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 § 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.
Claims 1-3, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delgado et al. “Development of a stir bar sorptive extraction method coupled to gas chromatography-mass spectrometry for the analysis of volatile compounds in Sherry brandy”, Analytica Chimica Acta, 2010, vol. 672, pp. 130-136 (Applicants IDS).
Regarding Claim 1: Delgado discloses an alcoholic beverage which is sherry brandy, derived from wine [abstract]. Delgado discloses the volatile compounds found in Solera Brandy (aged 6 months -1 year; Solera Reserva Brandy (1 year-3 years) and Solera Grand Reserva (more than 3 years) [Introduction, 2nd full paragraph].
Delgado discloses that the Solera brandy 1 contained 615 µg/L (615 ppb) of cis-3- hexen-1-ol and 12.8 µg/L (12.8 ppb) of α-terpineol with a ratio of 48; Solera brandy 2 contained 946 µg/L (946 ppb) of cis-3-hexen-1-ol and 16.3 µg/L (16.3 ppb) of α-terpineol with a ratio of 58; Solera brandy 3 contained 551 µg/L (551 ppb) of cis-3-hexen-1-ol and 10.91 µg/L (10.91 ppb) of α-terpineol with a ratio of about 50 [Table 5].
Delgado discloses that Solera Reserva brandy 4 contained 1,884 µg/L (1,884 ppb) of cis-3- hexen-1-ol and 6.95 µg/L (6.95 ppb) of α-terpineol with a ratio of 271; Solera Reserva brandy 5 contained 726 µg/ L (726 ppb) of cis-3-hexen-1-ol and 8.22 µg/L (8.22 ppb) of α-terpineol with a ratio of 88; Solera Reserva brandy 6 contained 238 µg/L (238 ppb) of cis-3-hexen-1-ol and 15.1 µg/L (15.1 ppb) with a ratio of about 15 [Introduction; Table 5].
Delgado discloses that the Solera Grand Reserva brandy 7 contained 593 µg/L (593 ppb) of cis-3-hexen-1-ol and 69.2 µg/L (69.2 ppb) of α-terpineol with a ratio of about 8; Solera Grand Reserva brandy 8 contained 977 µg/L (977 ppb) of cis-3-hexen-1-ol and 97.4 µg/L (97.4 ppb) of α-terpineol with a ratio of about 10; Solera Grand Reserva brandy 9 contained 2245 µg/L (2245 ppb) of cis-3-hexen-1-ol and 67.0 µg/L (67.0 ppb) of α-terpineol with a ratio of about 33 [Introduction, Table].
Regarding Claim 2: Delgado discloses as discussed above in claim 1. Delgado discloses that the Solera brandy 1 contained 615 µg/L (615 ppb) of cis-3- hexen-1-ol and 12.8 µg/L (12.8 ppb); Solera brandy 2 contained 946 µg/L (946 ppb) of cis-3-hexen-1-ol Solera brandy 3 contained 551 µg/L (551 ppb) of cis-3-hexen-1-ol [Table 5].
Delgado discloses that Solera Reserva brandy 4 contained 1,884 µg/L (1,884 ppb) of cis-3- hexen-1-ol; Solera Reserva brandy 5 contained 726 µg/ L (726 ppb) of cis-3-hexen-1-ol; Solera Reserva brandy 6 contained 238 µg/L (238 ppb) of cis-3-hexen-1-ol [Introduction; Table 5].
Regarding Claim 3: Delgado discloses as discussed above in claim 1. Delgado discloses that the Solera brandy 1 contained 12.8 µg/L (12.8 ppb) of α-terpineol; Solera brandy 2 contained 16.3 µg/L (16.3 ppb) of α-terpineol; Solera brandy 3 contained 10.91 µg/L (10.91 ppb) of α-terpineol [Table 5].
Delgado discloses that Solera Reserva brandy 4 contained 6.95 µg/L (6.95 ppb) of α-terpineol; Solera Reserva brandy 5 contained 8.22 µg/L (8.22 ppb) of α-terpineol; Solera Reserva brandy 6 contained 15.1 µg/L (15.1 ppb) of α-terpineol [Introduction; Table 5].
Delgado discloses that the Solera Grand Reserva brandy 7 contained 69.2 µg/L (69.2 ppb) of α-terpineol; Solera Grand Reserva brandy 8 contained 97.4 µg/L (97.4 ppb) of α-terpineol; Solera Grand Reserva brandy 9 contained 67.0 µg/L (67.0 ppb) of α-terpineol [Introduction, Table].
Regarding Claim 9: Delgado discloses as discussed above in claim 1. Delgado does not disclose the presence of carbon dioxide in brandy and therefore anticipates the claim limitation of the alcoholic beverage not comprising carbon dioxide.
Claims 7 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delgado et al. “Development of a stir bar sorptive extraction method coupled to gas chromatography-mass spectrometry for the analysis of volatile compounds in Sherry brandy”, Analytica Chimica Acta, 2010, vol. 672, pp. 130-136 (Applicants IDS) as applied to claim 1 above and as evidenced by Valcárcel-Muñoz “Comparative Evaluation of Brandy de Jerez Aged in American Oak Barrels with Different Times of Use” Jan 2021 Foods vol. 10 No. 288.
Regarding Claim 7: Delgado discloses as discussed above in claim 1. Delgado discloses that brandy is characterized as having a high alcohol content [pg. 132; Results and discussion 3.1]. Delgado does not explicitly disclose that the alcohol content is 10% of more. However, Valcárcel-Muñoz teaches that brandy is known in the art to contain an alcohol content of 36-45% [pg. 1, Introduction]. Therefore the alcohol content of 36 -45% is inherent in the brandy of Delgado and therefore anticipates the claim limitation wherein an alcohol content is 10 v/v% or more.
Delgado discloses the content of cis-3-hexen-1-ol within a range of 10 ppb-50,000 ppb; and
the content of α-terpineol within a range of 0.1 ppb-100 ppb as discussed above in claim 1.
Regarding Claim 10: Delgado discloses a method of making an alcoholic beverage which is sherry brandy, derived from wine [abstract]. Delgado discloses the volatile compounds found in Solera Brandy (aged 6 months -1 year; Solera Reserva Brandy (1 year-3 years) and Solera Grand Reserva (more than 3 years) [Introduction, 2nd full paragraph].
Delgado discloses that the Solera brandy 1 contained 615 µg/L (615 ppb) of cis-3- hexen-1-ol and 12.8 µg/L (12.8 ppb) of α-terpineol with a ratio of 48; Solera brandy 2 contained 946 µg/L (946 ppb) of cis-3-hexen-1-ol and 16.3 µg/L (16.3 ppb) of α-terpineol with a ratio of 58; Solera brandy 3 contained 551 µg/L (551 ppb) of cis-3-hexen-1-ol and 10.91 µg/L (10.91 ppb) of α-terpineol with a ratio of about 50 [Table 5].
Delgado discloses that Solera Reserva brandy 4 contained 1,884 µg/L (1,884 ppb) of cis-3- hexen-1-ol and 6.95 µg/L (6.95 ppb) of α-terpineol with a ratio of 271; Solera Reserva brandy 5 contained 726 µg/ L (726 ppb) of cis-3-hexen-1-ol and 8.22 µg/L (8.22 ppb) of α-terpineol with a ratio of 88; Solera Reserva brandy 6 contained 238 µg/L (238 ppb) of cis-3-hexen-1-ol and 15.1 µg/L (15.1 ppb) with a ratio of about 15 [Introduction; Table 5].
Delgado discloses that the Solera Grand Reserva brandy 7 contained 593 µg/L (593 ppb) of cis-3-hexen-1-ol and 69.2 µg/L (69.2 ppb) of α-terpineol with a ratio of about 8; Solera Grand Reserva brandy 8 contained 977 µg/L (977 ppb) of cis-3-hexen-1-ol and 97.4 µg/L (97.4 ppb) of α-terpineol with a ratio of about 10; Solera Grand Reserva brandy 9 contained 2245 µg/L (2245 ppb) of cis-3-hexen-1-ol and 67.0 µg/L (67.0 ppb) of α-terpineol with a ratio of about 33 [Introduction, Table].
Delgado discloses the varying levels of cis-3-hexen-1-ol and of α-terpineol and that the brandy can be diluted indicating a step of adjusting the volatile content.
Delgado discloses that brandy is characterized as having a high alcohol content [pg. 132; Results and discussion 3.1]. Delgado does not explicitly disclose that the alcohol content is 10% of more. However, Valcárcel-Muñoz teaches that brandy is known in the art to contain an alcohol content of 36-45% [pg. 1, Introduction]. Therefore the alcohol content of 36-45% is inherent in the brandy of Delgado and therefore anticipates the claim limitation wherein an alcohol content is 10 v/v% or more.
Delgado discloses the content of cis-3-hexen-1-ol within a range of 10 ppb-50,000 ppb; and
the content of α-terpineol within a range of 0.1 ppb-100 ppb as discussed above in claim 1.
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Delgado et al., “Development of a stir bar sorptive extraction method coupled to gas chromatography-mass spectrometry for the analysis of volatile compounds in Sherry brandy”, Analytica Chimica Acta, 2010, vol. 672, pp. 130-136 as applied to claim 1 above and in further view of Uchihashi JP 2020103218 Machine Translation 2020 and Yonezawa et al. WO 2020203717 Machine Translation.
Regarding Claims 4-6: Delgado discloses as discussed above in claim 1.
Delgado does not disclose comprising cis-3-hexen-1-ol and α-terpineol derived from a plant of the family Theaceae (claim 4); wherein the plant of the family Theaceae is tea plant (Camellia sinensis) (claim 5); wherein cis-3-hexen-1-ol and α-terpineol derived from green tea (claim 6).
Uchihashi discloses a tea flavored alcoholic beverage [abstract]. Uchihashi discloses the addition of green tea (Family Theaceae; Camellia sinensis)[pg. 3, “about tea extract”]. Uchihashi discloses that the tea can be used with distilled beverages including whiskey, shochu, and brandy [pg. 2 “about alcohol component”; pg. 3. “About tea extract”]. Uchihashi discloses that the alcohol content of the tea alcoholic beverage can be 0.5 to 30% or appropriately changed based on the preference of the consumer [pg. 5, “Diluted alcoholic beverage”].
Yonezawa discloses a green tea composition [abstract]. Yonezawa discloses that the tea composition is derived from tea leaves [pg. 3, last full paragraph]. Yonezawa discloses tea which is a plant from the Family Theaceae; specifically Camellia sinensis and discloses green tea [pg. 4, 1st full paragraph]. Yonezawa discloses that the extracts can be used to enhance the flavor of tea and other foods [pg. 4, 6th paragraph; pg. 9, 1st two paragraphs]. Yonezawa discloses the extracts to enhance the flavor of foods and beverages including alcoholic beverages [pg. 9, 1st two paragraphs]. Yonezawa discloses the tea fragrance containing a α-terpineol content of .1 ppm -1,000 ppm (10ppb-1,000,000 ppb) and cis-3-hexen-1-ol content of .1ppm to 100 ppm (10 ppb-100,000 ppb) [pg. 4; 4th paragraph; pg. 7, last paragraph-pg. 8, fist partial paragraph].
At the effective filing date of the invention it would have been obvious to one of ordinary skill in the art to modify the composition of Delgado to include tea in an alcoholic beverage including brandy as in Uchihashi since Uchihashi discloses that tea extract can be used to enhance the flavor in alcoholic beverages and can suppress the effects of alcohol.
Further it would have been obvious that the amounts of α-terpineol and cis-3-hexen-1-ol in Delgado would have remained in the range recited even in the presence of tea extracts as in Yonezawa since Yonezawa discloses the α-terpineol content at 10 ppb-1,000,000 ppb and cis-3-hexen-1-ol at 10 ppb-100,000 ppb.
Although Yonezawa does not explicitly disclose cis-3-hexen-1-ol is 90,000 ppb or less one having ordinary skill in the art at the effective filing date of the invention would have considered the invention to have been obvious because the range taught by Yonezawa overlaps the instantly claimed range and therefore is considered to establish a prima facie case of obviousness. In re Malagari 182 USPQ 549,553.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Delgado et al. “Development of a stir bar sorptive extraction method coupled to gas chromatography-mass spectrometry for the analysis of volatile compounds in Sherry brandy”, Analytica Chimica Acta, 2010, vol. 672, pp. 130-136 (Applicants IDS) as applied to claim 1 above and as evidenced by Valcárcel-Muñoz “Comparative Evaluation of Brandy de Jerez Aged in American Oak Barrels with Different Times of Use” Jan 2021 Foods vol. 10 No. 288.
Regarding Claim 8: Delgado discloses as discussed above in claim 1. Delgado discloses the content of cis-3-hexen-1-ol within a range of 10 ppb-50,000 ppb; and the content of α-terpineol within a range of 0.1 ppb-100 ppb as discussed above in claim 1. Delgado discloses that brandy is characterized as having a high alcohol content [pg. 132; Results and discussion 3.1]. Delgado further discloses that the alcohol content being reduced by dilution of the brandy [pg. 133, last two lines].
Delgado does not disclose that the alcohol content is 1-10%. Valcárcel-Muñoz teaches that brandy is known in the art to contain an alcohol content of 36-45% [pg. 1, Introduction]. However, since Delgado teaches that it is known to dilute brandy to reduce the alcohol content it would have been obvious to do so to achieve an alcohol content of 1 to 10%.
Further regarding the concentrations of cis-3-hexen-1-ol and a-terpineol in the brandies, these concentrations would have remained within the recited claim limitations. With a starting alcohol content of 36% even if the sherry was diluted 4 times to a resulting alcohol content of 9%, the cis-3-hexen-1-ol and α-terpineol would have remained in the claimed range. For Example, Delgado discloses that the Solera brandy 1 contained 615 µg/L (615 ppb) of cis-3- hexen-1-ol and 12.8 µg/L (12.8 ppb) of α-terpineol; which, when diluted 4 times, would have resulted in a content of 153 ppb of cis-3- hexen-1-ol and 3.2 ppb of α-terpineol and a ratio of 47 and would have therefore remained within the parameters of the claim.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hiramoto et al. (US 2007/0009640) Hiramoto discloses fresh tea leaf powder which is a plant of Family Theaceae; specifically Camellia sinensis and discloses green tea [abstract; 0032-0035; 0049]. Hiramoto discloses that the extracts can be used to enhance the flavor of tea and other foods [0049]. Hiramoto discloses the extracts to enhance the flavor of foods and beverages including alcoholic beverages [0070]. Hiramoto discloses contents of cis-3- hexen-1-ol and α-terpineol [Table A].
Lin et al. Food Science and Nutrition Jan 2021 discloses white tea volatile components [abstract]. Lin discloses cis-3- hexen-1-ol and α-terpineol 3.7 ppm and 2.4 ppm respectively [Table 3].
Kawamoto (JP 2012147775) discloses a tea based alcoholic beverage [abstract]. Kawamoto discloses that the alcohol content can be 1 to 20% [pg. 6, Claims]. Kawamoto discloses green tea [pg. 6, last full paragraph].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICIA C TURNER whose telephone number is (571)270-3733. The examiner can normally be reached Mon-Thu 8:00-4:00 pm.
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/Felicia C Turner/Primary Examiner, Art Unit 1793