprising carbon dioxide gas and amount in gas volume (‘309, pg. 9, 3rd paragraph). Someya does not disclose the carbon dioxide gas in cited amount and units. However Kitamura Y. (Kitamura) discloses a beverage including non-alcoholic beverage (‘606, pg. 5, middle page, under Drink) comprising carbon dioxide gas of 1.0 to 3.5 kg/cm2 (‘606, pg. 6, 2nd paragraph), which overlaps the newly cite range. Someya and Kitamura are of the same field of endeavor of carbonated non-alcoholic beverage. It would have been composition to one of ordinary skill in the art to be motivated to use Kitamura’s amount of carbon dioxide gas in Someya’s drink to provide a desired carbonation in carbonated non-alcoholic beverage are known and successful.
With respect to new limitation of “a content of lactic acid is 100 to 500 ppm by mass”, Someya discloses the beer flavor improving agent including (‘309, pg. 2, 5th paragraph) including lactic acid, with a range of 0.0000001 to 0.05% by weight (‘309, pg. 12, 4-5th paragraph), which corresponds to 0.001 ppm to 500 ppm by weight (mass), which overlaps the cited range of 100 to 500 ppm by mass. 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).
Regarding claim 2, modified Someya discloses the beverage comprising the beer flavor improving agent including (‘309, pg. 2, 5th paragraph) including lactic acid (‘309, pg. 12, 2nd paragraph). Someya discloses the beer flavor improving agent including (‘309, pg. 2, 5th paragraph) including the lactic acid, with a range of 0.0000001 to 0.05% by weight (‘309, pg. 12, 4-5th paragraph), which corresponds to 0.001 ppm to 500 ppm by weight (mass), and is in range with the cited range of 800 ppm by mass or less.
Regarding claim 3, modified Someya discloses the beverage comprising the beer flavor improving agent including (‘309, pg. 2, 5th paragraph) including phosphoric acid (‘309, pg. 12, 2nd paragraph). Someya discloses the beer flavor improving agent including (‘309, pg. 2, 5th paragraph) including the phosphoric acid, with a range of 0.0000001 to 0.05% by weight (‘309, pg. 12, 4-5th paragraph), which corresponds to 0.001 ppm to 500 ppm by weight (mass), and overlaps the cited range. 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).
Regarding claim 4, Someya does not disclose a pH range. However Kitamura discloses the beverage comprising a pH range of 4.0 or less (‘606, pg. 11, claim 1) which overlaps the cited range. Someya and Kitamura are of the same field of endeavor of carbonated non-alcoholic beverage. It would have been composition to one of ordinary skill in the art to be motivated to use Kitamura’s pH range in Someya’s drink to provide a desired taste (‘606, pg. 2, 4th-5th paragraph).
Regarding claim 7, Someya discloses the beverage comprising natural fragrances (raw materials) including hops (‘309, pg. 2, 6th - 7th paragraph; pg. 10, under Claims, (A) Natural flavors…hops).
Response to Arguments
Applicant's arguments filed 05/27/2026 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed 05/27/2026 is insufficient to overcome the rejection of claim 1-7 based upon 35 U.S.C. 103 as being unpatentable over Someya T. (JP 2015027309-A) in view of Kitamura Y. (TW 201424606-A) as set forth in the Office action because:
First, the prior art as discussed above rejection teaches overlapping ranges with the cited components; wherein 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).
Second, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., effects in terms of astringency and simulation of the throat) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Third, with respect to a showing of “20 ppb by mass of 2m2p” in three baches; whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Table 1 in the specification and Table A in the Declaration, discloses other components lactic acid, phosphoric acid, carbon dioxide gas with corresponding specific amounts (emphasis) which does not commensurate with the claimed invention for unexpected results with respect to instant claim 1 cited ranges and components. Hence the Declaration is not insufficient to overcome the rejection of claim 1-7 based upon 35 U.S.C. 103 as being unpatentable over Someya T. (JP 2015027309-A) in view of Kitamura Y. (TW 201424606-A).
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 HONG THI YOO whose telephone number is (571)270-7093. The examiner can normally be reached M-F, 7AM to 3PM.
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/HONG T YOO/Primary Examiner, Art Unit 1792
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