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 1, 7, 8 and 10 are objected to because of the following informalities:
Regarding claim 1, claim 1 recites “extracts of one or more sweetening plants” in lines 3-4, and “said extracts of one or more of sweetening plant” in lines 9 and 10. It appears “plant” in lines 9 and 10 should be “plants” in order to remain consistent.
Regarding claim 7, claim 7 recites “this method comprises…” in line 3-4 and it is suggested the claim be changed to recite “the method comprising”.
Regarding claim 8, claim 8 recites “without leaks. and wherein said aromatic substance…”. A period may only be used at the end of a claim and cannot be used in the middle of the claim, the period in the middle of the claim must be deleted.
Regarding claim 10, claim 10 recites “shaker”, the quotation marks should be deleted.
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 1-6 and 10 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.
Regarding claim 1, claim 1 has been amended to recite “said basic syrup does not include any aromatic substance” however this is not specifically recited in the specification and therefore raises an issue of new matter. The claim should be amended to language supported by the specification or deleted.
Regarding claim 10, claim 10 recites “wherein said cap has a shape of a whip or a ladle” however this is not specifically recited in the specification and therefore raises an issue of new matter. The specification recites that “the cap can integrate an element that extends deeply towards the inside of the bottle and this element can have the shape of a whip or be a sort of ladle”. The claim should be amended to language supported by the specification or deleted.
Claims 2-6 are rejected by virtue of their dependence on a rejected base claim.
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 1-6, 8-10 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.
Regarding claim 1, claim 1 recites “the basic syrup does not include any aromatic substance” and then recites “said basic syrup is suitable to act as a diluting substance for aromatic essences and after said basic syrup has been flavored with said aromatic essences, it is suitable for being diluted in a beverage to be prepared”. It is unclear if the basic syrup of claim 1 includes aromatic essences because the claim recites “the basic syrup does not include any aromatic substance” and does not explicitly recite that the basic syrup comprises aromatic essences. The recitation that the basic syrup is suitable to act as diluting substance for aromatic essences appears to be an intended use of the basic syrup. For examination purposes the basic syrup of claim 1 has been interpreted as not including an aromatic substance, especially since claim 7 recites a method of using the basic syrup of claim 1 and the method includes diluting the aromatic essence in the basic syrup of claim 1. In order to clarify the claim if the claim is only directed to the basic syrup if that is what is intended it is suggested to delete parts d and e from the claim.
Regarding claim 8, claim 8 has been amended to recite “wherein said aromatic essence is a concentrated substance that condense all aromatic potential that can be obtained from a natural substance into minimal absolutely restricted quantities”. It is unclear what is encompasses by this limitation.
Regarding claim 10, claim 10 recites that the cap has a shape of a whip or ladle, and it is unclear how the cap can be shaped as a whip or ladle while sealing a container.
Regarding claim 10, claim 10 recites “the method according to claim 6”. However, claim 6 is a product claim and claim 7 is the method claim. It is unclear if claim 10 should depend from claim 6 or claim 7.
Claims 2-6, and 9 are rejected by virtue of their dependence on a rejected base 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.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over The Flaming Pot Holder in view of Simple Garden Syrups in view of Huang CN 110050868 (Translation) in view of Hanna Instruments in view of Hersh US 2010/0233327.
Regarding claims 1, 3, The Flaming Pot Holder discloses a basic syrup suitable for making a plurality of flavored syrups, comprising in a preponderant quantity altogether greater than 90%, water and an extract of a sweetening plant (agave simple syrup) (Pg. 2) as such the syrup does not include any aromatic substance.
Claims 1 differs from The Flaming Pot Holder in the recitation that the syrup comprises an additional extract of one or more sweetening plants (cane sugar).
Simple Gardens discloses that simple syrup is commonly made from cane sugar (Pg. 1-2). It would have been obvious to one of ordinary skill in the art to modify the basic syrup (agave simple syrup) of The Flaming Pot Holder to comprise an additional extract of one or more sweetening plants (cane sugar) based on desired taste of the syrup. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A). “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose....” (MPEP 2144.06.I)
Claim 1 differs from Modified Flaming Pot Holder in the recitation that the syrup comprises a smaller quantity of juice of one or more fruits that give acidity and little quantities not exceeding 0.3% of preservative substances.
Huang discloses providing a syrup with 0.05-5% of a juice of a fruit that give acidity (fruit juice lemon concentrated juice) (Translation Pg. 3, lines 1-2, 22). Huang discloses providing a preservative in an amount of 0.01-0.1% (Translation Pg. 3, lines 1-2, 22). It would have been obvious to one of ordinary skill in the art to modify Modified Flaming Pot Holder such that the syrup comprises a smaller quantity of juice of one or more fruits that give acidity and little quantities not exceeding 0.3% of preservative substances as taught by Huang in order to add additional flavor and suitably preserve the basic syrup of Flaming Pot Holder.
Claim 1 differs from Modified Flaming Pot Holder in the recitation that the concentration of the extracts of one or more sweetening plants in water is at least 63 brix.
Hanna Instruments discloses that simple syrup commonly has a brix of 63% (Pg. 3), therefore it would have been obvious to one of ordinary skill in the art to modify Modified Flaming Pot Holder that the concentration of the extracts of one or more sweetening plants in water is at least 63 brix.
Claim 1 differs from Modified Flaming Pot Holder in the recitation that the concentration of the extracts of one or more sweetening plants are selected so as to obtain a viscosity lower than 450 cP.
Hersh discloses that suitable viscosities for syrup compositions include 81-1000cP ([0045]). Overlapping the claimed range (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art to modify Modified Flaming Pot Holder such that the concentration of the extracts of one or more sweetening plants are selected so as to obtain a viscosity lower than 450 cP as suggested by Hersh in order to provide the basic syrup with a desirable viscosity.
Regarding the remaining limitation “said basic syrup is suitable to act as a diluting substance for aromatic essences and after said basic syrup has been flavored with said aromatic essences, it is suitable for being diluted in a beverage to be prepared” is seen to be an intended use of the basic syrup of claim 1 (2111.02 II).
Regarding claims 2-4, the limitations for claims 2-4 have been addressed above in the rejection for claim 1.
Regarding claim 5, Modified Flaming Pot Holder discloses the syrup supplied in a package for its delivery which comprises a bottle obviously equipped with a reclosable cap obviously suitable to hermetically reclose said bottle and said bottle is designed to act as a shaker, being its capacity larger than the quantity of basic syrup contained, so as said contained basic syrup is capable of being shaken without being poured into another shaking tool (Pg. 4, 2nd bottle picture).
Regarding claim 7, Modified Flaming Pot Holder discloses that simple syrups can be used as a base and that flavors such as natural extracts can be added to create a flavored syrup (Hanna Instruments Pg. 2-3). Modified Flaming Pot Holder discloses that flavored syrups can be added to beverages for flavoring the beverage (Hannah Pg. 2-3). Therefore, it would have been obvious to one ordinary skill in the art to use the basic syrup of Modified Flaming Pot Holder in a method including diluting at least one aromatic essence (natural extract), extracted by natural ingredients, in said basic syrup, thus obtaining a flavored syrup and diluting said flavored syrup in other ingredients for the preparation of a beverage.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over The Flaming Pot Holder in view of Simple Garden Syrups in view of Huang CN 110050868 (Translation) in view of Hanna Instruments in view of Hersh US 2010/0233327 in view of Kirsh US 2020/0377269.
Regarding claim 6, claim 6 differs from Modified Flaming Pot Holder in the recitation that the reclosable cap integrates an element which extends deeply towards the inside of the bottle so that, when sad cap closes said bottle, such an element is immersed in the fluid contained.
Kirsh discloses a reclosable cap for a bottle integrates an element which extends deeply towards the inside of the bottle so that, when sad cap closes said bottle, such an element is immersed in the fluid contained (Fig. 5). It would have been obvious to one of ordinary skill in the art to modify Modified Flaming Pot Holder such that the reclosable cap integrates an element which extends deeply towards the inside of the bottle so that, when sad cap closes said bottle, such an element is immersed in the fluid contained as taught by Kirsh in order to allow greater control for the dispensing of the syrup. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over The Flaming Pot Holder in view of Simple Garden Syrups in view of Huang CN 110050868 (Translation) in view of Hanna Instruments in view of Hersh US 2010/0233327 in view of Mishima JP 2006347623 (Translation) in view of in view of McCrory US 4,916672.
Regarding claim 8, Modified Flaming Pot Holder obviously discloses the diluting of the at least one aromatic essence in the basic syrup is made homogenous by mixing. Claim 8 differs from Modified Flaming Pot Holder in the recitation that the method includes mixing by shaking inside a suitably shaped container. Regarding the use of the particular type of extract once it was known to flavor basic syrup with extract, the particular extract one of ordinary skill in the art would choose to employ is seen to be an obvious matter of choice, and taste preference.
Mishima discloses that mixing can be carried out by shaking a container (Pg. 2, line 21). It would have been obvious to one of ordinary skill in the art to modify the method Modified Flaming Pot Holder to includes mixing by shaking inside a suitably shaped container. It has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness and Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results supports a conclusion of obviousness.
McCrory discloses that the shaker that uses a sealable jar lid thus recognizing that a shaker container should be sealable, and can be resealable and thus it would additionally be obvious to modify the prior art method to include utilizing a shaker as claimed.
Regarding claim 9, Modified Flaming Pot Holder discloses the syrup supplied in a package for its delivery which comprises a bottle obviously equipped with a reclosable cap obviously suitable to hermetically reclose said bottle and said bottle is designed to act as a shaker, being its capacity larger than the quantity of basic syrup contained, so as said contained basic syrup is capable of being shaken without being poured into another shaking tool (Pg. 4, 2nd bottle picture). Modified Flaming Pot Holder discloses adding flavoring components to the bottle the syrup is kept in (The Flaming Pot Holder, Pg. 4-5), and Mishima teaches mixing by shaking in a container, therefore, based on the prior art as whole which teaches shaking in containers and that flavoring ingredients can be placed in the container the syrup is stored in, it would have been obvious to one of ordinary skill in the art to modify the method of Modified Flaming Pot Holder such that the mixing by shaking of said flavored syrup takes place inside said bottle in which the basic syrup is packaged for delivery
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over The Flaming Pot Holder in view of Simple Garden Syrups in view of Huang CN 110050868 (Translation) in view of Hanna Instruments in view of Hersh US 2010/0233327 in view of Kirsh US 2020/0377269 in view of McCrory US 4,916,672.
Regarding claim 10, claim 10 differs from Modified prior art references in the recitation that the product includes the shaker as claimed.
McCrory discloses a shaker which reads on the limitations of claim 10, and it would have been obvious to one of ordinary skill in the art to modify the prior art product to include the shaker taught by McCrory, it has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A)
Response to Arguments
Applicant's arguments filed 10/01/2025 have been fully considered, however as no specific deficiency has been alleged against any specific prior art used in the rejection and since McCrory has been relied upon to teach the new limitation, applicants arguments were not found to be persuasive. The examiner further notes that if applicant is attempting to assert that applicants invention meets a long felt but unmet need/failure of others, then applicants attention is directed to MPEP section 716.04.
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.
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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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