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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 15/951,054 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In the independent claims, the limitation “wherein the wood piece is used for in-bottle finishing of the aged distilled spirit and is rested in a non-alcoholic liquid that includes coffee before the placing of the wood piece” is finds no support in the prior filed application. Specifically, the limitation that the resting liquid “non-alcoholic” and “includes coffee”. Thus, all the claims do not receive the benefit of the date of the prior filed application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 already claims that the non-alcoholic beverage includes coffee and therefore claim 9 does not further limit the invention by reciting that the non-alcoholic beverage is coffee. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-13, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Giildenzopf (U.S. Patent Application Publication 2019/ 0062679; herein after “Giildenzopf ‘679”) in view of DeCaro (U.S. Patent Application Publication 2018/0057780).
Regarding claim 1, Giildenzopf ‘679 teaches a method of producing a finished, aged distilled spirit, comprising:
placing an aged distilled spirit in a bottle (Giildenzopf ‘679, Abstract, (1) placing an aged distilled spirit in a bottle);
placing a wood piece in the bottle (Abstract, (2)placing a wood piece in the bottle”), wherein the wood piece is used for in-bottle finishing of the aged distilled spirit and is rested in a before the placing of the wood piece (Giildenzopf ‘679, ¶0026, “Before the spire is placed in the bottle of aged spirit, depending on the taste profile that is desired, the toasted or charred, wood spire may rest in a separate spirit, such as rum, brandy/wine or beer, to add yet another level of complexity to the final finished spirit”); and
sealing the bottle, having located within the bottle both the aged distilled spirit and the wood piece (Giildenzopf ‘679, Abstract, “sealing the bottle, having located within the bottle both the aged distilled spirit and the wood piece).
Giildenzopf ‘679, however, does not teach wherein the wood is rested in a “non-alcoholic liquid that includes coffee” (Giildenzopf ‘679 discloses that the wood may be rested within another spirit). However, DeCaro teaches that a piece of wood used for aging may be used with a non-alcoholic liquid which includes coffee (DeCaro, ¶0041, the raw liquid may be coffee, and ¶0039, “liquid soaked wood materials” may be returned or used to age spirits/beverages.. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Giildenzopf ‘679 with the teachings of DeCaro, to rest the wood in non-alcoholic liquids, which includes coffee, in order to age the target beverage and obtain a more desirable flavor profile for the spirit, according to the preferences of the operator.
Regarding claim 2, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method comprising placing a label on the bottle, wherein the label corresponds to a flavor profile associated with the non- alcoholic liquid and the wood piece that is used for the in-bottle finishing (Giildenzopf ‘679, claim 2, “the label corresponds to a flavor profile associated with the wood piece”, which had been soaked in the liquid, so the flavor profile, including the coffee, would also be described ).
Regarding claim 3, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 2, as above, and further discloses (Giildenzopf ‘679, claim 3) a method wherein the selected flavor profile is based on a type of wood, a toast level, and a char level.
Regarding claim 4, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 2, as above, and further teaches (Giildenzopf ‘679, claim 4) a method comprising capping the bottle with a lid before the sealing and after the placing of the aged distilled spirit and the wood piece.
Regarding claim 5, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 4, as above, and further discloses a method (Giildenzopf ‘679, claim 5) comprising shipping the bottle for commercial distribution after the sealing.
Regarding claim 6, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method (Giildenzopf ‘679, claim 6) comprising resting the bottle after the sealing for a designated amount of time.
Regarding claim 7, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 6, as above, and further teaches a method (Giildenzopf ‘679, claim 7) wherein the designated amount of time corresponds to exhaustion of the wood piece within the bottle of the aged distilled spirit.
Regarding claim 8, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method (Giildenzopf ‘679, claim 8) wherein the wood piece is a spire.
Regarding claim 9, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further discloses a method wherein the non-alcoholic liquid is coffee (This is already in the combination of Giildenzopf ‘679 in view of DeCaro, DeCaro ¶42, coffee is a liquid in which the wood is soaked).
Regarding claim 10, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method (Giildenzopf ‘679, claim 10) wherein the wood piece is a first wood piece and the method further comprises placing a second wood piece in the bottle.
Regarding claim 11, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method wherein the aged distilled spirit is bourbon (Giildenzopf ‘679, claim 11, “bourbon”).
Regarding claim 12, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method wherein the in-bottle finishing is a function of the wood piece, volume of the aged distilled spirit in the bottle, and a resting time of the bottle after the sealing (Giildenzopf ‘679, claim 12).
Regarding claim 13, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a teaches (Giildenzopf ‘679, claim 13) wherein the placing the aged distilled spirit, the placing the wood piece, and the sealing are performed for multiple bottles.
Claims 14-20 (Cancelled)
Regarding claim 21, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further discloses a method comprising selecting (Giildenzopf ‘679, ¶0021, selected for particular taste profile”) the wood piece and the non-alcoholic liquid for a flavor profile that is based on a combination of a type of wood of the wood piece, a toast level of the wood piece, a char level of the wood piece, and the non-alcoholic liquid (these are all in ¶0021).
Regarding claim 22, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 1, as above, and further teaches a method wherein the placing the aged distilled spirit, the placing the wood piece, and the sealing the bottle (Giildenzopf ‘679, claim 14, the placing and sealing steps are in this claim) are performed by a manufacturer for commercial distribution of the bottle (Giildenzopf ‘679, claim 18, this aspect is in this claim of the prior art).
Regarding claim 23, Giildenzopf ‘679 discloses a method of manufacturing a spirit, comprising:
placing an aged distilled spirit in bottles (Giildenzopf ‘679, Abstract, (1) placing an aged distilled spirit in a bottle);
obtaining wood pieces that have been rested in a (Giildenzopf ‘679, ¶0024)
placing at least one of the wood pieces in each of the bottles having the aged distilled spirit (Giildenzopf ‘679, Abstract, (2)placing a wood piece in the bottle”); and
sealing the bottles (Giildenzopf ‘679, at least ¶0014, “in each”), having located in each of the bottles at least one of the wood pieces and the aged distilled spirit.
Giildenzopf ‘679, however, does not teach wherein the wood is rested in a “non-alcoholic liquid that includes coffee” (Giildenzopf ‘679 discloses that the wood may be rested within another spirit). Giildenzopf ‘679 does teach that doing different things to the wood, including resting it in different liquids, can lead to different flavor profiles (Giildenzopf ‘679, ¶¶26-27) However, DeCaro teaches that a piece of wood used for aging may be used with a non-alcoholic liquid which includes coffee (DeCaro, ¶0041, the raw liquid may be coffee, and ¶0039, “liquid soaked wood materials” may be returned or used to age spirits/beverages.. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Giildenzopf ‘679 with the teachings of DeCaro, to rest the wood in non-alcoholic liquids, which includes coffee, in order to age the target beverage and obtain a more desirable flavor profile for the spirit, according to the preferences of the operator.
Regarding claim 24, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 23, as above, and further teaches a method wherein the aged distilled spirit is whiskey (Giildenzopf ‘679, claim 17, “wherein the distilled spirit is whiskey”).
Regarding claim 25, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 23, as above, and further discloses a method ((Giildenzopf ‘679, ¶¶0003,0012 “aged spirit is rum”) wherein the aged distilled spirit is rum.
Regarding claim 26, Giildenzopf ‘679 discloses a method of commercially distributing bottles of an aged distilled spirit that use in-bottle finishing (Giildenzopf ‘679, claim 18, “commercial distribution”), comprising: placing an aged distilled spirit in bottles (Giildenzopf ‘679, ¶0014, bottles);
placing at least one wood piece in each of the bottles having the aged distilled spirit (¶0014, in each bottle),
wherein the at least one wood piece has been rested in a ((Giildenzopf ‘679, ¶0024));
sealing the bottles with the at least one wood piece and the aged distilled spirit; and shipping the bottles for commercial distribution after the sealing (Giildenzopf ‘679, claim 5).
Giildenzopf ‘679, however, does not teach wherein the wood is rested in a “non-alcoholic liquid that includes coffee” (Giildenzopf ‘679 discloses that the wood may be rested within another spirit). Giildenzopf ‘679 does teach that doing different things to the wood, including resting it in different liquids, can lead to different flavor profiles (Giildenzopf ‘679, ¶¶26-27) However, DeCaro teaches that a piece of wood used for aging may be used with a non-alcoholic liquid which includes coffee (DeCaro, ¶0041, the raw liquid may be coffee, and ¶0039, “liquid soaked wood materials” may be returned or used to age spirits/beverages). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, to modify Giildenzopf ‘679 with the teachings of DeCaro, to rest the wood in non-alcoholic liquids, which includes coffee, in order to age the target beverage and obtain a more desirable flavor profile for the spirit, according to the preferences of the operator.
Regarding claim 27, Giildenzopf ‘679 in view of DeCaro teaches all the limitations of claim 26, as above, and further discloses a method ((Giildenzopf ‘679, ¶0003, “whiskey, bourbon, scotch, and rum) wherein the aged distilled spirit is whiskey, bourbon, scotch, or rum.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached form PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE H SAMUELS whose telephone number is (571)272-2683. The examiner can normally be reached 9AM-5PM M-F.
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/LAWRENCE H SAMUELS/Examiner, Art Unit 3761
/IBRAHIME A ABRAHAM/Supervisory Patent Examiner, Art Unit 3761
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