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 .
Claims 1-7 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 Prior objections and rejections not included below are withdrawn in view of Applicant’s arguments and amendments.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.
Claim(s) 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa (JP 2011142901, reference is made to the provided machine translation) in view of Vandecan (“Optimisation of specialty malt volatile analysis by headspace solid-phase microextraction in combination with gas chromatography and mass spectrometry”, DOI: 10.1016/j.aca.2010.05.009, June 2010).
Regarding Claim 1, Kitagawa teaches a beer-like, alcohol-free beverage (Abstract). The beverage comprises hops (Page 2, Claim 4).
Kitagawa does not address the amount of 2,3-diethyl-5-methylpyrazine (DEMP) in the beverage.
Vandecan teaches that the concentration of 2,3-diethyl-5-methylpyrazine in a dry roasted malt utilized for beer is 0.95 micrograms / 6 grams, which is 158.3 ppb (Page 59, Table 4, “Roasted malt”). Vandecan teaches that pyrazine compounds are found in beer above the flavour threshold (Page 1, Column 2, Line 1).
Where Kitagawa teaches the same steps as the instant Specification at [0046-0047], i.e., preparing water and malt [Page 2, Claim 8], and adding hops during a boiling step [Page 2, Claim 9], and where the instant Specification teaches that such steps result in a beverage comprising 2,3-diethyl-5-methylpyrazine [0051 of the instant Specification], one having ordinary skill would expect the beverage of Kitagawa to comprise the compound as claimed in the amounts as claimed. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I.
Additionally, note that it would have been obvious to utilize the roasted malt of Vandecan in the beverage of Kitagawa. One would have been motivated to make such a modification since Vandecan teaches that dry roasted malts are utilized to provide flavour for beer, and Kitagawa provides for a beer-like beverage.
Regarding Claim 2, Kitagawa teaches the addition of tartaric acid (Page 2, second to last paragraph).
Regarding Claim 3, Kitagawa does not address the amount of tartaric acid. However, where Kitagawa teaches that tartaric acid imparts a desired flavor to beer (Page 2, second to last paragraph), one of ordinary skill would have been able to have adjusted the amount of tartaric acid to arrive at the amounts as claimed through no more than routine experimentation.
Regarding Claim 4, Kitagawa does not address the ratio of tartaric acid to 2,3-diethyl-5-methylpyrazine. However, where Kitagawa teaches that tartaric acid imparts a desired flavor to beer (Page 2, second to last paragraph), and Vandecan teaches that 2,3-diethyl-5-methylpyrazine is a known flavor compound in beer, one of ordinary skill would have been able to have adjusted the amounts of tartaric acid and 2,3-diethyl-5-methylpyrazine to arrive at the claimed ratios through no more than routine experimentation.
Regarding Claim 5, Kitagawa teaches that the amount of ethanol is less than 1 wt% (Page 2, Paragraph 6). Note that v/v and w/w are approximately equivalent in an aqueous beverage.
Regarding Claim 7, Kitagawa teaches that the beverage is not fermented (Abstract).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kitagawa view of Vandecan as applied to Claim 1, above, and further in view of Elert (https://hypertextbook.com/facts/2000/SeemaMeraj.shtml, reference is made to the provided archival version, January 2001)
Regarding Claim 6, Kitagawa teaches that the beverage is carbonated via an “ordinary soft drink manufacturing process” (Page 2, last line). Kitagawa does not specifically address the carbon dioxide gas pressure. However, typical soft drink pressures range from 117-620 kPa (Elert, Table 1), which is 1.2-6/3 kg/cm2. It would therefore have been obvious to have carbonated the beverage of Kitagawa to the pressures claimed.
Response to Arguments
Applicant’s arguments filed 6/16/2026 have been fully considered but they are not persuasive.
Regarding rejections under 35 U.S.C. 103, Applicant argues that Vandecan is directed towards flavour compounds originating from specialty malts, while the present application is directed towards controlling DEMP to achieve a desired beer taste in a non-alcoholic beverage. Applicant additionally argues that a flavor originating from malt is not equivalent to a beer taste.
This argument is not convincing. First, note that it would be obvious to utilize the specialty malts of Vandecan in a beer-like beverage, since malts are known in the art as typical ingredients in a beer. Second, there is additionally an expectation that the resulting beer-like beverage, utilizing the method of Kitagawa, would have the DEMP composition as claimed, given that Kitagawa teaches a method similar to the method disclosed in the instant Specification. Lastly, note that the motivation to utilize the specialty malt of Vandecan (and therefore add DEMP) is not required to be the same as that of the instant Application. See MPEP 2144 IV.
Applicant additionally argues that DEMP in dry malt does not establish DEMP in the final beverage, and that DEMP in malt does not establish the presence of DEMP in the final beverage (Vandecan and Comparative Examples 1 and 2 of the instant Specification)
This argument is not convincing. Note that while it may be true that DEMP in dry malt does not establish DEMP in the final beverage, the burden of proof lies on the Applicant to demonstrate that the beverage of the prior art does not have the claimed composition. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." See MPEP 2112.01 I. Note that the instant Specification teaches at [0051] that preparation of water and malt, and adding of hops during a boiling step, is sufficient to provide for the claimed DEMP.
Applicant additionally argues that the claimed DEMP range cannot be derived from Kitagawa, since Kitagawa teaches general process steps and specific ingredients, amounts, processing conditions, and formulations can result in different compounds and different concentrations. Applicant additionally argues that the claimed invention requires a specific DEMP concentration. Applicant additionally argues that the instant Specification discloses a step of adjusting DEMP concentration.
This argument is not convincing. Applicant has not claimed specific ingredients, amounts, processing conditions, and formulations. Where the instant Specification teaches the same method as the prior art, the product of the prior art is interpreted to have the same properties as the claimed beverage. Further, while the instant Application teaches a step of adjusting DEMP concentration, the instant Specification additionally teaches at [0051] that preparation of water and malt, and adding of hops during a boiling step, is sufficient to provide for the claimed DEMP.
Applicant additionally argues that Vandecan does not teach DEMP above the flavor threshold.
This argument is not convincing. The burden lies on the applicant to show that DEMP does not occur within the claimed range. The arguments of counsel cannot take the place of evidence in the record. See MPEP 716.01(c)II.
Applicant additionally argues that beer is a fermented beverage, and Kitagawa is directed towards an unfermented beverage. Applicant argues that flavor and sensory effects, as well as the presence or absence of alcohol, depend on the production process and beverage system. Applicant additionally argues that the cited references do not identify DEMP as responsible for a beer-taste characteristic.
This argument is not convincing. First, the burden lies on the applicant to show that DEMP does not occur within the claimed range. The arguments of counsel cannot take the place of evidence in the record. See MPEP 716.01(c)II. Second, note that the motivation to utilize the specialty malt of Vandecan (and therefore add DEMP) is not required to be the same as that of the instant Application. See MPEP 2144 IV.
Applicant additionally argues that the claimed DEMP range is supported by the specification and establishes criticality.
This argument is not convincing. First, Tables 1-4 of the instant Specification (Page 24) demonstrate that “A” grades are achieved for DEMP content ranging from 0.5-30 ppb. Applicant has therefore not demonstrated the criticality of the claimed range. Second, the cited paragraph [0012] does not provide evidence of the criticality of 80 ppb, and simply states that the preferred content is “80 ppb by mass or less” to suppress bitterness. No comparative showing is provided to demonstrate criticality. Note that the arguments of counsel cannot take the place of evidence in the record. See MPEP 716.01(c)II. Third, where the Specification states that variation among six individual panels varied by up to 1.5 (on a qualitative scale of 1-3) [0057], and the demonstrated effect of the claimed amount of DEMP is a qualitative score difference of 1.5 (see, e.g., Examples 8 vs. Comparative Example 2), the provided evidence is found unconvincing.
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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