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 .
Status of the Application
Receipt is acknowledged of the amendment and response filed 9/25/2025. Claims 1,2 and 5-19 are pending in the application. Claim 1,8 and 9 were amended, claims 3 and 4 were canceled, and new claims 10-19 were added.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/25/2025 was filed before close of prosecution in the application. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1,9 and dependent claims 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.
Claims 1 and 9 recite “ethyl glucoside containing composition” with the open-ended transitional phrase “comprising” which does not preclude other components in the composition, including other acids. It is unclear whether the composition is a solid, a liquid, a concentrate, and how the content of phosphoric acid is determined, whether this is based on dry weight, and what types of salts are included. In claim 1 it is not clear whether naturally present phosphoric acid/phosphates or purposefully added compounds contribute to the “content.” The exemplary embodiments are restricted to liquids with water content. However, the claimed invention is much broader in scope. Appropriate correction is required.
Regarding claim 9 absent a description of the composition the claimed method is not clear. One of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 2 and 5-18 are rejected under 35 U.S.C.103 as being unpatentable over Uemura et al. (JP 2017093341 A) in view of Oka et al. and Otaka et al. describing properties of sake, cited in an IDS and described in the written opinion of the International Searching Authority.
Regarding claim 1,2,7,8 and dependent claims, Uemura discloses an ethyl glucoside containing composition an alcoholic beverage comprises ethyl- alpha -glucoside, lactic acid, citric acid and malic acid, where the weight ratio of lactic acid content is 20-80% based on the total acids content. The composition therefore contains at least one acid from the group and a pH in the claimed range. Uemura discloses an exemplary ethyl glucoside content of about up to 3500ppm (0.35 wt.%). This is close to the lower limit of 0.4 wt.%. The glucose content
Uemura discloses phosphoric acid as a selection from acids. The open-ended transitional phrase “comprising” does not preclude other acids in the claimed composition. Furthermore, phosphoric acid is generally used to provide a neutral flavor and a clean taste without excessive sourness in caffeine containing beverages for example, which have bitterness/astringency. One of ordinary skill in the art looking to mask the known pungency/astringency of ethyl glucoside, would have been motivated to include phosphoric acid in experimentally optimized amounts, as in claim 9, to mask pungent taste with a reasonable expectation of success. Motivation to add phosphoric acid salts is provided in Oka. Oka describes a synthetic sake obtained by adding 2 g/100 ml of alpha ethyl glucoside to a synthetic sake containing predetermined quantities of glucose, lactic acid, sodium phosphate, and calcium phosphate (see page 456, left column, lines 3-7, table II, page 460, right column, lines 3-9). Further, Oka describes a commercially available sake containing glucose and an average of 0.45 g/100 ml of alpha-ethyl glucoside (see page 458, right column, line 25 to page 459, left column, table II).
Otaka discloses lactic acid and phosphoric acid in refined sake, falling within the claimed broad range (see page 882, table 3), which is likely to be present in synthetic sake in Oka.
It would have been obvious to one of ordinary skill in the art to have selected phosphoric acid or a phosphate in a composition for sake, at experimentally optimized levels, for example, with a reasonable expectation of successfully producing a composition with desired taste characteristics.
Regarding claims 7 and 8, and dependent claims, finished sake, for example, typically has residual sugars in the range of 0.5-4.2g/100mL, that are contributory to brix values as claimed.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer.v.Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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).
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.
No unexpected coaction or cooperative relationship between the ingredients has been established.
Regarding claim 9, a method as claimed is inherent in the cited art, as acid addition is known to reduce astringency. Uemura discloses that by the method of the present invention, it is possible to improve an unfavorable aftertaste in a low alcoholic
beverage using a brewed liquor made from rice or rice koji as a base, and specifically, to prevent aftertaste such as sweetness and bitterness. Furthermore, phosphoric acid is generally used to provide a neutral flavor and a clean taste without excessive sourness in caffeine containing beverages for example, which have bitterness/astringency. One of ordinary skill in the art looking to mask the known pungency/astringency of ethyl glucoside, would have been motivated to include phosphoric acid in experimentally optimized amounts, as in claim 9, to mask pungent taste with a reasonable expectation of success.
Regarding claims 10-18, defining a composition by brix and phosphoric acid content, a meaningful comparison with prior art cannot be made until the indefiniteness issues are resolved.
Claims 1,2 and 5-18 are therefore prima facie obvious in view of the art.
Claim 19 is rejected under 35 USC 103 as being unpatentable over JP2002-348242A, in view of Alcazar et al. (page 101 Table 3) both cited in an IDS.
Regarding claim 19, the ‘342 application (Example 2) discloses a black tea beverage comprising 0.5g of ethyl-α-glucoside ( [0041] - [0044]), which is not sake. The presence and content of phosphoric acids in black teas is shown in Alcazar (see p.101 Table 3 ). It is expected that black tea beverage would likely have a content of phosphoric acid/phosphate in the claimed broad range (2.93 mg/g dry black tea), meeting the limitations in claim 1. 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).
Response to Arguments
Claim amendments render the previous rejections under 35 USC 112(b) moot. However, the claims as amended present new grounds for rejection as detailed in the current Office action. As the independent claims are indefinite, a meaningful comparison with prior art is not possible until these issues are resolved. Applicant’s arguments are not commensurate in scope with the claimed invention. The previously cited prior art is therefore retained in the current Office action. For these reasons, applicant’s arguments are not completely persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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/SUBBALAKSHMI PRAKASH/ Primary Examiner, Art Unit 1793