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 § 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 8-10, 13-20 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.
Claim 8 recites the limitation "the volcanic rock" in 4. There is insufficient antecedent basis for this limitation in the claim. Claims 9, 10 and 13-20 depend from claim 8.
Claim 17 refers to “the element” in line 1. It appears claim 17 should depend from claim 9.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1-6, 8-10, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Behind the Scenes of Reyka Vodka”, Geoff Kleinman, September 8, 2014 (referred to herein as “Reyka I”).
Reyka I discloses a method of making vodka where white barley (a grain) is fermented and distilled to create 96% ABV spirit. It is inherent that ethanol is used in the fermentation process for making spirits. Reyka I discloses the use of the Carter-Head Still for further distillation. The Carter-Head still has an additional chamber which can be used for the alcohol vapors to pass through something before condensing. At the top of the still is a unique lava rock backet that the distilled vapors pass through as they are being condensed into liquid (see photo from article below).
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After condensation, the spirit is passed through another lava rock chamber, filtering it again as a liquid (see photo from article below).
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Thus, regarding claims 1-3, and 6, Reyka I teaches an alcoholic beverage (vodka) comprising a fermentable base and neutral spirit (fermented and distilled white barley 96% ABV spirit from Scotland) and an element of volcanic rock. The element of volcanic rock is inherently present based upon two separate stages of filtering the material through volcanic rock. First the vapors are filtered through volcanic rock, then the condensed spirit is filtered a second time through volcanic rock. This treatment is commensurate with the exposure to volcanic rock that is disclosed (see instant specification [0063]). Thus, one of ordinary skill would reasonably expect at least some element derived from the volcanic rock to be present in the vodka based upon the similar treatment to that disclosed and the fact that Reyka I teaches filtering with volcanic rock two times, one with vapors and one with the condensate.
Further regarding claim 1, the vodka produced by Reyka I is reasonably expected to have a pH of greater than about 7. Note that “about 7” encompasses slightly below and slightly above “7”, thus “greater than about 7” is seen to encompass slightly below 7. One of ordinary skill would reasonably expect that the vodka of Reyka would have a pH of “greater than about 7” because the vodka processing follows the same steps disclosed by applicant. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims. See MPEP 2112 and 2112.02.
The instant specification states that the vodka is fermented, distilled and filtered using lava rocks. The water used may be glacial (inherently alkaline) and once distilled, the alcohol from the distillation process is then passed over a volcanic rock. The volcanic rock may originate from Iceland. Reyka I discloses the same process including fermenting, distilling and filtering with volcanic rock from Iceland. Reyka I sources the water from glacial Icelandic water.
Based upon the same processing steps and materials being used, one of ordinary skill would reasonably expect the product of Reyka I to meet the claimed limitations. Any differences would be considered minimal and not provide a patentable distinction absent some evidence to the contrary.
Regarding claims 8-10, 14, 16, 19 and 20, Reyka I teaches fermenting a fermentable base (white barley), distilling (at least once in Scotland and again in the Carter-Head still), and contacting the distilled product with volcanic rock (two points of contact). Claim 8 was amended to recite “initiating a chemical reaction between the volcanic rock and the distilled product to increase a pH of the distilled product to greater than about 7”. Please refer to the discussion above as to how “greater than about 7” is interpreted and how the limitation is considered inherent to the product of Reyka I. The “initiating” is seen to be met by the filtering step of Reyka I where the distilled product contacts lava rock in the same manner disclosed by applicant. Note that the instant specification does not disclose any other step to initiate a reaction other than the exposure of the distilled product to lava rocks. Paragraph [0014] states “In one such embodiment, the volcanic rock initiates a chemical reaction with the alcoholic beverage to change the composition of the distilled product.” Paragraph [0033] states “Applicant has discovered that incorporating an element from a volcanic rock into an alcoholic beverage, such as vodka, reduces the bitterness or burning sensation of the vodka. It is believed that this effect is caused by an increased temporal profile of the vodka on the tastebuds, particularly the bitter taste receptors, such as TAS2R.” Paragraph [0038] states “Applicant believes that filtering distilled alcohol with a volcanic rock inhibits activation of the bitter taste receptors. This reduces the aftertaste and improves the overall finish of the alcohol, resulting in a more pleasurable drinking experience.” Paragraph [0040] states “Applicant believes that filtering distilled alcohol with a volcanic rock inhibits activation of the bitter taste receptors.” Thus, the step of filtering using volcanic rock is attributed to the inhibiting the activation of bitter taste receptors [0038] and this is also disclosed as the result of incorporating an element from the volcanic rock into the vodka. Thus, the step of filtering as disclosed by applicant is identical to the step of filtering using volcanic rock by Reyka I and is also considered to be the step of “initiating” as claimed. Moreover, the instant specification states that the “volcanic rock initiates a chemical reaction”. Thus, the contact of the spirit with the volcanic rock via the filtration step (either step) is seen to meet the claimed “initiating”. Thus, the step of “initiating” is seen to be met by Reyka I.
Further regarding claim 9, as stated above, the element of volcanic rock is inherently present based upon two separate stages of filtering the material through volcanic rock. Note that Reyka I teaches two such exposures to the volcanic rock. Further regarding claim 10, the step of contacting as recited in claim 9 and filtering recited in claim 10 are considered one and the same. Alternatively, if they are considered separate and distinct steps, Reyka I teaches filtering the distilled vapors as well as filtering the condensate. Additionally, regarding claim 14, the step of filtering the second time effectively filters the distilled product and any element derived from the first contact with volcanic rock.
Regarding claims 4, 5, and 16-18, Reyka I discloses the same steps of contacting and filtering distilled products with volcanic rock which are the same steps which are claimed and disclosed. Thus, based upon this comparison, one of ordinary skill would reasonably expect the same outcome, namely the presence of at least some element from the volcanic rock, including basalt minerals, a pH of greater than about 7.0, i.e., a chemical reaction between the volcanic rock and distilled product. Notably, the instant specification states that any volcanic rock may be used [0052] and attributes the volcanic rock itself to initiating a chemical reaction and rise in pH [0064]. Here, both applicant and Reyka I use Icelandic volcanic (lava) rocks and applicant notes that the volcanic rock may be sourced from any suitable volcanic rock that has erupted from a volcano. Thus, the Icelandic volcanic rock disclosed by Reyka I is considered to be the same type of lava rock as encompassed by the claims and which may be used during the process claimed.
Regarding claim 15, Reyka I teaches the addition of Icelandic water after distillation. Moreover, Icelandic water is known for its alkalinity which would also inherently increase the pH of the vodka.
Claim Rejections - 35 USC § 103
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Reyka I in view of US 20050048175 (Vickers).
Reyka I discloses the method of making vodka as discussed above, but does not expressly teach the method further comprising straining liquid from the fermentable base. As disclosed by Vickers, when forming alcoholic beverages, ingredients are mixed to form what is commonly referred to as “mash” which comprises a grain and other ingredients [0015]. This mash is allowed to ferment resulting in ethanol formation and the mash is strained to remove solids from the mash [0016-0017]. This is understood to be the same as removing the liquid (ethanol) from the fermentable base (grain). While Reyka I does not expressly disclose this step, the process begins with white barley (a grain) that is fermented and distilled to create 96% ABV spirit. At some point during the formation of the spirit, it would have been obvious to strain the fermentable base (grain) to extract the liquid (ethanol) as Vickers teaches this is a known and effective manner in which the solids are removed to obtain the desired alcoholic product of the fermentation.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Reyka I in view of US 2023/0111789 (McCullough). Alternative to the rejection of claim 1 with relation to the claimed pH over Reyka I alone under 102/103 above, the claims are rendered obvious further in view of McCullough. McCullough teaches vodka that has a pH in the range of 5-8. The vodka may be obtained from grains and filtered. A pH of 5-8 is taken to be an acceptable range for a vodka drink for consumption. It would have been obvious to confer an acceptable pH level to the vodka of Reyka I based upon the teaching by McCullough that a pH in the range of 5-8 is acceptable for vodka consumption.
Response to Arguments
Applicant’s amendments have overcome the objections to claims 4 and 17 and the rejection of claim 10 under 112(b).
Applicant’s declaration of Eric Dahmen has been considered and the rejection under 101 and 115(a) is withdrawn.
Applicant’s arguments, filed 10/01/2025, with respect to the 102 rejection over Reyka I have been fully considered but they are not persuasive.
Applicant argues that the limitations of the element of volcanic rock and the pH of greater than about 7 is not inherent to Reyka. Applicant states that the mere contact between ethanol liquid and solid volcanic rock does not result in mineral dissolution or element transfer and that while ethanol liquids may physically pass over or around lava rocks in Reyka’s Carter-Head still, there is no mechanism by which mineral elements could be carried into the fluid stream. Applicant states that the passage of already-distilled liquid ethanol through a bed of lava rocks does not inherently lead to the dissolution of minerals at a level sufficient to alter the chemistry of the beverage. Applicant also asserts that Reyka I does not disclose any conditions, (e.g., particle size reduction, rock pretreatment, contact duration, repeated replacement of rocks” that would promote mineral dissolution and that Reyka I does not provide data, analysis or even qualitative indication that the final product contains measurable elements derived from volcanic rock.
Notably, applicant discloses only filtering with volcanic rock and also does not disclose particle size reduction, rock pretreatment, contact duration, repeated replacement of rocks. Thus, if there are any specific steps that are necessary to perform the claimed process or provide the claimed product, they are not clearly indicated in the specification. Most notably, the specification states that it is the volcanic rock that initiates the reaction [0014]. The instant specification discloses filtering with volcanic rock, but no other parameters or steps appear to be disclosed to set apart the filtering disclosed by applicant with the filtering performed by Reyka I. Applicant discloses that the impact of using the volcanic rock is incorporating an element from the volcanic rock into the beverage increases the temporal profile of the beverage on the tastebuds. This spreads out the overall impact of the beverage on the tastebuds over time, thereby reducing the immediately harshness or "burning sensation" of the alcohol within the beverage. In addition, this process appears to inhibit activation of the other taste receptors, thereby reducing aftertaste and improving the overall finish of the beverage, resulting in a more pleasurable drinking experience [0013]. Reyka I discloses two exposures to the Icelandic volcanic rock, the first is at the top of the Carter-Head Still in the lava rock basket that the distilled vapors pass through as they are being condensed into a liquid. After condensation, the spirit is passed through another lava rock chamber, filtering it again as a liquid. Thus, two exposures to the volcanic rock by Reyka I is seen to meet the filtering step as well as the exposure to volcanic rock step such that a reaction is “initiated”.
Additionally, in support of inherency for the element from the volcanic rock is RU 2208629 which indicates that filtration in a column filled with mordenite, which is a natural mineral of volcanic-sedimentary origin of the class of microporous skeleton aluminosilicates, in the intracrystalline space of which are exchanged cations of alkali and alkaline earth metals and water molecules. The salts that make up mordenite have the ability to exchange ions, transferring ions into the water-alcohol mixture that give it a pleasant taste. Here, RU ‘629 indicates that salts that make up the volcanic rock mordenite transfer ions into the water-alcohol mixture during filtration and result in a pleasant taste.
Further, Reyka I discloses the resulting vodka is slightly sweet, soft and incredibly clean. Applicant discloses that the incorporation of an element from volcanic rock reduces the harshness or burning sensation and reduces bitterness. The disclosure of the slightly sweet and soft (i.e., smooth) texture of Reyka I is similar to the product of applicant. Note that there is no quantification of the amount of any element from the volcanic rock and no indication of qualification of the taste of the product.
Applicant argues that Reyka I refers to the use of lava rocks exclusively as a filtering medium, analogous to charcoal or sand filtration, rather than as a reactant or mineral source. The lack of Reyka I stating that the volcanic rock may perform other functions in addition to filtration is not an indication that these functions cannot or do not occur. Here, Reyka I and applicant disclose identical steps of filtering using volcanic rocks from Iceland. If the same materials are used and the same steps performed, it is not clear why the same actions as a result of these steps using the materials would not or could not occur. In other words, applicant discloses filtration using volcanic rock which appears to be the only physical step performed. This step of exposing the volcanic rock and distilled spirit appears to result in the action of initiation and element addition. No other steps are disclosed in order to achieve these outcomes. Thus, a comparison of the prior art materials and steps and the disclosed materials and steps leads to the reasonable conclusion that Reyka I would also result in the action of initiation and element addition.
Regarding pH, applicant argues that Reyka I is silent as to the pH and that the change in pH upon exposure to volcanic rock is process dependent and not guaranteed and that variables such as the particle size of the volcanic rock, pretreatment of the rock, frequency of rock replacement and duration of liquid contact all influence whether any mineral dissolution occurs and whether the final pH is reached. Applicant has disclosed none of these parameters and discloses only the step of filtration. Applicant has not addressed the use of Icelandic glacial water disclosed by Reyka I which is widely known to be alkaline. Nevertheless, Reyka I filters their distilled spirit with Icelandic volcanic rock as does applicant. Given the similarity in the material used (as well as using alkaline water), and similar steps of filtering to purify the vodka, one would reasonably expect the pH to be similar or to not be patentably distinct. Further, applicant states that the FTIR indicates that the vodka that has passed over the volcanic rock has a different chemical composition [0066, 0070]. Passing over the rock occurs during filtration in both applicant’s case and in the case of Reyka I. Applicant also states that the final product has a clean mouthfeel [0066] which is similar to the “incredibly clean” taste disclosed by Reyka I. Additionally, “How to Judge a Quality Vodka” provides evidence that a slightly alkaline pH (7.5-8.5) of vodka delivers a vodka feel that is softer and a neutral pH (around 7) delivers a clean, smooth taste without unwanted harshness. High quality vodkas are associated with a neutral or slightly alkaline pH and most premium vodkas maintain a pH range of between 7-8. Here, Reyka I discloses a slightly sweet, soft and incredibly clean final product thus, the pH is considered to be at least neutral (pH 7) or higher given the incredibly clean and soft texture reported.
Regarding claim 8, applicant argues that Reyka I does not contain any disclosure of a chemical reaction between vodka and the rocks, much less one that raises pH. As explained in the rejection above, the filtration step where the volcanic rock contacts the distilled spirit disclosed by applicant appears to be the initiation step claimed. No specific chemical reaction is referenced in the instant specification. As explained above, the volcanic rock disclosed may be Icelandic and the volcanic rock to which the distilled sprit in Reyka I is contacted is also Icelandic volcanic rock. There is no disclosure of anything other than the contact with volcanic rock that initiates their interaction, thus Reyka I is seen to meet this limitation. Also as explained above, the exposure to the volcanic rock is expected to have the same consequence of raising the pH given the similarity in the materials and the processes.
Applicant states that when ethanol liquids pass through lava rocks, there is no mechanism for mineral dissolution or chemical reaction. Based upon this statement, it is not clear how the process of applicant works since the filtration disclosed is passing of the ethanol liquid (distilled spirit) through volcanic rocks. It is also noted that in “Locally made Valhalla Vodka uses and Icelandic Filter, the comment is made that the filtering through rock mellows out the drink and that compounds from the rock that are more soluble in alcohol than water are dissolving in the vodka during filtration and raising the pH, resulting in a sweeter vodka. This disclosure is consistent with RU 2208629 discussed above which indicates that during filtration in a column filled with mordenite, the salts that make up mordenite have the ability to exchange ions, transferring ions into the water-alcohol mixture that give it a pleasant taste. Here, RU ‘629 indicates that salts that make up the volcanic rock mordenite transfer ions into the water-alcohol mixture during filtration and result in a pleasant taste. Finally, applicant states in [0071] that certain elements, such as basalt, basalt derivatives, calcium carbonate or limestone, kaolinite, iron and magnesium will at least partially dissolve at room temperatures. In addition, these elements would also raise the PH of the vodka. Thus, based upon applicant’s disclosure that certain elements of volcanic rocks will at least partially dissolve and lead to an increase in pH, it is not unreasonable to expect a similar mechanism to occur in Reyka I.
Applicant states that the observation is made that the pH increases following volcanic rock treatment and that applicant believes that certain factors may contribute to the observed pH increase. The argument is considered, however, these factors are not claimed and there is no distinction between the process disclosed and a reasonable expectation that the process of Reyka I, given the use of the same materials in the same manner disclosed, has been fairly established. There is no evidence in the record to indicate that the claimed product and process and the product and process of Reyka I would be patentably distinct.
The rejection is formulated under 102/103 to better reflect the nature of the rejection under inherency; however, the thrust of the rejection is the same and continues to rely on inherency based upon the process of Reyka I. See MPEP 2112 and 2112.02. Moreover, the range of the claim of original claim 7 was “at least about 7” and the amended claim is “greater than at least about 7” warranting new consideration. Further, claim 8 includes a new limitation of initiating a chemical reaction between the volcanic rock and the distilled product to increase a pH of the distilled product to greater than about 7.0.
Applicant argues that the rejection of claim 13 over Reyka I in view of Vickers does not remedy the above deficiencies. These deficiencies are addressed above.
No argument is found for the 103 rejection of claim 7 over Reyka I in view of McCullough. The subject matter of claim 7 was narrowed and incorporated into claim 1, thus the rejection has been altered to a rejection of claims 1-6.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1793
/Jennifer McNeil/ Primary Examiner, Art Unit 1793
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