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 .
Election/Restrictions
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/14/2025.
Applicant’s election without traverse of claims 1-9 in the reply filed on 11/14/2025 is acknowledged.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wook et al (KR 101371617 B1).
In regard to claim 1, Wook et al discloses:
The present invention relates to a method for producing distilled spirits and a distillation apparatus comprising the step of condensing a distillation product obtained by distilling a mash. More specifically, the invention relates to a method for producing distilled spirits and a distillation apparatus for achieving the same, comprising two or more condensation steps of condensing the distillation product obtained by distilling a mash at different condensation temperatures to obtain a condensed product containing aroma components of different compositions by fractionally condensing the distillation product according to boiling points ([0001]).
More specifically in regard to claim 1,Wook et al discloses:
One embodiment of the present invention relates to a method for producing distilled spirits comprising the step of condensing a distillation product obtained by distilling a mash in a still, wherein the condensation step comprises two or more condensation steps of condensing at different condensation temperatures, the condensation step comprising the step of condensing the distillation product at a first condensation temperature to obtain a first condensation product and the step of condensing the distillation product that is not condensed at the first condensation temperature at a second condensation temperature to obtain a second condensation product, wherein the condensation temperatures decrease in the order of the first condensation temperature and the second condensation temperature, and condensation products of different compositions are obtained for each condensation step.
Another embodiment of the present invention relates to a distillation apparatus comprising: a distiller for heating a mash to provide a distillation product; a first condenser connected to the distiller for condensing a distillation product discharged from the distiller at a first condensation temperature and discharging a first condensation product; a second condenser connected to the first condenser for condensing a distillation product not condensed in the first condenser at a second condensation temperature and discharging a second condensation product; a condensation tank connected to each condenser for collecting the condensation product; and a pressure reduction pump for applying a pressure reduction condition to the condensers, wherein the condensation temperatures within the condensers are different from each other and decrease in the order of the first condensation temperature and the second condensation temperature, and condensation products of different compositions are obtained for each condenser.
([0005]).
Hence, Wook et al discloses forming a mash, distilling (i.e. boiling) a mash, then condensing the vapors in the first condensation step through the first condenser, and then further condensing the vapors in the second condensation step through the second condenser, wherein the condensation temperature in the second condenser is lower than the condensation temperature in the first condenser.
In regard to the organic material, Wook et al discloses “[t]he above-mentioned ingredients for the mash generally include all grains known as ingredients for the mash, and for example, the above-mentioned ingredients for the mash may be selected from one or more types from the group consisting of rice and barley” (page 4 of machine translation)..
In regard to the recitation of the boiling the ethanol at a pressure that is less than atmospheric pressure, Wook et al discloses “[i]t is preferable that the pressure range inside the distiller be 95 to 235 mmHg under reduced pressure conditions” (page 3 of machine translation).
In regard to the recitation of macerating an organic material in alcohol, Wook et al discloses:
[0062] To prepare the koji, rice (source: domestic) was soaked in water for 4 hours, then drained until the moisture content was approximately 28-30 wt%, and then steamed for 15 minutes.Koji was prepared by inoculating 8 kg of steamed rice with 4 g of white koji mold (Aspergillus kawachi) (source: Suwon starter) and culturing for 44 hours under conditions of 40°C and 90% humidity.
[0064] A primary fermented product was prepared by mixing 2.4g of dry yeast, which was activated by adding 2.4g of yeast to 24mL of water and activating it in an incubator at 35 to 37℃ for 30 minutes, with 8kg of the above-prepared koji and 12L of soaking water, and carrying out primary fermentation under conditions of about 20℃.
[0066] 32 kg each of rice (source: Gwangju, Korea) and barley (source: Gwangju, Korea) were prepared, the rice was soaked in water for 4 hours, and the barley was soaked in water for 15 minutes. After that, the rice was drained until its moisture content was 28-30 wt% and the barley until its moisture content was 35 wt%, and then steamed for 15 minutes. Each steamed rice and barley were mixed with the above primary fermentation product and fermented at about 20°C for 13 to 15 days to prepare about 100 L of rice mash and barley mash, respectively.
[0068] 100 L each of rice mash and barley mash were introduced into a vacuum distillation apparatus equipped with a 4-stage condenser and a recirculation pump as described in Fig. 2 under a reduced pressure condition of -0.8 bar (160 mmHg), and then heating was carried out by supplying steam to a steam jacket (Example 1).
Hence, Wook et al discloses macerating an organic material in alcohol (a fermented product containing rice and barley soaked in alcohol.
Wook et al anticipates 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.
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wook et al (KR 101371617 B1).
In regard to claims 2-4, Wook et al discloses:
[0062] To prepare the koji, rice (source: domestic) was soaked in water for 4 hours, then drained until the moisture content was approximately 28-30 wt%, and then steamed for 15 minutes.Koji was prepared by inoculating 8 kg of steamed rice with 4 g of white koji mold (Aspergillus kawachi) (source: Suwon starter) and culturing for 44 hours under conditions of 40°C and 90% humidity.
[0064] A primary fermented product was prepared by mixing 2.4g of dry yeast, which was activated by adding 2.4g of yeast to 24mL of water and activating it in an incubator at 35 to 37℃ for 30 minutes, with 8kg of the above-prepared koji and 12L of soaking water, and carrying out primary fermentation under conditions of about 20℃.
[0066] 32 kg each of rice (source: Gwangju, Korea) and barley (source: Gwangju, Korea) were prepared, the rice was soaked in water for 4 hours, and the barley was soaked in water for 15 minutes. After that, the rice was drained until its moisture content was 28-30 wt% and the barley until its moisture content was 35 wt%, and then steamed for 15 minutes. Each steamed rice and barley were mixed with the above primary fermentation product and fermented at about 20°C for 13 to 15 days to prepare about 100 L of rice mash and barley mash, respectively.
[0068] 100 L each of rice mash and barley mash were introduced into a vacuum distillation apparatus equipped with a 4-stage condenser and a recirculation pump as described in Fig. 2 under a reduced pressure condition of -0.8 bar (160 mmHg), and then heating was carried out by supplying steam to a steam jacket (Example 1).
Wook et al is silent as to the alcohol content of the fermented rice/barley mash and the concentration of organic material. Further in this regard, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The reference discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the alcohol content of the fermented rice/barley mash and the concentration of organic material among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of anticipation/obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to the recitation of the pressure less than 40 Torr (mmHg at 0°C) in claims 5-6, Wook et al discloses “[i]t is preferable that the pressure range inside the distiller be 95 to 235 mmHg under reduced pressure conditions” (page 3 of machine translation).
Further in regard to the pressure recitations, it is noted that:
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235(CCPA 1955) (MPEP 2144.05, II A).
Further, regarding the pressure ranges as examined above, it is noted that 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In regard to claim 7, Wook et al discloses “[f]or example, distillation can be carried out by introducing the mash into a distillation tank and heating it indirectly with a steam jacket, and in order to minimize off-flavors such as deterioration, the internal temperature during distillation can be 35 to 60°C, preferably 45 to 50°C” (page 4 of the machine translation).
Claim(s) 5-6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wook et al (KR 101371617 B1) as applied to claims 1-7 above and further in view of Goodwin et al (US 20070281052 A1).
In regard to claims 8-9, Wook et al discloses:
The condensation temperature of each of the above condensation steps can be set to decrease sequentially starting from the first condensation step, within the range of 20 to 50℃ (page 4 of the machine translation).
The first condensation temperature may be 45 to 48°C, for example 47°C; the second condensation temperature may be 41 to 44°C, for example 43°C; the third condensation temperature may be 36 to 39°C, for example 38°C; and the fourth condensation temperature may be 30 to 34°C, for example 33°C. The condensation step may be performed under reduced pressure conditions in consideration of economic feasibility and efficiency (page 4 of the machine translation).
Wook et al discloses condensation temperatures outside of the claimed range. Goodwin et discloses production of a distilled beverage under reduced pressure where alcoholic distillate is condensed with a first condenser at a first condenser temperature of from about -269°C to about -15°C to provide a first alcoholic condensate” (Abstract).
In regard to the recitation of the pressure less than 40 Torr (mmHg at 0°C) in claim 5-6, Wook et al discloses “[i]t is preferable that the pressure range inside the distiller be 95 to 235 mmHg under reduced pressure conditions” (page 3 of machine translation). Wook et al discloses distillation pressure outside of the claimed range.
Goodwin et disclose distillation pressure as claimed:
[0018] In another embodiment, the pressure within the distillation vessel while distilling is from about 0.1 Torr to about 42 Torr. In another embodiment, the pressure within the distillation vessel while distilling is from about 0.1 to about 2 Torr.
Goodwin et disclose that alcoholic beverage obtained by the disclosed method results in better organoleptic qualities such as “less nasal pungency, more floral smell, stronger black licorice smell, less spicy taste, less juniper smell, and less aroma” ([0162]).
Goodwin et al disclose that alcoholic beverage obtained by the disclosed method significantly reduce presence of undesired compounds associated with conventional distillation methods involving higher distillation temperatures and higher distillation pressures:
[0160] In particular, for the monoterpenes alpha-phellandrene, alpha-pinene, beta-myrcene and caryophyllene, each of which is known to be able to react in the presence of heat to produce off flavors, there is about 52, 45, 65 and 48 times more, respectively, of monoterpene present in Control Gin B relative to Gin A of the invention (calculated as PAR for B divided by the PAR for A). Thus, a gin of the reduced pressure method of the present invention has a reduced amount of a monoterpene relative to a conventional gin.
One of ordinary skill in the art would have been motivated to modify Wook et al in view of Goodwin et al and to employ lower distillation temperatures and lower distillation pressures as suggested by Goodwin et al in order to achieve better organoleptic qualities such as “less nasal pungency, more floral smell, stronger black licorice smell, less spicy taste, less juniper smell, and less aroma” and to reduce presence of undesired compounds associated with conventional distillation methods involving higher distillation temperatures and higher distillation pressures.
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791
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