DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-12 of U.S. Patent No. 17733987. Each of the limitations of the pending case either is identical in language to or is anticipated by corresponding limitations in the reference case. This is because the limitations which differ in the reference case lie entirely within the scope of the pending claim.
Pending claims 18075398
Reference claims 17733987
Claim 11: A method for producing a beverage comprising:
a. Mixing malt, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials, and water;
b. Heating to at least 75°C for at least 20 minutes, then cooling;
c. Adding yeast, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials;
d. Aerating and controlling temperature to at least 32°C for at least 3 hours;
e. heating to boiling; and then
f. cooling.
Claim 11: A method for producing a beverage comprising:
a. Mixing malt, with or without hops, flavor-active materials such as spices, psychoactive materials, and/or physiologically active materials, and water;
b. Heating to at least 75°C for at least 20 minutes, then cooling;
c. Adding yeast, with or without hops, flavor-active materials such as spices, psychoactive materials, and/or physiologically active materials;
d. Aerating and controlling temperature to at least 32°C (range of 0-350C, up to 75°C) for at least 3 hours (range of 0.01 - 5 hours, up to 2 weeks);
e. heating to boiling; and then
f. cooling.
12. The method according to claim 11, wherein the beverage contains 0.00-0.49% alcohol.
12. The method according to claim 11, wherein the beverage contains 0.0% alcohol.
Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-14 of copending Application No. 18275198. Each of the limitations of the pending case either is identical in language to or is anticipated by corresponding limitations in the reference case. This is because the limitations which differ in the reference case lie entirely within the scope of the pending claim.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pending claims 18075398
Reference claims 18275198
Claim 1: A method for producing a beverage comprising:
a. Mixing malt, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials, and water;
b. Heating to at least 75°C for at least 20 minutes, then cooling;
c. Adding yeast, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials;
d. Aerating and controlling temperature to at least 32°C for at least 3 hours;
e. heating to boiling; and then
f. cooling.
Claim 13: A method for producing a beverage comprising:
a. Mixing malt and water;
b. Heating to at least 75 °C for at least 20 minutes;
c. Adding yeast;
d. Aerating to at least 30 °C for at least 3 hours; e. heating to boiling; and then
f. cooling.
12. The method according to claim 11, wherein the beverage contains 0.00-0.49% alcohol.
14. The method according to claim 1, wherein the beverage contains 0.0% alcohol.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-2 and 23-24, drawn a method of producing a beverage including adding maltodextrin, water, lactic acid, and hop solution into the mixture
II. Claim 11, 21-22 and 25-26, drawn a method of producing a beverage including heating to at least 75 degrees C for at least 20 minutes then cooling
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different designs (Inventions I requires adding maltodextrin, while Invention II require heating to at least 75 degrees C for at least 20 minutes then cooling). Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Kathryn Madison on 1/7/2026 a provisional election was made without traverse to prosecute the invention of Inventions II, claim 11, 21-22 and 25-26. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-2, and 23-24 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations of “aerating and controlling temperature to at least 32°C for at least 3 hours” of claim 11 and “the beverage is produced in less than 12 hours” of claim 25 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 11-12, 21-22, and 25-26 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.
Regarding claim 11, the limitation “Heating to at least 75°C for at least 20 minutes, then cooling” is vague and unclear. One of ordinary skill in the art would not find it obvious what is being heated to at least 75 degrees for at least 20 minutes and then cooled. Figure 3 of the applicant’s drawings filed 12/05/2022 describe two steps of heating and then cooling which would reasonably satisfy the limitation, one of which is the initial Walt+Water+yeast step while the other is the pre-boil alcohol check. Both of these steps involve increasing the temperature at least 75°C for at least 20 minutes, then cooling. It is thus unclear what the applicant intends to heat and then subsequently cool, whether it is one of the mixtures recited in the claim or a substance entirely unspecified in the claim. The limitations of “heating to boiling” and “cooling” in steps e and f are similarly rejected.
Regarding claim 11, the limitation “Adding yeast, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials” is unclear. One of ordinary skill in the art would not only be unclear when the yeast and/or other materials are being added but furthermore what the yeast and/or other materials are being added to. It is unclear whether the step of adding yeast and/or the other materials needs to be performed with the mixture introduced in the claim or whether adding yeast and/or other materials to an entirely separate mixture would satisfy the limitation.
Regarding claim 11, the limitation “Aerating and controlling temperature to at least 32°C for at least 3 hours” is unclear. One of ordinary skill in the art would not find it obvious what is being aerated and temperature controlled. Claim 1 and Paragraph 70 of the applicant specifications filed 12/05/2022 teaches of aerating the mixture, but said limitation is clearly directed toward a different embodiment of the invention, and thus it is unclear whether the claimed embodiment similarly directs the aerating and temperature control toward the mixture, or whether aerating and temperature controlling a substance entirely unspecified in the claim would satisfy the limitations of the claim.
Regarding claim 11, the limitations of “with or without hops” are indefinite. One of ordinary skill in the art would find it unclear how the limitations intend to limits the claim.
Claims 12, 21-22, and 25-26 are rejected as being dependent upon claim 11.
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.
Claim(s) 11-12, 21-22, and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over HASENKRUG (EP 2380967 A1) in view of Dziondziak (US 4882177 A).
Regarding claim 11, HASENKRUG (EP 2380967 A1) teaches a method for producing a beverage comprising:
a. Mixing malt, with or without hops (Paragraph 10, step f addition of hops), flavor-active materials including spices, psychoactive materials, and/or physiologically active materials (malt; Paragraph 10, providing malt), and water (Paragraph 10, steps a and b which includes providing malt and adding water);
b. Heating to at least 75°C for at least 20 minutes (Paragraph 10, steps b and c includes heating to 70 to 76 degrees C and maintaining until no more starch is detected; Paragraphs 10 and 37, boiling for approximately 45 minutes), then cooling (Paragraphs 10 and 37, step h of cooling to a temperature below 20 degrees after boiling; mixture is eventually cooled for consumption);
c. Adding yeast, with or without hops, flavor-active materials including spices, psychoactive materials, and/or physiologically active materials (yeast; Paragraph 10, step f which includes addition of yeast culture);
d. controlling temperature to at least 32°C (Paragraph 10, step d of heating to temperature of at least 78 degrees C; Paragraph 24, fermentation takes place for between 1 and 12 hours);
e. heating to boiling (Paragraph 10, step i includes boiling of the beer wort to obtain a wort); and then
f. cooling (Paragraph 10, step h of cooling to a temperature below 20 degrees C).
HASENKRUG fails to explicitly teach:
d. Aerating and controlling temperature to at least 32°C for at least 3 hours
Dziondziak (US 4882177 A) teaches a method for production of alcohol-free beer, comprising:
d. Aerating (Column 3 Lines 33-45, steam-saturated air is used to desorb the alcohol during treatment of the beer) and controlling temperature to at least 32°C for at least 3 hours (Column 2 Lines 45-54, desorption treatment carried out at a temperature from 25 degrees C to 35 degrees C wherein treatment lasts for 45 to 180 minutes)
It would have thus been obvious to someone of ordinary skill in the art before the filing date of the claimed invention to have modified HASENKRUG with Dziondziak and aerated the beer at the temperature of at least 32 degrees C for at least 3 hours. This would have been done to create non-alcoholic beer while maintaining the taste to that of normal alcoholic beer (Column 1 Lines 36-56).
Regarding claim 12, HASENKRUG as modified teaches the method according to claim 11, wherein
the beverage contains 0.00-0.49% alcohol (Paragraph 39, alcohol content is below 0.5% by volume).
Regarding claim 21, HASENKRUG as modified teaches the method according to claim 11, wherein
there is minimal yeast contact time (Paragraphs 21-26, yeast solids that settle out are removed in the usual way; Paragraphs 21-26, lower dosages of yeast are used and fermentation takes placed until the extract content has decreased by a certain amount; Paragraph 24, fermentation only takes 1 to 12 hours) and; wherein
the yeast is undergoing aerobic respiration (Paragraph 21, yeast grows while consuming oxygen).
Regarding claim 22, HASENKRUG as modified teaches the method according to claim 11, wherein
yeast-produced flavor compounds remain in the final product to provide beer-like flavor and aroma (Paragraph 28, dilution step results in a beer with a pleasant taste; Paragraph 31, drink retains a typical beer taste).
Regarding claim 25, HASENKRUG as modified teaches the method according to claim 11, wherein
the beverage is produced in less than 12 hours (Paragraph 24, fermentation only takes 1 to 12 hours; fermentation step of beer can reasonably be considered the producing step as it is the step wherein the ingredients become the beer).
The Office further notes that creating a beverage quickly is advantageous and thus one of ordinary skill in the art would have found it optimal in producing a beverage as quickly as possible without compromising the quality of the drink. Since the process of fermentation can take only a single hour, it would be reasonable to assume that the beverage can be produced in less than 12 hours. Paragraph 20 of the Office’s specifications filed 12/05/2022 additionally teaches that the beer is produced less than a plurality of durations and thus there does not seem to be any special or unexpected result of the beer being produced in less than 12 hours.
Regarding claim 26, HASENKRUG as modified teaches the method according to claim 12, wherein
the yeast is selected from the group consisting of brewer's yeast (Paragraph 3, beer is made yeast), baker's yeast, wine yeast, champagne yeast and distillers yeast.
The Office further notes use of Saccharomyces cerevisiae brewer’s yeast is well known in the art as the yeast in non-alcoholic beer as evidenced by Malcorps (US 20160130540 A1) and Ota (US 20080118601 A1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANKLIN JEFFERSON WANG whose telephone number is (571)272-7782. The examiner can normally be reached M-F 10AM-6PM (E.S.T).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ibrahime Abraham can be reached at (571) 270-5569. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/F.J.W./Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761