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 1-2, 4-13 are pending and under consideration.
Claims 14-15 remain withdrawn.
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 1-2 and 4-13 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.
Independent claim 1 recites an alcohol concentration of less than 1.0 v/v% but also recites that the low-alcohol beverage contains alcohol derived from gin in an amount of 0.1 to 2.5% as converted to 100% of alcohol. It is not clear whether the alcohol derived from gin in an amount of 0.1 to 2.5% as converted to 100% of alcohol is in addition to the alcohol concentration OR represents a portion of the overall concentration.
The claim is interpreted as meaning that “the alcohol derived from gin in an amount of 0.1 to 2.5% as converted to 100% of alcohol” is a portion of the overall concentration.
Claims 2 and 4-13 are rejected for being dependent upon or relying on 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.
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.
Claims 1-2, 4-13 are rejected under 35 USC 103 as obvious over JP-659922 (KONA) (see IDS of 8/24/2023).
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KONA teaches a beverage having an alcohol content of less than 3.0% [0002]. In [0053] a citrus flavored (i.e., lemon) beverage is produced. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
The phrase “gin converted to 100% of alcohol” is a product by process recitation. The conversion process results in “100% of alcohol” with no other ingredients from the gin being carried over. Thus, the claim is interpreted as an alcohol obtained in any manner satisfies the recitations of the claim. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.).
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KONA teaches that sugar is added as a sweetener with a degree of sweetness of 0 to 18 and (e.g., a sweetness degree of 2 equals a 2% aqueous solution, which also would be the same as 2 g/100ml = 2%) [0015]. In [0052], a lemon flavored beverage is produced with a sweetness of 2.
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As to claims 4-6, the alcoholic beverage contains isobutyl alcohol (i.e., 2-methyl-1-propanol) [0044]. As to the amount of aliphatic alcohol, it is discussed that the isobutyl alcohol can be within the range of 0 to 200 ppm [0078]. As the claimed range falls within this range, it would have been obvious to provide isobutyl alcohol within the claimed amounts. Applicant has chosen to use parameters that cannot be measured by the Office, for the purpose of prior art comparison, because the office is not equipped to manufacture prior art products and compare them for patentability. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, as a prima facia case of obviousness has been properly established, the burden is shifted to the applicant to show that the prior art product is different.
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As to claim 7, the beverage can contain a fruit-infused liquor such as brandy [0023]. In [0035], it is taught that citrus flavors such as orange and grapefruit are desirable. Thus, it would have been obvious to provide a citrus infused brandy/distilled liquor.
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As to claim 8, [0034] teaches that the beverage “may” contain fruit juice. Thus, the presence of fruit juice is optional. Thus, it would have been obvious to provide a beverage without fruit juice.
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In [0008], KONA teaches a high-sweetness sweeteners are optional. Thus, it would have been obvious to provide a beverage without a high-sweetness sweetener.
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[0020] of KONA teaches that the acidity is typically 0.05-1.00%. The claimed range is 0.20 g / l = 0.2%. Thus, the ranges overlap.
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KONA teaches the beverage can contain carbon dioxide [0039].
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KONA teaches in [0039] that gas pressure is preferably 0 to 3.5 kgf/cm2. KONA also teaches that the amount of carbon dioxide can be adjusted. This, it would have been obvious to one skilled in the art to vary the amount of carbon dioxide based on the desired level of carbonation.
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In [0048] of KONA, the beverage is a packaged beverage.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
The applicant argues that the limitation to "1.0 v/v% or more" in the primary claim of KONA serves as a "teaching away" from an alcohol concentration of less than 1.0 v/v%.
However, KONA teaches a beverage having an alcohol content of less than 3.0% [0002]. Thus, the claimed range falls within that claimed. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
It is also argued that in Tables 3 and 4 of the present specification, the specific combination of an alcohol concentration of less than 1.0 v/v% and the defined range of gin-derived alcohol (0.1 to 2.5 v/v% as converted to 100% alcohol) produces a significant improvement in "liquor-like complexity and flavor".
However, Table 3 and 4 do not exhibit unexpected results and Applicant’s arguments are not commensurate in scope with the claims. The samples in Table 3 and 4 are all acidified and carbonated (see present specification, pgs. 24 and 26). The broadest claim, claim 1, does not recite these features. The samples of Table 3 also do not include a citrus flavor and only show results for 40 g/L of sucrose. While the samples of Table 4 do include a lemon-infused distilled liquor, the samples are all limited to the lemon-infused distilled liquor in an amount of 0.1 ml. Moreover, Table 4 also only show results for 40 g/L of sucrose. None of the claims recite these features in combination and there are no samples that demonstrate unexpected results given the breadth of the claims.
It is also argued that claims 2 and 4-13 are allowable for the reasons claim 1 is allowable.
However, the rejection relying on KONA is proper for the reasons noted above.
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 PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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