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Claims 11 and 17-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/16/2025.
Applicant's election with traverse of Group I, claims 1-10 in the reply filed on 10/16/2025 is acknowledged. Claims 12-16, 19 and 20 are amended to be product claims and depend from claim 1. Thus, these claims are rejoined with Group I. Thus, the election is considered for claims 1-10, 12-16, 19 and 20. Claims 11, 17 and 18 were amended, but are method claims and are not rejoined to the product claims.
The traversal is on the ground(s) that a serious burden has not been established. This is not found persuasive because the method claims require a different search. Applicant cited MPEP 808.02 as requiring an “entirely different fields of search”. However, MPEP 808.02 requires “a different field of search”. Here, claim 11 sets forth a precise sequence of addition of materials to a mixing vessel which is not commensurate with the search that is required for the product claims. Here, the product may be made by a different method, such as formation of a powder material comprising the ingredients which is then added to water to form the beverage. Sequential addition of the materials to water is a distinct method and requires a significantly more complicated search and consideration. Moreover, claim 11 requires the addition of natural coloring material which is not required by the product claims. Thus, the field of search is different and a serious burden on the examiner has been established.
Please note that should claim 1 be found allowable, the method claims that depend thereon will be considered for rejoinder.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s arguments regarding the species restriction are persuasive and the species restriction is withdrawn.
Thus, claims 1-10, 12-16, 19 and 20 are examined herein.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 repeats “pinene” and “terpinene” in the listing of volatile organic compounds. 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 1-10, 12-16, 19 and 20 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.
The term “substantially free” in claim 1 as part of “substantially free from any natural juice” is a relative term which renders the claim indefinite. The term “substantially free” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The instant specification in [0024] states that as an example the duplicate beverage an include at or around 0 percentage by weight of natural juice based on the total weight of the beverage. [0024] also states that “negligible” amounts (e.g. a fraction of a percentage by weight based on the total weight of the beverage that is less than 1 percentage by weight of natural juice based on the total weight of the beverage. However, [0008] states that the terms “duplicate beverage” and “synthetic beverage” generally refer to beverages that contain less than a minimal threshold of the fruit and/or vegetable from which the beverage would traditionally be derived. [0024] and [0008] set forth two potential interpretations of “substantially free”. The example of less than 1wt% from [0024] is merely exemplary and is not necessarily the same as the “minimal threshold amount” of [0008]. The same issue is present in claim 6.
Claim 1 recites the limitation "the natural juice" in line 16. There is insufficient antecedent basis for this limitation in the claim. The claim previously refers to being substantially free from any natural juice. The claim then states that the beverage is “exhibits a substantially similar aroma... of the natural juice”. However, no specific juice is referenced and it is not clear if “the juice” refers to a single juice or a compilation of juices. The same issue is present in claim 6.
Dependent claims are included as they incorporate these issues.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2010/0178390 (Kamarei).
Regarding claims 1-3, and 5, Kamarei discloses a simulated beverage simulating a natural juice which is substantially free of natural juice and organoleptically similar to the natural juice (abstract). Thus, the beverage of Kamarei is considered to be “substantially free” of natural juice and exhibits a substantially similar mouthfeel to natural juice. Table 2 sets forth an example of a simulated orange juice including water, HFCS-55 (high fructose corn syrup having 55% fructose), ascorbic acid, citric acid and potassium citrate (volatile organic compound). Based upon calculations of the total weight of the beverage (4141.37 g), the water is present in an amount of 85.23wt%, the citric acid is present in an amount of 0.85 wt%; the ascorbic acid is present in an amount of 0.039wt%, the fructose is present in an amount of 4.63wt% (55% of 8.42wt%); and the potassium citrate is present in an amount of 0.56wt%. These values fall within the claimed ranges. The citric acid or ascorbic acid may also be considered to meet the volatile organic compound as well.
Claim(s) 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,424,082 (Dake).
Dake discloses a beverage composition that may be synthetically prepared and made to simulate fruit flavors derived from natural sources, particularly citrus flavors (col. 2, lines 57-65). Thus, the beverage is seen to be “substantially similar” to juice. Dake discloses that the addition of fruit juices is optional (col. 6, lines 43-48). Example 1 includes water (84.3wt%), HFCS55 (14.10wt% which would provide 7.75wt% fructose), malic acid (0.447wt%) (considered a VOC), citric acid (0.609 wt%) and ascorbic acid (0.043wt%) as well as sodium citrate (also a VOC) (0.108wt%). These amounts fall within the ranges claimed. Example 1 does not include fruit juice. The beverage of Example 1 may be provided with a fruit flavor by adding 0.01-3wt% of a flavor component. Note that [0025] of the instant specification lists malic acid as an ingredient that may be added in varying amounts. Thus, claim 1 is not seen to preclude the presence of higher amounts of malic acid since malic acid is disclosed as an additional ingredient that may be present in the beverage disclosed. Claim 1 uses “comprising” language, thus additional materials may be present.
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) 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0178390 (Kamarei) in view of US 2010/0196577 (Rivera ‘577).
Kamarei discloses the simulated beverage discussed above but does not disclose the addition of glycerin. Rivera discloses a beverage that contains minimal or no juice [0035] and also discloses that a hydration improving substance comprising glycerol (another name for glycerin) may be added to assist in fluid absorption. The amount of glycerol added may be 0.5-5wt% of the beverage [0009, 0018]. It would have been obvious to one of ordinary skill in the art to add glycerin to the beverage of Kamarei to improve the fluid absorption of the beverage and thus improve hydration of the consumer as taught by Rivera ‘577.
Regarding claim 16, the precise amounts claimed are considered obvious to one of ordinary skill based upon size of the beverage being made, as well as the taste desired. The amounts of each ingredient affect the taste and overall characteristics of the beverage. One of ordinary skill would find it obvious to adjust the amounts thereof to provide the desired taste and characteristics. Claiming the precise amount of a single material is not seen to provide a patentable distinction from the prior art in light of the level of ordinary skill and the ability of the ordinary artisan to optimize the amounts of the ingredients to provide the desired taste and characteristics of the beverage.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0178390 (Kamarei) in view of US 2011/0123677 (Rivera ‘677).
Kamarei discloses the simulated beverage discussed above but does not disclose the addition of the claimed volatile organic compounds. Rivera discloses ingredients used to provide a citrus flavor including Limone, pinene, linalool, and citral [0048]. The flavoring may be added in an amount of 0.001-0.005wt% of the beverage [0048]. It would have been obvious to one of ordinary skill to use known flavorants to provide citrus flavor in the beverage of Kamarei with a reasonable expectation of providing citrus flavors as taught by Rivera ‘677.
Claim(s) 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,424,082 (Dake) in view of US 2010/0196577 (Rivera ‘577).
Dake discloses the beverage discussed above but does not disclose the addition of glycerin. Rivera discloses a beverage that contains minimal or no juice [0035] and also discloses that a hydration improving substance comprising glycerol (another name for glycerin) may be added to assist in fluid absorption. The amount of glycerol added may be 0.5-5wt% of the beverage [0009, 0018]. It would have been obvious to one of ordinary skill in the art to add glycerin to the beverage of Dake to improve the fluid absorption of the beverage and thus improve hydration of the consumer as taught by Rivera ‘577.
Regarding claim 16, the precise amounts claimed are considered obvious to one of ordinary skill based upon size of the beverage being made, as well as the taste desired. The amounts of each ingredient affect the taste and overall characteristics of the beverage. One of ordinary skill would find it obvious to adjust the amounts thereof to provide the desired taste and characteristics. Claiming the precise amount of a single material is not seen to provide a patentable distinction from the prior art in light of the level of ordinary skill and the ability of the ordinary artisan to optimize the amounts of the ingredients to provide the desired taste and characteristics of the beverage.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,424,082 (Dake) in view of US 2011/0123677 (Rivera ‘677).
Dake discloses the beverage discussed above but does not disclose the addition of the claimed volatile organic compounds. Rivera discloses ingredients used to provide a citrus flavor including Limone, pinene, linalool, and citral [0048]. The flavoring may be added in an amount of 0.001-0.005wt% of the beverage [0048]. It would have been obvious to one of ordinary skill to use known flavorants to provide citrus flavor in the beverage of Dake with a reasonable expectation of providing citrus flavors as taught by Rivera ‘677.
Claim(s) 6, 8-10, 13-15, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0178390 (Kamarei).
Kamarei discloses the simulated beverage disclosed above and discloses an example of water, citric acid, ascorbic acid and VOCs. Kamarei does not disclose a precise example with the claimed amounts. Regarding claim 6, the amount of water is 300-500mL. The materials required are present and the amount of water is considered obvious based upon the size of drink desired. For instance, even if one makes a liter of the material, a sample of 300-500 mL may be separated from the liter for consumption. Thus, the particular amount of water is not seen to confer any patentable distinction over Kamarei and one of ordinary skill would have found it obvious to make any amount of the beverage depending upon the amount desired.
Regarding claims 8-10, 13-15 and 20, the precise amounts claimed are considered obvious to one of ordinary skill based upon size of the beverage being made, as well as the taste desired. The amounts of each ingredient affect the taste and overall characteristics of the beverage. One of ordinary skill would find it obvious to adjust the amounts thereof to provide the desired taste and characteristics. Moreover, for claims 8-10, the amount of water may vary from 300-500mL, the concentration of the materials of claims 8-10 are not precise and would vary depending upon the amount of water and other ingredients added to the beverage. Thus, while the precise amount is claimed, the actual concentration is variable in the final product claimed. In other words, one of ordinary skill would have found it obvious to optimize the amounts of acids and fructose and water and claiming the precise amount of a single material is not seen to provide a patentable distinction from the prior art in light of the level of ordinary skill and the ability of the ordinary artisan to optimize the amounts of the ingredients to provide the desired taste and characteristics of the beverage. 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.
Claim(s) 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0178390 (Kamarei) in view of US 5,424,082 (Dake).
Kamarei does not teach the addition of malic acid to the beverage. Dake teaches the use of acid buffering agents comprising citric acid, malic acid and gives an example where they are used together. It would have been obvious to one of ordinary skill to add malic acid to the beverage of Kamarei to provide buffering thereto as disclosed by Dake. Dake also teaches that the buffering acids may be added in amounts of 0.01-4wt% which overlaps the range for malic acid of claim 1.
The precise amounts claimed are considered obvious to one of ordinary skill based upon size of the beverage being made, as well as the taste desired and characteristics desired. The amounts of each ingredient affect the taste and overall characteristics of the beverage. One of ordinary skill would find it obvious to adjust the amounts thereof to provide the desired taste and characteristics. Claiming the precise amount of a single material is not seen to provide a patentable distinction from the prior art in light of the level of ordinary skill and the ability of the ordinary artisan to optimize the amounts of the ingredients to provide the desired taste and characteristics of the beverage.
Claim(s) 6-10, 12-15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,424,082 (Dake).
Dake discloses the beverage disclosed above and discloses an example of water, citric acid, malic acid, ascorbic acid and VOCs. Dake does not disclose a precise example with the claimed amounts. Regarding claim 6, the amount of water is 300-500mL. The materials required are present and the amount of water is considered obvious based upon the size of drink desired. For instance, even if one makes a liter of the material, a sample of 300-500 mL may be separated from the liter for consumption. Thus, the particular amount of water is not seen to confer any patentable distinction over Dake and one of ordinary skill would have found it obvious to make any amount of the beverage depending upon the amount desired.
Regarding claims 7-10, 12-15 and 20, the precise amounts claimed are considered obvious to one of ordinary skill based upon size of the beverage being made, as well as the taste desired. The amounts of each ingredient affect the taste and overall characteristics of the beverage. One of ordinary skill would find it obvious to adjust the amounts thereof to provide the desired taste and characteristics. Moreover, for claims 8-10, the amount of water may vary from 300-500mL, the concentration of the materials of claims 8-10 are not precise and would vary depending upon the amount of water and other ingredients added to the beverage. Thus, while the precise amount is claimed, the actual concentration is variable in the final product claimed. In other words, one of ordinary skill would have found it obvious to optimize the amounts of acids and fructose and water and claiming the precise amount of a single material is not seen to provide a patentable distinction from the prior art in light of the level of ordinary skill and the ability of the ordinary artisan to optimize the amounts of the ingredients to provide the desired taste and characteristics of the beverage. 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/Primary Examiner, Art Unit 1793