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Claims 10 and 11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 01/27/2026.
Applicant’s election without traverse of claims 1-9 in the reply filed on 01/27/2026 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.
Claim 2 is 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 2 recites the following limitations:
2. (Original) The beverage according to claim 1, wherein the total content of the fruit juice(s) is not less than 0.5 w/w% in terms of percent fruit juice content.
The percentage of fruit juice is expressed as a fraction of fruit juice in the fruit juice. The fruit juice content should be expressed as a quantity of another quantity, not itself.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki et al (JP 2019080545 A).
In regard to claim 1, Sasaki et al discloses a beverage comprising indigestible glucan and sour fruit juice ([0007]). Sasaki et al discloses an alcoholic beverage ([0009]).
In regard to indigestible glucan (polysaccharide or polysaccharides with a degree of polymerization of not less than 3), Sasaki et al discloses:
As used herein, "resistant glucan" refers to a resistant dietary fiber obtained by thermally polymerizing a starch hydrolysate (preferably a starch hydrolysate having a dextrose equivalent (DE) of 70 to 100).
In this case, the raw material may contain monosaccharides other than glucose or oligosaccharides containing these monosaccharides.
Examples of such indigestible glucans include Fit Fiber #80 (registered trademark, manufactured by Nihon Shokuhin Kako Co., Ltd.) ([0014]).
In this specification, the "resistant glucan" may be the resistant glucan itself, an enzyme-treated product of the resistant glucan obtained by treating the resistant glucan with a carbohydrate-degrading enzyme, a fractionated product of the resistant glucan obtained by fractionating the enzyme-treated product of the resistant glucan, or a reduction-treated product of the resistant glucan obtained by reducing the aldehyde group at the reducing end of the resistant glucan to a hydroxyl group ([0015]).
Sasaki et al discloses the presence of indigestible dextrin polysaccharide or polysaccharides with a degree of polymerization of not less than 3 (test Example 1) ([0038]).
In regard to the fruit juice, Sasaki et al discloses:
Sour juices are classified into cloudy juice, semi-clear juice, and clear juice depending on the amount of pulp contained, and each of these types is available as concentrated juice, reconstituted juice from concentrate, and straight juice.
As the sour fruit juice used in the beverage according to this embodiment, any one of these may be used alone or two or more may be used in combination ([0018]).
Examples of citrus fruits include kabosu, Kiyooka orange, kaffir lime, sanbokan, shikuwasa, citron, sudachi, bitter orange, Niihime, bush citrus, hebezu, Meyer lemon, Mexican lime, yuuko, yuzu orange, yuzu, lime, and lemon ([0019]).
Sasaki et al discloses that acidity of the beverage is imparted by the content of the sour fruit juice:
The content of sour fruit juice (fruit juice usage rate) is a value converted based on the sugar refractometer reading (Brix value) and acidity measured in accordance with the Japanese Agricultural Standards for Fruit Drinks (Ministry of Agriculture, Forestry and Fisheries Notification No. 3118, December 24, 2013), and is a relative concentration when the amount of straight fruit juice obtained by squeezing fruit is taken as 100 weight/volume % (w/v %).
The juice content is usually the value listed on the product label ([0023]).
Acidity is a value that indicates the concentration (weight/volume %) of acid contained in a beverage, and is expressed as a citric acid equivalent value.
The citric acid equivalent acidity is calculated by a neutralization titration method in accordance with the Japanese Agricultural Standards for Fruit Drinks (Ministry of Agriculture, Forestry and Fisheries Notification No. 3118 of December 24, 2013) ([0024]).
In regard to the recitation of the monosaccharides and disaccharides, Sasaki et al discloses that sweeteners may be added to the beverage, but are not required:
The beverage according to this embodiment may contain additives that are typically added to beverages, such as coloring agents, sweeteners, antioxidants, acidulants, bittering agents, and flavoring agents ([0029]).
Hence, the Sasaki et al meets the limitation of the “total content of a monosaccharide or monosaccharides and a disaccharide or disaccharides excluding sugar alcohols is less than 0.5 w/w%”.
Sasaki et al does not require the presence of a high intensity sweetener.
Therefore, on regard to claim 1, Sasaki et al discloses:
An alcoholic beverage containing a fruit juice or fruit juices and containing no high intensity sweetener, wherein:
the total content of a monosaccharide or monosaccharides and a disaccharide or disaccharides excluding sugar alcohols is less than 0.5 w/w%.
In regard to the recitation of “the total content of a polysaccharide or polysaccharides with a degree of polymerization of not less than 3 is not less than 0.08 w/v%; and the acidity is not less than 0.1 g/100 mL in terms of citric acid”, it is noted that Sasaki et al discloses “the content of sour fruit juice (fruit juice usage rate) is not particularly limited, but may be, for example, 0.01% by mass or more and 30% by mass or less relative to the total amount of the beverage” ([0022]). Sasaki et al discloses “the ratio of the content of indigestible glucan to the content of sour fruit juice is not particularly limited, but may be, for example, 1 part by weight or more and 3,750 parts by weight or less of sour fruit juice per 100 parts by weight of indigestible glucan” (0025]). Sasaki et al discloses “[t]he ratio of the content of indigestible glucan to the content of sour fruit juice may be 5 parts by weight or more, 10 parts by weight or more, 20 parts by weight or more, or 100 parts by weight or more of sour fruit juice per 100 parts by weight of indigestible glucan, or 2000 parts by weight or less, or 1500 parts by weight or less, from the viewpoint of further improving the feeling of the beverage sticking to the mouth, powdery texture, and resinous odor”.
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 claim 2, Sasaki et al discloses “the content of sour fruit juice (fruit juice usage rate) is not particularly limited, but may be, for example, 0.01% by mass or more and 30% by mass or less relative to the total amount of the beverage” ([0022]).
In regard to claim 3, Sasaki et al discloses citrus fruit juice ([0018], [0019], [0021]).
In regard to claim 4, Sasaki et al discloses:
Sour juices are classified into cloudy juice, semi-clear juice, and clear juice depending on the amount of pulp contained, and each of these types is available as concentrated juice, reconstituted juice from concentrate, and straight juice.
As the sour fruit juice used in the beverage according to this embodiment, any one of these may be used alone or two or more may be used in combination ([0018]).
Hence, in regard to claim 4, Sasaki et al meets the limitation of a cloudy fruit juice.
In regard to claim 5, Sasaki et al discloses:
When the beverage according to this embodiment is an alcoholic beverage, the alcohol content of the alcoholic beverage may be, for example, 1 v/v % or more and 30 v/v % or less.
Specifically, it may be 1 v/v% or more, 2 v/v% or more, 2.5 v/v% or more, 3 v/v% or more, 3.5 v/v% or more, or 4 v/v% or more, and may be 25 v/v% or less, 20 v/v% or less, 15 v/v% or less, 10 v/v% or less, 9 v/v% or less, 8 v/v% or less, 7 v/v% or less, 6 v/v% or less, or 3 v/v% or less ([0027]).
Hence, in regard to claim 5, Sasaki et al meets the limitation of the alcohol content range of from 1 to 10 v/v%.
In regard to claim 6, Sasaki et al discloses dietary fiber:
As used herein, "resistant glucan" refers to a resistant dietary fiber obtained by thermally polymerizing a starch hydrolysate (preferably a starch hydrolysate having a dextrose equivalent (DE) of 70 to 100).
In this case, the raw material may contain monosaccharides other than glucose or oligosaccharides containing these monosaccharides.
Examples of such indigestible glucans include Fit Fiber #80 (registered trademark, manufactured by Nihon Shokuhin Kako Co., Ltd.) ([0014]).
In this specification, the "resistant glucan" may be the resistant glucan itself, an enzyme-treated product of the resistant glucan obtained by treating the resistant glucan with a carbohydrate-degrading enzyme, a fractionated product of the resistant glucan obtained by fractionating the enzyme-treated product of the resistant glucan, or a reduction-treated product of the resistant glucan obtained by reducing the aldehyde group at the reducing end of the resistant glucan to a hydroxyl group ([0015]).
In regard to claim 7, Sasaki et al discloses the presence of indigestible dextrin polysaccharide or polysaccharides with a degree of polymerization of not less than 3 (test Example 1) ([0038]).
In regard to claim 8, Sasaki et al discloses sparkling beverage ([0030]). Hence, Sasaki et al discloses the beverage contain carbon dioxide.
Claim 9 recites the limitation of “wherein the beverage contains a freeze-crush-infusion liquor of a fruit and/or vegetable”. According to the instant specification, this limitation refers to the process for the preparation of the beverage:
The freeze-crush-infusion liquor of a fruit and/or vegetable refers to an infusion liquor obtained by taking the steps of freezing at least one fruit and/or vegetable used as a source material to obtain a frozen product, finely crushing the frozen product to obtain a freeze-finely-crushed product, and infusing the finely-crushed product, as it is or after thawed into a paste form, in an alcohol-containing liquid ([0043] of the instant specification).
The instant claim are directed to the product, not to the process for the preparation of such product. Hence, the process limitations would not impart any patentable distinction to the product as claimed.
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukami et al (JP 2019193602 A).
In regard to claim 1, Fukami et al discloses “an alcoholic beverage that has enhanced body and flavor without imparting sweetness and that has a reduced irritating alcohol taste” ([0004]).
In regard to the recitation of the monosaccharides and disaccharides, Fukami et al discloses that monosaccharides and disaccharides may be added to the beverage, but are not required, since alternative carbohydrates that are not monosaccharides and disaccharides may be added to the beverage:
(Carbohydrates) The carbohydrates used in the alcoholic beverage of the present invention are not particularly limited, but include sugar, isomerized sugar, glucose, fructose, high-fructose glucose syrup, glucose-fructose syrup, honey, starch syrup, powdered syrup, maltodextrin, sorbitol, maltitol, reduced starch syrup, maltose, trehalose, brown sugar, indigestible dextrin, polydextrose, etc.
These may be used alone or in combination of two or more ([0032]).
Hence, Fukami et al meets the limitation of the “total content of a monosaccharide or monosaccharides and a disaccharide or disaccharides excluding sugar alcohols is less than 0.5 w/w%”.
Fukami et al does not require the presence of a high intensity sweetener.
In regard to the polysaccharide or polysaccharides with a degree of polymerization of not less than 3, Fukami et al discloses indigestible dextrin and/or polydextrose ([0032]). Fukami et al discloses that carbohydrates such as indigestible dextrin, polydextrose, which could be used alone or in combination of two are used in the amount of “0.5 to 20 wt/v%, more preferably 0.7 to 18 wt/v%, and even more preferably 1 to 15 wt/v%” ([0033]).
In regard to the recitation of fruit juice, Fukami et al discloses juice squeezed from citrus fruit such as mandarin orange, orange, grapefruit, pineapple, lemon, lime, etc ([0035]).
In regard to the recitation of acidity, Fukami et al discloses juice squeezed from sour citrus fruit such as lemon, lime, etc ([0035]) and also addition of organic acids ([0034]). One of ordinary skill in the art would have ben motivated to vary the concentration of sour citrus juice and organic acids based on the desired organoleptic properties of the beverage and a personal preference of a consumer.
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 claim 2 , Fukami et al discloses “[t]he fruit juice content is preferably 0.1 to 60 wt/v % relative to the total alcoholic beverage, more preferably 0.5 to 40 wt/v %, and even more preferably 1 to 20 wt/v %” ([0035]).
In regard to claims 3 and 4 , Fukami et al discloses juice squeezed from citrus fruit such as mandarin, orange, grapefruit, etc ([0035]). Fukami et al does not preclude using cloudy fruit juice.
In regard to claim 5, Fukami et al discloses “[a]n alcoholic beverage having an alcohol concentration of 1 to 10 v/v%” ([0007]). Hence, in regard to claim 5, Fukami et a meets the limitation of the alcohol content range of from 1 to 10 v/v%.
In regard to claims 6 and 7, Fukami et al discloses indigestible dextrin and/or polydextrose ([0032]).
In regard to claim 8, Fukami et al discloses the beverage containing carbon dioxide ([0019]).
Claim 9 recites the limitation of “wherein the beverage contains a freeze-crush-infusion liquor of a fruit and/or vegetable”. According to the instant specification, this limitation refers to the process for the preparation of the beverage:
The freeze-crush-infusion liquor of a fruit and/or vegetable refers to an infusion liquor obtained by taking the steps of freezing at least one fruit and/or vegetable used as a source material to obtain a frozen product, finely crushing the frozen product to obtain a freeze-finely-crushed product, and infusing the finely-crushed product, as it is or after thawed into a paste form, in an alcohol-containing liquid ([0043] of the instant specification).
The instant claim are directed to the product, not to the process for the preparation of such product. Hence, the process limitations would not impart any patentable distinction to the product as claimed.
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791