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
2. Applicants’ arguments and amendments filed on 6/12/2026 overcomes the rejections of record. However, the new grounds of rejection as set forth below are necessitated by applicants’ amendment and therefore, the following action is Final.
Any objections and/or rejections made in the previous action, and not repeated below, are hereby withdrawn.
Status of the application
3. Claims 1-3, 5, 6 are pending in this office action.
Claims 1,5,6 have been amended.
Claim 4 is cancelled.
Claims 1-3, 5,6 have been rejected.
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. 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.
7. Claim(s) 1-2 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 Nakajima et al. (Hereinafter Nakajima ‘552) (AU 2016/346552 B2) and as evidenced by NPL Cis -3- hexen -1- ol.
8. Regarding claim 1, Coelho et al. discloses broadly alcoholic beverages (Abstract) can include Whiskey, Brandy etc. (Page 1, col 2 lines 7,8 e.g. page 2, col 1 lines 4,5). Coelho et al. also discloses that alcoholic beverages can be placed on the shelf 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, spirit contains (S) Z-3-hexenol, S (initial state), it is 330.9+/- 25.1 ug/ml, S40 (i.e. after 48 hours, at 40 degree C) it is 367.4 +/- 11.3 ug/ml and SW40 (i.e. after 48 hours at 40 degree C, it is with reused wood) 384.7 +/- 55.8 ug/ml respectively. 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).
Regarding syringaldehyde, Coelho discloses that in spirit group, syringaldehyde content in Sw40 (i.e. after 48 hours at 40 degree C, it is with reused wood) is 2812.3 +/- 92 .0 ug/ml.
Regarding syringaldehyde, 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 to be noted that Coelho et al. also discloses that the concentration of volatile compounds can be extracted from chip in the spirit group in order to have the presence of both syringaldehyde and Z-3-hexenol, with a reasonable expectation of success to achieve desired perception of aroma in the beverage. It is known that spirits” includes gin, vodka, tequila and rum, etc. as disclosed by Nakagima ‘552 et al. ([0022]) and discussed below.
However, more specifically, if we consider the claim limitation of “one, two or more selected from whiskey, vodka and Gin”, as claimed in claim 1, we may combine Whisky with Vodka, and/or Gin also.
However, in addition, as discussed above, 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 are 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 these 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).
However, Coelho et al. is silent about
(a) the specific amount of syringaldehyde present in the claimed alcoholic beverage (s) as claimed in the Markush group of amended claim 1 and
(b) "A carbonated beverage filled in a container" as claimed in claim 1.
This is disclosed by secondary prior art by Nakajima et al. ‘552.
With respect to (a), Nakajima ‘552 discloses that the alcohol-taste beverage can comprise a substance obtained by dealcoholizing an alcohol (hereinafter referred to as the "dealcoholized extract") as dealcoholized extract can be selected from general alcohols, and also can be selected, for example, from whisky , spirits” such as gin, vodka, tequila and rum, liqueurs, brandies , shochu, wines and a mixture thereof or the like etc. and can be stored in a barrel ([0022]). Therefore, Nakajima et al. is combinable to Coelho et al. because Nakajima et al. also discloses ‘spirit’ which includes Vodka, Gin to meet claim 1.
Nakajima ‘552 discloses that whisky beverage has syringaldehyde 20 ppb or more (at least in claims 12, 13 and 17 of Nakajima ‘552).
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. with the teaching of Nakajima ‘552 et al. in order to have whisky having syringaldehyde 20 ppm or more in combination with spirit containing Z-3-hexanol, in order to provide desired perception of aroma in the carbonated alcoholic beverage comprising whiskey and vodka or Gin or both from spirit group.
With respect to (b), it is to be noted that Nakajima ‘552 et al. discloses carbonated beverage. Nakajima ‘552 discloses the process for producing an alcohol-taste beverage which includes Whiskey , Gin, Rum etc. ([0022]) can comprise a step of blending a carbon dioxide gas ([0037]). The concentration of the carbon dioxide gas can be appropriately set. Although the dealcoholized extract, as it is, can exhibit the effect to impart the fullness of taste like brown spirits, it has been found that the effect can be further increased through a synergistic effect obtained by a combination with a carbon dioxide gas ([0037]).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho’s alcoholic beverage into carbonated alcohol taste beverage by including a step of blending carbon dioxide gas ([0037]) into alcohol taste beverage in order to exhibit the effect to impart the fullness of taste like brown spirits, it has been found that the effect can be further increased through a synergistic effect obtained by a combination with a carbon dioxide gas ([0037]).
9. 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).
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 Nakajima et al. (Hereinafter Nakajima ‘552) (AU2016/346552 A) 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 Nakajima ‘552 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. Claim(s) 5, 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 Nakajima et al. (Hereinafter Nakajima ‘552) (AU2016/346552 A) and as evidenced by NPL Cis -3- hexen -1- ol.
13. Regarding claims 5, 6, Coelho et al. discloses broadly alcoholic beverages (Abstract) can include Whiskey, Brandy etc. (Page 1, col 2 lines 7,8 e.g. page 2, col 1 lines 4,5). Coelho et al. also discloses that alcoholic beverages can be placed on the shelf 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, spirit contains (S) Z-3-hexenol, S (initial state), it is 330.9+/- 25.1 ug/ml, S40 (i.e. after 48 hours, at 40 degree C) it is 367.4 +/- 11.3 ug/ml and SW40 (i.e. after 48 hours at 40 degree C, it is with reused wood) 384.7 +/- 55.8 ug/ml respectively. 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).
Regarding syringaldehyde, Coelho discloses that in spirit group, syringaldehyde content in Sw40 (i.e. after 48 hours at 40 degree C, it is with reused wood), 2812.3 +/- 92 .0 ug/ml.
Regarding syringaldehyde, 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 to be noted that Coelho et al. also discloses that the concentration of volatile compounds can be extracted from chip in the spirit group in order to have the presence of both syringaldehyde and Z-3-hexenol, with a reasonable expectation of success to achieve desired perception of aroma in the beverage. It is known that spirits” includes such as gin, vodka, tequila and rum, etc. as disclosed by Nakagima ‘552 et al. ([0022]) and discussed below.
However, more specifically, if we consider the claim limitation of “one, two or more selected from whiskey, vodka and Gin”, as claimed in claim 1, we may combine Whisky with Vodka, and/or Gin also.
However, in addition, as discussed above, 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 are 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 these 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).
However, Coelho et al. is silent about
(a) the specific amount of syringaldehyde present in the claimed alcoholic beverage (s) as claimed in the Markush group of alcoholic beverages(s) and
(b) "A carbonated beverage filled in a container" as claimed in claim 1.
This is disclosed by secondary prior art by Nakajima et al. ‘552.
With respect to (a), Nakajima ‘552 discloses that the alcohol-taste beverage can comprise a substance obtained by dealcoholizing an alcohol (hereinafter referred to as the "dealcoholized extract") as dealcoholized extract can be selected from general alcohols, and also can be selected, for example, from whisky , spirits” such as gin, vodka, tequila and rum, liqueurs, brandies , shochu, wines and a mixture thereof or the like etc. and can be stored in a barrel ([0022]). Therefore, Nakajima et al. is combinable to Coelho et al. because Nakajima et al. also discloses ‘spirit’ which includes Vodka, Gin to meet claim 1.
Nakajima ‘552 discloses that whisky beverage has syringaldehyde 20 ppb or more (at least in claims 12, 13 and 17 of Nakajima ‘552).
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. with the teaching of Nakajima ‘552 et al. in order to have whisky having syringaldehyde 20 ppm or more in combination with spirit containing Z-3-hexanol, in order to provide desired perception of aroma in the carbonated alcoholic beverage comprising whiskey and vodka or Gin or both from spirit group.
With respect to (b), it is to be noted that Nakajima ‘552 et al. discloses carbonated beverage. Nakajima ‘552 discloses the process for producing an alcohol-taste beverage which includes Whiskey , Gin, Rum etc. ([0022]) can comprise a step of blending a carbon dioxide gas ([0037]). The concentration of the carbon dioxide gas can be appropriately set. Although the dealcoholized extract, as it is, can exhibit the effect to impart the fullness of taste like brown spirits, it has been found that the effect can be further increased through a synergistic effect obtained by a combination with a carbon dioxide gas ([0037]).
One of ordinary skill in the art before the effective filling date of the claimed invention would have been motivated to modify Coelho’s alcoholic beverage into carbonated alcohol taste beverage by including a step of blending carbon dioxide gas ([0037]) into alcohol taste beverage in order to exhibit the effect to impart the fullness of taste like brown spirits, it has been found that the effect can be further increased through a synergistic effect obtained by a combination with a carbon dioxide gas ([0037]).
Therefore, Coelho et al. in view of Nakajima ‘552 discloses the claimed amounts as claimed in claim 5 (i) and (ii) and also claim 6 (i) and (ii) and also steps (iii) –(iv) of claims 5,6 as discussed above.
Regarding the specific 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 these 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).
Response to arguments
13. It is to be noted that examiner has considered new secondary prior arts by Nakajima’552 et al. due to the specific requirement of one or more beverages from the Markush group as claimed in amended claims 1, 5, 6. However, Nakajima’552 et al. discloses carbonated beverage. Therefore, prior used secondary prior art by Gawel et al. is not used in this office action because Gawel et al. was used to address carbonated beverage. As Nakajima ‘552 et al. is used to address amended claims 1, 5, 6 , the rejection is made as final.
14. Applicants argued on first page , in remarks that “the deletion of Brandy narrows the originally disclosed group”
In response, it is to be noted that even if Brandy is deleted from claim 4 and rest of the claim limitations of prior cancelled claim 4 is incorporated into amended claims 1, 5,6, however, because of the open ended “comprising” transitional phrase, the limitation is still using comprising language. Therefore, while brandy can no longer be used to meet the claimed limitation it is not excluded from being present in the beverage as currently claimed.”
15. Applicants argued in remarks, on second page, mid-section that “Coelho et al. does not teach the amended beverage comprising Whisky, Shochu, rum ,Vodka, or gin and containing both claimed components within the claimed ranges”.
In response, the response made in item #14 above, is applicable here too. It is also to be noted that the amendment of claims 1, 5, 6 are made using the claim limitation of prior dependent claim 4 which depends on claim 1 and is cancelled. Prior claim 4 claimed “comprising” open ended transitional phrase to comprise “one or two whisky, gin etc.” to modify the alcoholic beverage of Coelho et al. in the last office action because Coelho et al. broadly discloses alcoholic beverages (Abstract) can include Whisky, Brandy etc. (Page 1, col 2 lines 7,8 e.g. page 2, col 1 lines 4,5). However, now the amendment of independent claims 1, 5, 6 have functional claim limitation which is to be interpreted as the components should be considered only from within one or two or more alcoholic beverages (i.e. it excludes red wine) from the claimed Markush group having the claimed components within the claimed ranges as claimed in claim 1.
Coelho et al. discloses whisky, spirit etc. (Table 1). Coelho et al. is specifically silent about the amount of syringaldehyde in the alcoholic beverage composition. Therefore, Examiner has used another secondary prior art by Nakajima ‘552 to address the deficiency of Coelho et al. Nakajima et al. discloses Whisky and also discloses spirit is vodka, Gin etc.
Applicant’s representative has primarily all the arguments based on Coelho’s disclosure of red wine containing claimed amount of components and not for claimed amount of the alcohols from the claimed Markush group as claimed in amended claim 1. This is already addressed above.
Nakajima ‘552 et al. is used as secondary prior art to address amended independent claims 1, 5 and 6. Therefore, as this new ground of rejection is due to the amendment, therefore the rejection is made as final.
Conclusion
16. 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 extension fee 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 date of this final action.
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
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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