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 .
Response to Election/Restrictions and Status of Claims
Applicant’s election without traverse of the invention of Group II (Claims 24-26), drawn to a fermented malt beverage, in the reply filed 07/30/2025, is acknowledged by the Examiner.
Claims 1-23 are withdrawn pursuant to 37 C.F.R. 1.142(b) as being drawn to non-elected subject matter. The claims corresponding to the elected subject matter are Claims 24-26, and are herein acted on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/01/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Claim Objections
Claim 25 are objected to because of the following informalities: Some claims are written in less formal and/or narrative form:
Claim 25 recites the acronym “IBU”, which needs to be expanded as acronyms need to be defined on first use.
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.
Claims 24-26 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 24 is rejected for indefiniteness for the recitation of “a carbonation level in a range of 2.0 to 4.0 volumes of carbon dioxide”. It is unclear if the volumes refered to are with respect to the malt beverage, in the diluting liquid, or something else. Clarification is requested.
Claims 24 and 25 are indefinite due to the absence of period at the end of the claims. It is therefore unknown if the claim ends after the recitation of “Tinseth method” and “any two or more of these”, respectively, or if additional features have been left out.
Claim 26, which depends from Claim 24, is also rejected.
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.
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 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Miyoshi et al. (WO 2021/256479 A1), hereinafter Miyoshi, and in view of Popitz, M. (WO 2015/142611 A1), and Slaby et al. (CZ 306371 B6, machine translated in IP.com), hereinafter Slaby.
Miyoshi teaches the production of a fermented malt liquid comprising a saccharified malt to conduct aerated fermentation (Claim 1).
Regarding Claim 24, Miyoshi recognizes the use of yeast from the genus Saccharomyces as the most widely used in the brewing of beer or wine [0003]. Miyoshi teaches using different yeast species for fermentation including Pichia kluyveri, Torulaspora delbrueckii, Saccharomycodes ludwigii, Saccharomyces cerevisiae species, and Saccharomyces pastorianus, also reading on the features of Claim 25 (Table 5; [0073]). Miyoshi teaches dilution of the fermented malt liquid with water or carbonated water at 2-10 fold dilution ([0039], [0061], [0078]). Miyoshi expressly teaches the fermented malt liquid to contain an ethanol concentration of 0.5% (Claim 4).
Because the yeast strains taught by Miyoshi are the same strains disclosed in the instant invention, they necessarily do not ferment maltose and maltotriose.
Miyoshi welcomes the addition of herbs for flavoring, but does not expressly teach the herbal compositions in Claim 24 [0022].
Popitz is also in the field of beverages, and teaches beverage compositions for administration to patients (Abstract). Popitz teaches embodiments wherein herbal compositions are incorporated into the beverage to decrease anxiety and induce a feeling of well-being in the subject (p. 9, last paragraph). For example, the composition comprises hops, valerian, chamomile, lemon balm, linden etc. and mixtures thereof (p. 9). Popitz teaches that chamomile may have clinical applications in the treatment of stress and insomnia; and have desirable properties inter alia anti-inflammatory, antihyperglycemic, and being a mild sedative ingredient in an instant beverage (pp. 26-27). Popitz recites that lemon balm leaves have been prescribed
for the treatment of disorders of the gastrointestinal tract, nervous system, liver and bile (pp. 27-28). Linden are commonly used for treating cold or cough, and has a light calming effect, helping to reduce anxiety (pp. 29).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine the teachings of Popitz with that of Miyoshi and incorporate the herbs chamomile, lemon balm, and linden in the beverage of Miyoshi to induce a calming effect, and obtain the other benefits provided by these herbs.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Regarding the feature of Claim 24 wherein the fermented malt beverage has a bitterness in a range of 8 IBU to 45 IBU, as measured by the Tinseth method, Miyoshi is silent on this feature.
Slaby discloses the process for the production of non-alcoholic beer with reduced gluten content by adding protease, and reducing heavy carbohydrates by fermentation (p. 3). Non-alcoholic beer is defined by Slaby as a fermented cereal malt beverage with alcohol content up to 0.5% volume (p. 1). In terms of bitterness of finished beer, Slaby considered the fermentation complete at 15 to 30 IBU (international bitterness unit). (p. 3). The fermented wort is filtered and subsequently hopped with hop cones, extract, and/or granulated hops, to achieve a bitterness of the finished beer of 15 to 30 IBU, preferably 25 IBU (pp. 4-5). The amount of alcohol in the wort is reduced by evaporation to a maximum of 0.5% by volume of the beer (p. 3). Slaby expressly teaches a production of the inventive beer wherein the yeast used for fermentation is Saccharomyces cerevisiae (p. 4; Examples 1-2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to combine Slaby in the fermented malt beverage taught by Miyoshi and make a fermented malt beverage with a bitterness between 15-30 IBU as taught by Slaby, and adjust the fermentation to obtain the desired IBU according to taste, and other factors such as marketability.
The Examiner notes that the recitation of “as measured by Tinseth method” is not given patentable weight.” If the product is the same as a product from the prior art, the claim is unpatentable. The MPEP indicates that the process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences' distinguishing the claimed product from the prior art”. See MPEP 2113. In the instant case, the burden is on the applicant to show that there exists a structural difference when the IBU measurement is performed using the Tinseth method in contrast to something else.
Regarding Claim 26, Miyoshi describes a method for producing beer with isoamyl acetate or ethyl acetate to allow wort to ferment under aerobic conditions using Pichia kluyveri [0003].
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached M-F, 10-6 EST.
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/J.Y.S./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792