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 .
DETAILED ACTION
Status of the application
2. Claims 1-6 are pending in this office action.
Claims 1-6 have been rejected.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. 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.
6. Claim(s) 1-2 and 4, is/are rejected under 35 U.S.C. 103 as being unpatentable over Coelho et al. (in Food Science and Technology vol 135, pages 1-10, 2021: It states Available online 2020, see bottom of first page) in view of Gawel et al. (in Australian J of Grapes and wine research 26, 172-179, 2020) and as evidenced by NPL Cis -3- hexen -1- ol.
7. Regarding claim 1, Coelho et al. discloses alcoholic beverage on the shelf is considered to be packaged in a container (Abstract). Coelho et al. discloses that the volatile compounds and their concentration in alcoholic beverages (page 2, col 2, 2.2, last two lines and in Table 1). For example, in red wine, it is Z-3-hexenol in original red wine (i.e. W=wine group ; see 1st two lines under Table 1) is 15 +/- 2.4 microgram/L (ppb) and syringaldehyde is 147.3 microgram/L (ppb) (at least in Table 1 of Coelho et al.). It is known that 1 ppb =1microgram/L (Google). It is evidenced from NPL cis-3-hexen-1-ol that cis-3-hexen-1-ol is also known as Z-3-hexenol (Page 1 Wikipedia). Therefore, It shows prima facie case of obviousness according to MPEP 2145.05.
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).
However, in addition, it is to be noted that Coelho et al. also discloses that the concentration of volatile compounds determines the perception of aroma of the alcoholic beverage and the concentration can vary depending on the physical-chemical treatment conditions e.g. it depends on the ageing conditions using wood barrels or wood chips e.g. oak wood , type of wine etc. (Abstract, Under Introduction, col 2 last paragraph and col 3 first paragraph and Table 1). Therefore, it is variable.
Absent showing of unexpected results, the specific amount of volatile compounds is not considered to confer patentability to the claims. As the amount of volatile compounds and taste are variables that can be modified, among others, by adjusting the ageing and treatment conditions, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical.
Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of volatile compounds including cis 3 hexen -1- ol and syringaldehyde in Coelho et al. to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired concentration of thses two volatile compound and taste of the final alcoholic beverage (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Coelho et al. is silent about “A carbonated beverage filled in a container”.
Gawel et al. discloses that significant concentration of carbon dioxide” is present in the alcoholic fermentation (at least first two lines in Abstract). Gawel et al. also discloses that carbonation has effect on mouthfeel with perceived sweetness and reduced bitterness as desired “Methods and Results”; and in page 173, col 1 last few lines of first paragraph and mid-section of second paragraph under “Materials and methods” and page 173, col 2, last four lines of first paragraph). Gawel et al. also discloses “bottling of wine” (at least page 173, col 2, last four lines of first paragraph) which reads on “filled in a container” as claimed in claim 1. It is to be noted that if we consider broadest meaning of the term carbonated, carbon di oxide is present in still wine (Abstract, first 5 lines under Introduction).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho et al. to include the teaching of Gawel et al. to consider still wine and/or carbonated wine after carbonation in order to have an effect on mouthfeel (page 173, col 1 last few lines of first paragraph and second paragraph) and also it is filled in a container in order to have further storage which restores sensory attributes, quality ( at least under in Abstract, under “Methods and Results”; and first 5 lines under Introduction and in page 173, col 1 last few lines of first paragraph and mid-section of second paragraph under “Materials and methods” and page 173, col 2, last four lines of first paragraph) and transportation for further use.
8. Regarding claim 2, Coelho et al. also discloses that alcoholic beverage contains different amount of alcohol concentration including 12.5% by volume ethanol as one of them ( at least page 2 col 2 first paragraph) and it can be other values e.g. 4.7%, 8.3% by volume also (page 3 col 2, last four lines).
9. Regarding claim 4, Coelho et al. discloses broadly alcoholic beverages (Abstract) can include Whisky, brandy etc. (page 1, col 2 lines 7,8 e.g. Irish whisky; page 2 col 1 lines 4, 5).
10. Claim(s) 3 is is/are rejected under 35 U.S.C. 103 as being unpatentable over Coelho et al. (in Food Science and Technology vol 135, pages 1-10, 2021) in view of Gawel et al. (in Australian J of Grapes and wine research 26, 172-179, 2020) as applied to claim 1 and further in view of Takahashi et al. (JP 2007244310 A).
11. Regarding claim 3, Coelho et al.in view of Gawel et al. do not specifically teach “ alcoholic beverage according to claim 1 comprising a component derived from green tea” as claimed in claim 3.
Takahashi et al. discloses a method for producing a container-packed alcoholic beverage having the green tea flavor and color tone and the alcohol to be added is vodka and the method produces a container-packed alcoholic beverage having flavor and color (Page 4, at least in second paragraph which starts “specifically…” , above the heading “Advantageous- Effects” and claim 2 of Takahashi et al.).
It is to be noted that the green tea extract containing alcohol beverage would inherently contain a component derived from green tea. It is also evidenced by applicant’s specification that cis-3-hexen-1-ol is a component derived from green tea ( [0016], [0020]).
Therefore, it meets the claim limitation of “comprising a component derived from green tea” as claimed in claim 3.
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho et al. to include the teaching of Takahashi et al. to make an alcoholic beverage(e.g. Vodka) having the green tea flavor and color tone (Page 4, at least in second paragraph which starts “specifically…” , above the heading “Advantageous- Effects” and claim 2 of Takahashi et al.) in order to have tea flavored have alcoholic beverage product.
12. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Coelho et al. (in Food Science and Technology vol 135, pages 1-10, 2021) in view of Gawel et al. (in Australian J of Grapes and wine research 26, 172-179, 2020) and as evidenced by NPL cis-3-hexen-1-ol that cis-3-hexen-1-ol.
13. Regarding claims 5, 6, Coelho et al. discloses alcoholic beverage on the shelf is considered to be packaged in a container (Abstract). Coelho et al. discloses that the volatile compounds and their concentration in alcoholic beverages (page 2, col 2, 2.2, last two lines and in Table 1). For example, in red wine, it is Z-3-hexenol in original red wine (i.e. W=wine group ; see 1st two lines under Table 1) is 15 +/- 2.4 microgram/ml (ppb) and syringaldehyde is 147.3 microgram/ml (ppb) (Table ). It is evidenced from NPL cis-3-hexen-1-ol that cis-3-hexen-1-ol is also known as Z-3-hexenol (Page 1 Wikipedia).
However, Coelho et al. also discloses that the concentration of some of these compounds may be increased using wood barrels or wood chips e.g. oak wood (Abstract, Introduction, Table 1). This meets the claimed amounts as claimed in claim 5 (i) and (ii) and also claim 6 (i) and (ii).
Regarding the claim limitation of “a step of adjusting” their concentration as claimed in claim 5 (i) and (ii), and claim 6 (i) and (ii), it is to be noted that Coelho et al. also discloses that the concentration of volatile compounds determine the perception of aroma of the alcoholic beverage and the concentration can vary depending on the physical-chemical treatment conditions (e.g. time and temperature), it depends on the ageing conditions using wood barrels or wood chips e.g. oak wood , type of wine etc. (Abstract, Under Introduction, col 2 last paragraph and col 3 first paragraph and Table 1, page 2, col 2 – section 2.2, 2.3).
One of ordinary skill in the art would have been motivated to consider “a step of adjusting” the concentration of these two volatiles using GC-MS as disclosed by Coelho et al. (at least in 2.5) as claimed in claims 5(i)-(ii) and claim 6 (i)-(ii) by optimizing of the volatile compounds with a reasonable expectation of success in order to determine the desired perception of aroma of the alcoholic beverage (at least in Abstract).Therefore, it is variable.
Absent showing of unexpected results, the specific amount of volatile compounds is not considered to confer patentability to the claims. As the amount of volatile compounds and taste are variables that can be modified, among others, by adjusting the ageing and treatment conditions at the step of “adjusting” their content as claimed in claims 5, 6 at the steps (i)-(ii). Therefore, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical.
Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of volatile compounds including cis 3 hexen -1- ol and syringaldehyde in Coelho et al. to amounts, including that presently claimed, in order to obtain the desired effect e.g. desired concentration of thses two volatile compound and taste of the final alcoholic beverage (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Therefore, the teachings of Coelho et al. provide one of ordinary skill in the art to optimize the abovementioned extraction conditions in order to evaluate their amounts and accordingly can decide and alter the above conditions at the step of extraction to get desired value including the amount within the disclosed amount (Table 1) which is encompassed by the claimed amounts of claim 5 (i) and (ii). Therefore, the extraction steps with alteration of the variable parameters to adjust the amount and concentration of these volatile compounds can read on step of adjusting as claimed in claim 5 (i) and (ii).
Coelho et al. is silent about the steps of (iii), (iv) of claims 5,6 .
14. Regarding the step (iii) of claims 5,6, Gawel et al. discloses that carbon di oxide is present in still wine (Abstract, first 5 lines under Introduction) and also further carbonation can be considered, in need, which has effect on mouthfeel with perceived sweetness and reduced bitterness as desired (in Abstract, under “Methods and Results”; and on page 173, col 1 last few lines of first paragraph and second paragraph). Gawel et al. also discloses that “ the saturated component of the blend was obtained by releasing pressurized carbon dioxide into wine (500 ml) (at least on page 173, col 1, under Materials and Methods mid-section) which reads on “ a step of incorporating carbon di oxide” as claimed in claims 5 (iii) and claim 6 (iii).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho et al. to include the teaching of Gawel et al. to consider carbonated alcoholic beverage because it has an effect on mouthfeel with perceived sweetness and reduced bitterness as desired (in Abstract, under “Methods and Results”; and on page 173, col 1 last few lines of first paragraph and second paragraph).
15. Regarding the step (iv) of claims 5,6, Garwel et al. also discloses “bottling of wine” (at least page 173, col 2, last four lines of first paragraph) which reads on “filled in a container” as claimed in claims 5(iv) and claim 6 (iv). It is to be noted that if we consider broadest meaning of the term carbonated, carbon di oxide is present in still wine (Abstract, first 5 lines under Introduction) as claimed in claim 5 (iv) and 6(iv).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho et al. to include the teaching of Gawel et al. to consider filling in a container in order to have further storage which restores sensory attributes, quality ( at least page 173, col 2, last four lines of first paragraph) and transportation for further use.
Therefore, Coelho et al. in view of Gawel et al. meet the steps (i)-(iv) of claims 5 and 6.
16. Regarding the further claim limitation of “A method of enhancing a mature taste”, as claimed in claim 6, it is to be noted that Coelho et al. discloses that the volatile compounds including syringaldehyde and cis-3-hexen-1-ol (i.e. Z-3 hexenol) contributes a mature sensural profile with respect to aromas and taste profile (at least in page 2, col 2 under 2.4 and Table 1). Gawel et al. discloses that carbon di oxide is present in still wine (Abstract, first 5 lines under Introduction) and also carbonation has effect on mouthfeel attributes (page 103, col 1 last few lines of first paragraph and second paragraph) with an increased with higher carbon di oxide concentration (at least in page 176 col 1, first five lines).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho et al. to include the teaching of Gawel et al. to consider still wine and/or carbonated wine in order to have an effect on mouthfeel (page 103, col 1 last few lines of first paragraph and second paragraph) and also it is filled in a container in order to have further storage which restores sensory attributes, quality ( at least page 173, col 2, last four lines of first paragraph) and transportation for further use.
It is also to be noted that the disclosed combined teachings meet claimed steps of (i)-(iv) of claim 6 with the disclosed volatile components syringaldehyde, and cis-3-hexen-1-ol having identical structure of claimed volatile components. Therefore, as the disclosed method with the disclosed volatile components syringaldehyde, and cis-3-hexen-1-ol meet the claimed method and therefore, will have identical property including the claimed property of “enhancing a mature taste and fullness in taste of the carbonated alcoholic beverage and imparting a refreshing taste”
Pertinent Note(s)
17. Coelho et al. (in Food Science and Technology vol 135, pages 1-10, 2021: It states Available online 2020, see bottom of first page) is primary prior art.
Please consider examiner's posted NPL reference by Coelho et al. along with this office action.
Applicants posted Coelho et al. on 1/24/2024 is not eligible.
Conclusion
18. Any inquiry concerning the communication or earlier communications from the examiner should be directed to Bhaskar Mukhopadhyay whose telephone number is (571)-270-1139.
If attempts to reach the examiner by telephone are unsuccessful, examiner’s supervisor Erik Kashnikow, can be reached on 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BHASKAR MUKHOPADHYAY/
Examiner, Art Unit 1792