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 .
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.
Claims 1-3 and 5-10 are 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 1 recites “the total extract amount”. Applicant’s specification states “It is to be noted that the “total extract amount” is used in the present description to mean an extract value (% by mass) that is obtained by measuring a degassed sample according to “Beer analysis method, 7.2 Extract” in “Revised Version Brewery Convention of Japan (BCOJ) Beer Analysis Method (published by the Brewing Society of Japan, and enlarged and revised in 2013),” edited by Brewers Association of Japan, Brewery Convention of Japan (BCOJ)).” Applicant has submitted a document appearing to correspond to this document, however, it has not been properly made of record as part of an IDS. Nonetheless, the document submitted by applicant clearly indicates that “the extract is determined from the extract table (Reference 2) based on the measured specific gravity of the wort”. Claim 1 does not positively recite wort nor does it require the claimed beverage be produced from a method that includes wort. Applicant’s assertions on page 2 of the remarks regarding comparing the density of the claimed beverage to the extract table to determine the amount of “extract” does not align with the document submitted which appears to only be relevant to wort.
As such, it is not possible to determine if a beer infringes on the limitations of claim 1 when only a final product is available for analysis because “total extract content” is a property of the method used to make wort used to make a beer, not a measurable characteristic of the claimed final product. Since it is not possible to determine if a beer is infringing on this limitation without unavailable extrinsic knowledge, the scope of claim 1 is indefinite. Claims 2, 3 and 5-10 depend from claim 1 and incorporate the indefinite subject matter therein. Appropriate correction is required.
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.
he 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.
Claims 1 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi WO2009078360 and Palamand USPN 4389421.
Regarding claims 1 and 5, Takagi teaches a malt based non-alcoholic beer-taste beverage. [0010,0044]
Takagi is silent regarding 1,4-cineole.
Palamand teaches that adding 1,8-cineole and 1,4-cineole to malt beverages prevents the development of light struck flavor. (Col. 2, lines 14-19, Ex. II) When a combination of 1,4-cineole and 1,8-cineole in a ratio of 5:3 (respectively) at a concentration of additive as low as 0.89 ppb is added to a malt beverage the development of sunstruck flavor was shown to be avoided. (Ex. II)
Takagi and Palamand are both directed to malt based beverages. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have added 1,4-cineole and 1,8-cineole in a ratio of 5:3 (respectively) at a concentration of additive as low as 0.89 ppb to the beverage of Takagi in order to avoid development of sunstruck flavor.
The modification of Takagi with Palamand would result in a beer-taste beverage comprising 1,4-cineole and 1,8-cineole in proportions that overlap or encompass those recited in claims 1 and 5. 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)
The recitation in claim 1 regarding “the total extract amount” is effectively a product-by-process limitation since it describes an aspect of the wort used to make the beer claimed. Once a beer is produced, it is not possible to determine the total extract amount merely by analysis of the final beer. Since total extract amount is not a property that can be determined from only evaluation of the final product, it does not contribute any patentably distinguishing characteristics to the final product presently claimed. Additionally, Takagi teaches non-fermented embodiments [0044] which would necessarily have 0% total extract because none is present. Therefore, claims 1 and 5 are rendered obvious by the modification of Takagi with Palamand.
Regarding claim 6, [0017] of applicant’s specification states that the term “does not substantially comprise 1,8-cineole” encompasses 1 ppb or less. The modification of Takagi with Palamand and Barnes overlaps with this proportion. 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 7, Takagi teaches the beverage comprises less than 1.0% alcohol. [0044]
Regarding claim 8, Takagi teaches carbonated embodiments. [0036] It would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the amount of carbonation depending on the preference of the consumer. Therefore, the carbon dioxide concentration recited in claim 8 is merely an obvious variant of the prior art.
Regarding claim 9, Takagi teaches non-fermented embodiments. [0044]
Claims 2, 3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi WO2009078360 and Palamand USPN 4389421 as applied to claim 1 above in further view of Barnes “The Complete Beer Fault guide v. 1.4” 2011-2013, https://londonamateurbrewers.co.uk/wp-content/uploads/2015/05/Complete_Beer_Fault_Guide.pdf.
Regarding claims 2 and 3, Takagi and Palamand teach what has been recited above but are silent regarding isoamyl propionate.
Barnes teaches isoamyl propionate is an ester compound found in beer with an aniseed and pineapple flavor and a perception threshold of 0.015 mg/l or 15 ppb. (Pg. 13-14)
Takagi and Barnes are both directed to beverages that taste like beer. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included isoamyl propionate as recited in claim 1 in the beer taste beverage of Takagi in order to make it taste more like beer and to enhance the flavors of aniseed and pineapple in the beer produced. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included isoamyl propionate in a proportion above the taste threshold of 15 ppb but below a content that would have an unpleasing flavor.
The modification of Takagi by Palamand and Barnes would result in a beer-taste beverage comprising isoamyl propionate in proportions that overlap or encompass those recited in claims 2 and 3. 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) Therefore, claims 2 and 3 are rendered obvious by the modification of Takagi with Palamand and Barnes.
Regarding claim 10, Takagi in view of Palamand and Barnes teaches a beer comprising at least 0.56 ppb 1,4-cineole (Y) and at least 15 ppb isoamyl propionate (X) yielding a ratio of isoamyl propionate to 1,4-cineole of 15ppb/0.56 ppb= 26.8 in these minimum embodiments. However, since Barnes teaches using 0.56 1,4-cineole or greater, the range of the ratio of X/Y taught by the prior art encompasses values of 26.8 or less. This range of ratios encompasses the range recited in claim 10. 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)
Response to Arguments
Applicant's arguments filed 29 May 2026 have been fully considered but they are not persuasive.
Applicant’s assertions regarding extract content on page 3 of the remarks are not persuasive since as discussed above, this limitation is indefinite. This limitation has been rejected insofar as it is understood by the examiner.
Applicant’s assertions on page 3 of the remarks regarding the total extract of Takagi are not persuasive given no evidence has been provided and the limitation regarding total extract is indefinite.
Conclusion
THIS ACTION IS MADE FINAL. 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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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