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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 12-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/23/2025.
Applicant’s election without traverse of claims 1-11 in the reply filed on 09/23/2025 is acknowledged.
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 1-11 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 the limitation of:
An extract comprising phenethyl alcohol and acetaldehyde,
wherein a ratio of phenethyl alcohol content to acetaldehyde content (phenethyl alcohol content/acetaldehyde content) is 14 to 1,000.
A ratio is a simple comparison of two quantities, showing how much of one thing there is compared to another, often written with a colon (e.g., 3:2), as a fraction (e.g., 3/2), or with the word "to" (e.g., 3 to 2).
The limitation of “wherein a ratio of phenethyl alcohol content to acetaldehyde content (phenethyl alcohol content/acetaldehyde content) is 14 to 1,000” in claim 1 could be interpreted as a single numerical point of 0.014, where the ratio of 14 parts of phenethyl alcohol content to 1000 parts of acetaldehyde content is 14 to 1000.
However, according to the instant specification:
Regarding the extract of the present invention, for example, the ratio of phenethyl alcohol content to acetaldehyde content (phenethyl alcohol content/acetaldehyde content) can be 14 or more, 14 to 1,000, 20 to 900, 25 to 800, 30 to 700, 35 to 600, 40 to 500, 45 to 400, or 50 to 300. For example, the lower limit thereof may be 14 or more, 20 or more, 25 or more, 30 or more, 35 or more, 40 or more, 45 or more, or 50 or more. Alternatively, in addition to any of the lower limits, the upper limit thereof may be 1,000 or less, 800 or less, 600 or less, 400 or less, or 300 or less ([0036] of the PGPUB US 20240076590 A1).
Hence, the instant specification refers to the quotient of the amount (parts) phenethyl alcohol to the amount (parts) acetaldehyde, rather than a ratio of amount (parts) phenethyl alcohol to the amount (parts) acetaldehyde. Hence, the numerical range of from 14 to 100 refers to the quotient of the amount (parts) phenethyl alcohol to the amount (parts) acetaldehyde, rather than a ratio of amount (parts) phenethyl alcohol to the amount (parts) acetaldehyde, not to the ratio. Appropriate correction is required.
Claim 7 recites the limitation of “[t]he extract according to claim 1, which is an extract selected from the group consisting of distilled liquor, brewed liquor, and mixed liquor”. However, according to the instant specification, the extract is derived from the distilled liquor, brewed liquor, and mixed liquor:
[0034] The present invention provides an extract. The extract is derived from an alcoholic drink. For example, the extract may be an extract of an alcoholic drink. As used herein, the alcoholic drink means a beverage containing alcohol. The alcoholic drink may be either an alcoholic drink generally available or an alcoholic drink produced by a known or novel means. Examples of the alcoholic drink include, but are not limited to, distilled liquor, brewed liquor, and mixed liquor. It can be understood that the extract of the present invention encompasses one or more extracts selected from the group consisting of an extract of distilled liquor, an extract of brewed liquor, and an extract of mixed liquor ([0034] of the PGPUB US 20240076590 A1).
Claims 2-6 and 8-11 included in the rejection as depending from claim 1.
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) 1, 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Piornos et al (Elucidating the Odor-Active Aroma Compounds in Alcohol-Free Beer and Their Contribution to the Worty Flavor) (see IDS filed 10/28/2024).
In regard to claim 1, Piornos et al discloses an extract composition obtained by distillation of beer (page 8). The extract obtained from beer comprises phenethyl alcohol and acetaldehyde (Table 2 on page E). In regard to the concentrations of phenethyl alcohol and acetaldehyde, Piornos et al discloses:
The compounds with highest concentrations were 2-phenylethanol (20,700 μg/L), acetic acid (13,500 μg/L), 2-phenylaceticacid(1930 μg/L), and acetaldehyde(1200 μg/L) (page E left column bottom paragraph).
Hence, the quotient of the amount of phenethyl alcohol (i.e. 2-phenylethanol) to the amount of acetaldehyde is 17.25, which is within the claimed range of from 14 to 1000.
In regard to claim 3, Piornos et al discloses the content of acetaldehyde is 1200 μg/L (1.2 ppm) (page E left column bottom paragraph).
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.
Claim(s) 2, 4-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Piornos et al (Elucidating the Odor-Active Aroma Compounds in Alcohol-Free Beer and Their Contribution to the Worty Flavor) (see IDS filed 10/28/2024).
In regard to claim 2, Piornos et al discloses the content of phenethyl alcohol (i.e. 2-phenylethanol) is 20,700 μg/L (20.7 ppm) (page E left column bottom paragraph).
In regard to claim 4, Piornos et al discloses the content of acetic acid is 13,500 μg/L (13.5 ppm) (page E left column bottom paragraph).
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 concentration 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).
In regard to claims 5 and 6, Piornos et al is silent as to the pH and Brix value of the extract. Further in this regard, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly disclosed, and thus one of ordinary skill in the art would recognize that the he pH and Brix value of the extract, among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claims 7-9, it is noted that claims 7, 8 and 9 appear to be directed to the raw material from which the claimed extract was derived. This limitation is directed to the production of the extract from the “distilled liquor, brewed liquor or mixed liquor”. However, the claims are structured to recite thee extract to be “distilled liquor, brewed liquor or mixed liquor”. In any case, Piornos et al discloses an extract composition obtained by distillation of beer (i.e. “brewed liquor”) (page 8). In regard to claim 8, it is noted that claim 8 does not require distilled liquor, but rather further limits distilled liquor to shochu. The same rationale is applied to claim 9.
Claims 10 and 11 are directed to the intended use of the product. The intended use of the product would not impart ant patentable distinction to the composition.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Marcq (US 2015/0259634 A1) discloses addition of 2-phenylethanol and acetaldehyde , as flavor compounds, included in amounts to form a beverage having the flavor of sherry wine without the need for fermentation and aging.
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/VERA STULII/ Primary Examiner, Art Unit 1791