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 .
Election/Restrictions
Claims 1-2 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/29/2025.
Applicant’s election without traverse of claims 3-8 in the reply filed on 11/29/2025 is acknowledged.
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 3-4 and 6-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,879,115. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 3 of the instant application is directed to a method to improve the quality of a beverage
which is tequila or mezcal or a drink with reduced alcohol content produced therefrom, which method comprises
altering the ratio of inhibitors of monoamine oxidases A and B (MAO A and MAO B) contained therein
to increase the ratio of inhibitor of MAO B to that of MAO A or
comprises enhancing the concentration of inhibitor of MAO B.
Claim 1 of U.S. Patent No. 11,879,115 is directed to a method to improve the quality of a beverage which is tequila or mezcal or a drink with alcohol by volume (ABV) of 2% or less produced therefrom, which method comprises
altering the ratio of inhibitors of monoamine oxidases A and B (MAO A and MAO B) contained therein
to increase the ratio of inhibitor of MAO B to that of MAO A,
wherein the altering comprises subjecting the beverage to reverse osmosis with a 90%-99% NaCl rejection membrane.
Both claims are directed to a method to improve the quality of a beverage which is tequila or mezcal or a drink with reduced alcohol content produced therefrom, which method comprises altering the ratio of inhibitors of monoamine oxidases A and B (MAO A and MAO B) contained therein to increase the ratio of inhibitor of MAO B to that of MAO A.
Claim 4 of the instant application and claim 2 of U.S. Patent No. 11,879,115 are directed to method of claim 3(1), wherein the improved quality is the experiential perception of a person consuming the improved beverage.
Claim 6 of the instant application and claim 4 of U.S. Patent No. 11,879,115 are directed to method of claim 3(1), wherein the altering further comprises adding inhibitor of MAO B isolated from tequila or mezcal or a drink with ABV of 2% or less produced therefrom to the beverage.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 3-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brocia (US 20200165552 A1).
In regard to claims 3 and 7, Brocia discloses “[a]gave derived beverages with improved quality contain enhanced ratios of MAO B to MAO A inhibitors or enhanced concentration of inhibitor of MAO B” (Abstract). In regard to claim 3, Brocia discloses:
[0007] Thus, the invention is directed to a method to improve the quality of a beverage which is tequila or mezcal or a drink with reduced alcohol content derived therefrom which method comprises altering the ratio of inhibitor of MAO B to inhibitor of MAO A contained therein to increase this ratio in favor of B and/or increasing the concentration of the MAO B inhibitor.
[0012] With respect to the first aspect of the invention, the quality of a beverage which is tequila or mezcal or a drink with reduced alcohol content derived therefrom is improved by altering the ratio of inhibitor of MAO B to inhibitor of MAO A contained therein to increase this ratio in favor of B and/or simply increasing the concentration of the MAO B inhibitor.
Therefore, Brocia meets all the limitations of a method to improve the quality of a beverage which is tequila or mezcal or a drink with reduced alcohol content produced therefrom, which method comprises altering the ratio of inhibitors of monoamine oxidases A and B (MAO A and MAO B) contained therein to increase the ratio of inhibitor of MAO B to that of MAO A or comprises enhancing the concentration of inhibitor of MAO B.
Brocia anticipates claim 3.
In regard to claim 4, Brocia discloses the method as discussed above wherein the improved quality is the experiential perception of a person consuming said beverage (claim 2).
In regard to claim 6, Brocia discloses:
[0015] Another method is, of course, simply to add inhibitor to MAO B that has been enriched or purified from an additional sample of the tequila, mezcal or reduced alcohol form. The sample may be of the same beverage or a different member of the class of beverages. Methods to separate or enrich individual compounds from complex mixtures are known in the art, including various chromatographic methods such as HPLC.
Hence, in regard to claim 6, Brocia discloses adding an inhibitor of MAO B isolated from tequila, mezcal or drink with reduced alcohol produced from tequila or mezcal.
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.
Claim(s) 5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brocia (US 20200165552 A1) in view of Arai Masanao et al (JP 2007060929 A).
Brocia does not disclose addition of terpene, eugenol, citral, Geraniol, terpinolene, terpineol, myrcene, valencene or limonene to the beverage. Arai Masanao et al discloses a beverage containing a terpene compound (Technical Field). Arai Masanao et al discloses addition of terpene compounds such as limonene, myrcene, and valencene in order to more effectively suppress the propagation of heat-resistant acidophilic bacteria while maintaining good flavor and appearance (Tech Solution). Arai Masanao et al discloses addition of 60 ppm or more and 2000 ppm or less of limonene, 0.6 ppm or more and 100 ppm or less of myrcene, 7 ppm or more and 300 ppm or less of valencene (Tech Solution). One of ordinary skill in the art would have been motivated to modify Brocia in view of Arai Masanao et al and to add limonene, myrcene, and/or valencene to the beverage as disclosed by Brocia in order to more effectively suppress the propagation of heat-resistant acidophilic bacteria while maintaining good flavor and appearance as suggested by Arai Masanao et al.
Further in regard to the concentration recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the temperature ranges as examined above, it is noted that 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791