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 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 and 4-5 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “a wort fermented liquid” in lines 1-12. It is unclear if this refers to “an alcohol removed wort fermented liquid” recited in claim 1, line 2 or to an entirely different wort fermented liquid.
Clarification is required.
Claims 4-5 are rejected as being dependent on a rejected base claim.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. US 2017/0339983 (cited on Information Disclosure Statement filed October 3, 2023) in view of JP 2018/183126 (cited on Information Disclosure Statement filed October 3, 2023).
It is noted that a machine translation of JP 2018/183126 has been furnished herein. All citations with respect to JP 2018/183126 are with respect to the machine translation of JP 2018/183126.
Regarding Claim 1, Ito et al. discloses a non-alcoholic beer taste beverage (‘983, Paragraphs [0064] and [0080]) comprising an aroma composition (‘983, Paragraphs [0082]-[0083]) and an alcohol removed wort fermented liquid (‘983, Paragraphs [0080] and [0087]) wherein the aroma composition comprises myrcene, β-ionone, linalool, citronellol, geraniol, and α-eudesmol (‘983, Paragraph [0083]). The non-alcoholic beer taste beverage contains an alcohol removed wort fermented liquid (‘983, Paragraphs [0080] and [0087]). Ito et al. discloses a specific embodiment of a non-alcoholic beer taste beverage containing an aroma composition containing 51.2 ppb linalool, 9.1 ppb citronellol, and 0.3 ppb α-eudesmol, which falls within the claimed aroma composition concentrations of 8.0 to 71.33 ppb linalool, 0.7025 to 10.0 ppb of citronellol, and 0.1 to 1.1 ppb of α-eudesmol, respectively. Where the claimed concentration of the claimed aroma components encompasses concentrations of the claimed aroma components disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Ito et al. further discloses the aroma composition being produced by vaporizing components from the wort fermented liquid and recovering the components (‘983, Paragraphs [0082]-[0083]).
Further regarding Claim 1, although Ito et al. does not explicitly disclose any broad range or particular examples of the aroma composition containing 0.050 to 1.0 ppb or myrcene, 0.0005 to 0.010 ppb of β-ionone, or 0.115 to 1.4 ppb of geraniol, Ito et al. discloses the non-alcoholic beer taste beverage (‘983, Paragraph [0080]) containing all of the claimed aroma composition components of myrcene, β-ionone, linalool, citronellol, geraniol, and α-eudesmol (‘983, Paragraph [0083]). Ito et al. also discloses the concentration of each aroma component in vapor of the hop suspension varying with time after the start of heating and adjusting the recovery timing to obtain hop evaporated components having desired aromas (‘983, Paragraph [0083]) and recovering components having desired aromas by recovering evaporated components during part of a period of time during the boiling of hops to impart various characters to a beer taste beverage by using the same variety of hops to achieve more characteristic imparting of aromas (‘983, Paragraph [0095]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the concentration of the components of myrcene, β-ionone, and geraniol in the aroma composition of Ito et al. to fall within the claimed concentrations since differences in the concentration of the various aroma components of the aroma composition will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of the various aroma components is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art at the time of the invention would modify the non-alcoholic beer taste beverage of Ito et al. and adjust the concentrations of various aroma components of the aroma composition to fall within the claimed concentrations based upon the desired aroma of the final non-alcoholic beer taste beverage.
Further regarding Claim 1, JP 2018/183126 discloses a beer taste beverage (‘126 Machine Translation, Paragraph [0010]) containing an aroma composition containing an aroma composition containing linalool and myrcene (‘126 Machine Translation, Paragraph [0012]) wherein the concentration of linalool is between 10 ppb to 40 ppb linalool (‘126 Machine Translation, Paragraph [0017]) and the concentration of myrcene is between 0.1 to 3.0 ppb β-myrcene (‘126 Machine Translation, Paragraph [0020]), which overlaps the claimed concentrations of 8.0 to 71.33 ppb of linalool and 0.050 to 1.0 ppb of myrcene, respectively.
Both Ito et al. and JP 2018/183126 are directed towards the same field of endeavor of beer taste beverages containing an aroma composition containing linalool and myrcene. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beer taste beverage of Ito et al. and adjust the aroma composition to have the claimed concentration of myrcene as taught by JP 2018/183126 since where the claimed concentration of the myrcene aroma component encompasses concentrations of the claimed myrcene aroma component disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Regarding Claim 4, Ito et al. discloses the wort fermented liquid being an alcohol removed wort fermented liquid (‘983, Paragraphs [0080] and [0087]). JP 2018/183126 discloses the wort fermented liquid (‘126 Machine Translation, Paragraph [0057]) being a wort bottom fermented liquid (‘126 Machine Translation, Paragraph [0043]).
Both Ito et al. and JP 2018/183126 are directed towards the same field of endeavor of beer taste beverages. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beer taste beverage of Ito et al. and use a wort bottom fermented liquid since JP 2018/183126 teaches that it was known in the food and beverage fermentation art to use a wort bottom fermented liquid to make a beer taste beverage.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. US 2017/0339983 (cited on Information Disclosure Statement filed October 3, 2023) in view of JP 2018/183126 (cited on Information Disclosure Statement filed October 3, 2023) as applied to claim 1 above in further view of Kozaki US 2017/0121657.
It is noted that a machine translation of JP 2018/183126 has been furnished herein. All citations with respect to JP 2018/183126 are with respect to the machine translation of JP 2018/183126.
Regarding Claim 5, Ito et al. discloses the wort fermented liquid being an alcohol removed wort fermented liquid (‘983, Paragraphs [0080] and [0087]).
Ito et al. or alternatively Ito et al. modified with JP 2018/183126 is silent regarding the wort fermented liquid having a malt use ratio of 50% of more.
Kozaki discloses a beer taste beverage (‘657, Paragraph [0001]) made from a wort fermented liquid (‘657, Paragraphs [0029] and [0033]) wherein the use ratio of malt is at least 50% (‘657, Paragraph [0008]) wherein the use ratio of malt refers to the use ratio of malt to raw materials excluding bittering agents, e.g. hops, and water wherein setting the use ratio of malt to at least 50% obtains a flavor and taste suitable for the beer taste beverage (‘657, Paragraph [0027]), which overlaps the claimed malt usage ratio of 50% or more.
Ito et al. discloses the beer taste beverage being made using malt (‘983, Paragraphs [0057] and [0101]). Both Ito et al. and Kozaki are directed towards the same field of endeavor of malt based beer taste beverages made from wort fermented liquid. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the beer taste beverage of Ito et al. and adjust the malt usage ratio of the wort fermented liquid and adjust the malt usage ratio to the claimed malt usage ratio of 50% or more as taught by Kozaki since where the claimed malt usage ratio overlaps malt usage ratios disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the malt usage ratio will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such malt usage ratio is critical. Where 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 view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art at the time of the invention would modify the beer taste beverage of Ito et al. and adjust the malt usage ratio to fall within the claimed concentrations of the malt usage ratio as taught by Kozaki based upon the desired degree of malt taste and flavor of the final beverage (‘657, Paragraph [0027]).
Response to Arguments
Examiner notes that the previous Claim Objections have been withdrawn in view of the amendments.
Examiner notes that the previous indefiniteness rejections under 35 USC 112(b) have been withdrawn in view of the amendments.
Examiner notes that a new indefiniteness rejection under 35 USC 112(b) has been made in view of the amendments.
Applicant's arguments filed February 6, 2026 with respect to the obviousness rejections under 35 USC 103(a) have been fully considered but they are not persuasive.
Applicant argues on Page 8 of the Remarks that Paragraph [0052] of Ito incorporates both hop derived bitter components and hop derived aroma components into the beverage wherein the beer taste beverage contains the hop suspension ordinarily present in beer and the boiling vapor recovery product which would otherwise be lost during boiling. Applicant contends that the aroma composition of Ito is a boiling vapor recovery product from a hop suspension which is a mixture of hops and an aqueous solvent whereas the beer taste beverage of Claim 1 recites the aroma composition is produced by vaporizing components from a wort fermented liquid and recovering the components. Applicant asserts that the claimed beverage has the aroma composition being a vapor recovered components obtained from a wort fermented liquid containing hops. Applicant continues that the aroma composition of Claim 1 differs from the aroma composition of Ito in that the claimed aroma composition contains a relatively small amount of hop derived aroma components and a relatively large amount of fermentation derived aroma components and that Ito does not describe or suggest an alcohol removed wort fermented liquid in which the problem of unpleasant aromas such as fermented soybean odor is addressed and also fails to disclose or suggest any means for enhancing a brewing derived complex taste of a beer taste beverage. Applicant continues on Page 9 of the Remarks that Paragraph [0080] of Ito mentions a non-alcohol beer or low alcohol beverage may be produced by suppressing alcohol fermentation but does not suggest producing a non-alcohol beer or low alcohol beverage comprising an alcohol removed wort fermented liquid as claimed.
Examiner first notes that Claim 1 does not recite “means for enhancing a brewing derived complex taste of a beer taste beverage” or any equivalent phrases thereof. Claim 1 also does not recite the absence of soybean odor. Applicant argues limitations that are not commensurate in scope with the claimed invention. Additionally, Claim 1 recites the transitional phrase “comprising,” which is inclusive or open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). The transitional phrase “comprising” does not preclude the presence of bitter components. Examiner notes that applicant admits that Paragraph [0052]) teaches the beer taste beverage having aroma components (‘983, Paragraph [0052]), which aroma components is claimed in Claim 1. Ito et al. also discloses the aroma composition being produced by vaporizing components from the wort fermented liquid (‘983, Paragraphs [0080] and [0087]) and recovering the components (‘983, Paragraphs [0082]-[0083]). Therefore, these arguments are not found persuasive.
Applicant argues on Page 9 of the Remarks that JP ‘126 is directed to a fermented malt beverage and teaches adjusting certain hop derived aroma components including linalool and β-myrcene and that Paragraph [0020] of JP ‘126 describes the β-myrcene content of 0.1 to 3.0 ppb in a fermented malt beverage but does not describe or suggest a non-alcoholic beer taste beverage containing an alcohol removed wort fermented liquid or any technical problem uniquely associated with removing alcohol. Applicant continues Paragraph [0045]) of JP ‘126 expressly discusses setting a desired alcohol concentration by adding water by dilution and further discusses producing a beverage corresponding to a liqueur under Japanese liquor tax law by mixing with an alcohol containing distillate of barley spirits. Applicant continues that this disclosure demonstrates that JP ‘126 is not directed to solving the problems of alcohol removed non-alcoholic beer taste beverages and rather teaches conventional alcoholic strength adjustment including adding alcohol and provides no teaching or suggestion that would motivate a skilled artisan to modify the hop boiling vapor recovery system of Ito to arrive at a non-alcoholic beer taste beverage comprising an alcohol removed wort fermented liquid as recited in Claim 1 or how to achieve the enhanced brewing derived complex taste of the claimed beverage.
Examiner argues the primary reference of Ito et al. already teaches a non-alcoholic beer taste beverage (‘983, Paragraph [0080]) containing an alcohol removed wort fermented liquid (‘983, Paragraphs [0080] and [0087]) and also discloses removing alcohol (‘983, Paragraph [0080]). JP ‘126 is being relied upon to teach the limitations regarding a beer taste beverage (‘126 Machine Translation, Paragraph [0010]) containing an aroma composition comprising linalool and myrcene (‘126 Machine Translation, Paragraph [0012]) having concentrations of linalool and myrcene that overlaps the claimed concentrations of linalool and myrcene. JP ‘126 is not being relied upon to teach a non-alcoholic beverage, which is already taught by the primary reference of Ito et al. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, these arguments are not found persuasive.
Applicant argues on Pages 9-10 of the Remarks that both Ito and JP ‘126 each fail to provide any reason to obtain an aroma composition from a hop containing wort fermented liquid (post boil, post fermentation) and apply it to a beverage containing an alcohol removed wort fermented liquid to restore top flavor balance and enhance brewing derived complexity. Applicant contends that the references do not teach or suggest a non-alcoholic beer taste beverage comprising an aroma composition and an alcohol removed wort fermented liquid wherein the aroma composition is produced by vaporizing components from a wort fermented liquid and recovering the components according to Claim 1.
Examiner argues Claim 1 does not recite any order in which the aroma composition is added to be post boil, post fermentation. Applicant argues limitations that are not commensurate in scope with the claimed invention. Additionally, the order in which the aroma composition is added to be post boil, post fermentation are product by process limitations. Even 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 view of In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113.I.). Furthermore, Ito et al. teaches a non-alcoholic beer taste beverage (‘983, Paragraph [0080]) comprising an aroma composition produced by vaporizing components (‘983, Paragraphs [0082]-[0083]) from a wort fermented liquid (‘983, Paragraphs [0087] and [0151]) and recovering the components (‘983, Paragraph [0082]). Claim 1 does not recite “restore top flavor balance” or “enhance brewing derived complexity.” Applicant argues limitations that are not commensurate in scope with the claimed invention. Therefore, these arguments are not found 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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792