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 .
Claim Objections
Claims 9, 14, 17, 18, and 19 are objected to because of the following informalities:
Claim 9 recites “one or more micronize wood” and should properly read “one or more micronized wood”.
Claim 9 additionally recites “wait an infusion time-period” and should properly read “waiting an infusion time-period”.
Claim 9 additionally recites “filter the micronized” and should properly read “filtering the micronized”.
Claims 14 and 17 recite “wherein the one or more woods” and should properly read “wherein one or more wood products”, or alternatively “wherein the wood for one or more wood products”.
Claim 18 recites the limitation “A flavoring infusion product by formed” and should properly read “A flavoring infusion product formed by”.
Claim 19 recite the limitation "the infusion product is particles are Oak ” and should properly read “the infusion product particles are Oak”.
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 1-8, 10, 11, and 18-20 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.
Claim 1 recites a limitation wherein “substantially most” of one or more woods are broken at weak structural locations. The term “substantially most” in claim 1 is a relative term which renders the claim indefinite. The term “substantially most” 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. For the purposes of examination, the limitation is interpreted as any amount of wood broken at any structural locations.
Claim 1 additionally recites the limitation of a “weak” structural location. The term “weak” is a relative term which renders the claim indefinite. The term “weak” 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. No criteria are provided for distinguishing between a “weak” structural location that is broken, and any structural location that is broken. For the purposes of examination, the limitation is interpreted as any structural location that is broken.
Claim 1 additionally recites the limitation “such as cell walls or other boundary areas”. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-8 depend from independent Claim 1 and are therefore also rejected.
Claim 2 recites a limitation wherein the “micronization size is substantially between two and fifty microns”. The term “substantially” in claim 2 is a relative term which renders the claim indefinite. The term “substantially” 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. For the purposes of examination, the limitation is interpreted as any amount of wood product between two and fifty microns.
Claims 3 and 11 contain the trademark/trade name “Librixer”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe mechanical comminution and, accordingly, the identification/description is indefinite. For the purposes of examination, the claim is interpreted as micronization using any method.
Claim 10 recites a limitation wherein the “micronized wood product is substantially between two and fifty microns”. The term “substantially” in claim 10 is a relative term which renders the claim indefinite. The term “substantially” 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. For the purposes of examination, the limitation is interpreted as any amount of wood product between two and fifty microns.
Claim 18 recites a limitation wherein “one or more woods is substantially broken at weak structural locations”. The terms “substantially broken” and “weak” in claim 18 are relative terms which render the claim indefinite. The terms “substantially broken” and “weak” are 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. For the purposes of examination, the limitation is interpreted as any degree of broken at any location.
Claims 19-20 depend from independent Claim 18 and are therefore also rejected.
Claim 19 recites the limitation "the infusion product is particles [sic] are Oak and between two and fifty microns in size”. There is insufficient antecedent basis for this limitation in the claim, since infusion product particles were not previously mentioned. For the purposes of examination, the limitation is interpreted as “the Oak…is between two and fifty microns in size”.
Claim Rejections - 35 USC § 102
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.
Claims 1, 8-9, 14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowen (US 5356641, October 1994), taken with evidentiary reference of Fine Wood Work Association, Western Australia (https://mensshedswa.org.au/wp-content/uploads/2021/08/robert-loss-wood-dust.pdf, hereinafter FWWA).
Regarding Claim 1, Bowen teaches a method for flavoring beverages such as wine (Abstract). The method comprises selecting wood in, e.g. dust form (Column 3, Line 58) that has the desired qualities (Column 3, Lines 60-64). Note that since obtaining a wood dust requires micronization of wood, Bowen teaches the micronization of wood as claimed. Additionally, note that Bowen teaches that the method comprises selecting a size of wood, e.g. wood in chips or dust form (Column 3, Line 58). Additionally, note that all micronization methods will break wood at weak structural locations. The wood dust of Bowen is therefore interpreted to meet the limitations of the claim.
Regarding Claim 8, Bowen teaches the addition of the wood to wine for a period of time (Column 3, Line 3).
Regarding Claim 9, Bowen teaches a method for imparting flavor to wine comprising selecting a quantity of wood, adding the wood to a quantity of wine (Column 4, Lines 24-28), waiting for a period of time (Column 4, Line 41), and filtering the wood from the spirit (Column 4, Line 64).
Note that Bowen teaches that different woods have different qualities (Column 3, Lines 60-64), and are appropriate for different end uses of the wine. Bowen therefore teaches that selection of the wood is based on a target profile, as claimed.
Regarding Claim 14 and 17, Bowen teaches the use of oak wood (Column 3, Line 53).
Regarding Claim 16, Bowen teaches that the time period is based on a color change (Column 2, Lines 49-50).
Regarding Claim 18, Bowen teaches a method for flavoring beverages such as wine (Abstract). The method comprises selecting wood in, e.g. dust form (Column 3, Line 58). Note that since obtaining a wood dust requires micronization of wood, Bowen teaches the micronization of wood as claimed. Additionally, note that all micronization methods will break wood at weak structural locations. The wood dust of Bowen is therefore interpreted to meet the limitations of the claim.
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.
Claims 2, 6-7, 10, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen taken with evidentiary reference of FWWA, as applied to Claims 1, 9 and 18, above.
Regarding Claim 2, Bowen teaches a method for flavoring beverages such as wine (Abstract). The method comprises selecting wood in, e.g. dust form (Column 3, Line 58) that has the desired qualities (Column 3, Lines 60-64). Note that wood dust contains particles ranging in size from 0.1 microns to millimetres, which is on the order of thousands of microns (see evidentiary reference of FWWA, Page 3), which encompasses the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
Regarding Claims 6 and 7, Bowen teaches that the woods (such as toasted French oak, Column 3, Line 56) may be selected based on a desired flavor or color profile.
Regarding Claim 10, Bowen teaches that the method comprises selecting wood in, e.g. dust form (Column 3, Line 58). Note that wood dust contains particles ranging in size from 0.1 microns to millimetres, which is on the order of thousands of microns (see evidentiary reference of FWWA, Page 3). The dust of Bowen therefore encompasses the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
Regarding Claim 19, Bowen teaches the use of oak wood (Column 3, Line 53). Bowen teaches that the method comprises selecting wood in, e.g. dust form (Column 3, Line 58). Note that wood dust contains particles ranging in size from 0.1 microns to millimetres, which is on the order of thousands of microns (see evidentiary reference of FWWA, Page 3). The dust of Bowen therefore encompasses the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 I.
Regarding Claim 20, Bowen teaches the use of American or French Oak (Column 3, Lines 54-56).
Claims 3 and 11 are rejected are rejected under 35 U.S.C. 103 as being unpatentable over Bowen taken with evidentiary reference of FWWA, as applied to Claims 2 and 9, above, in view of Lundgren (WO 2020/254538 A2).
Regarding Claims 3, Bowen teaches a method for flavoring beverages such as wine (Abstract). The method comprises selecting wood in, e.g. dust form (Column 3, Line 58) that has the desired qualities (Column 3, Lines 60-64).
Bowen teaches the use of wood dust, which requires micronization, but does not teach a specific method for micronization of the wood.
Lundgren teaches that micronization via Librixer comminutor (Page 1, Lines 25-27) yields a homogeneous fine powder that can be used in a wide range of foods (Page 9, Lines 4 and 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize a Librixer comminutor to yield the wood dust of Bowen. One would have been motivated to make such a modification since Lundgren teaches that utilizing a Librixer comminutor yields a homogenous powder appropriate for use in foods.
Regarding Claim 11, note that since obtaining a wood dust requires micronization of wood, Bowen teaches a wood product that has been micronized as claimed.
Bowen does not teach a specific method for micronization of the wood.
Lundgren teaches that micronization via Librixer comminutor (Page 1, Lines 25-27) yields a homogeneous fine powder that can be used in a wide range of foods (Page 9, Lines 4 and 10).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to utilize a Librixer comminutor to yield the wood dust of Bowen. One would have been motivated to make such a modification since Lundgren teaches that utilizing a Librixer comminutor yields a homogenous powder appropriate for use in foods.
Claims 4, 5, 12, 13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen taken with evidentiary reference of FWWA, as applied to Claims 2 and 9, above, in view of Gravity Wine House (https://gravitywinehouse.com/blog/wine-production-barrels-selection-wood-grain/, May 2019)
Regarding Claims 4, 5, 12, and 13, Bowen teaches the use of different wood types of wood, and additionally teaches that may be selected depending on the end use (Column 3, Lines 53-64).
Bowen does not specifically address the color or flavor profile of a wood as criteria for selecting the wood.
Gravity Wine House teaches that different species of a tree impart different flavors to a wine (Page 2, Paragraph 2). Gravity Wine House additionally teaches that different species have different oxygen permeability (Page 5, Paragraph 3), which affects color (Page 1, Paragraph 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to select a wood for the process of Bowen based on the desired flavor or color profile. One would have been motivated to make such a modification since Gravity Wine House teaches that different woods impart different flavors and colors.
Regarding Claim 15, Bowen teaches an infused wine product as discussed above in regards to Claim 9, but does not specifically teach selecting the time period based on the quantity or wood, wine, or an infusion time table.
However, it is known in the art that the strength of an imparted flavor is a result effective variable. One having ordinary skill in the art would know that a larger quantity of wood and length of an infusion would impart more characteristics of the wood (e.g. color of flavor) to the infusion product. It has long been settled to be no more than routine experimentation for one of ordinary skill in the art to discover an optimum value of a result effective variable. It therefore would have been obvious for one of ordinary skill to select the length of an infusion based on the quantity of wood or wine. It additionally would have been obvious to determine a length of time based on an infusion time-table.
Conclusion
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.
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, 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.
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.
/D.L./ Examiner, Art Unit 1791
/Nikki H. Dees/ Supervisory Patent Examiner, Art Unit 1791