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 .
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, 3, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Fujiwara JP2005013166 (translation provided with the Office action relied on herein for reference).
Regarding claims 1, 15 and 16, Fujiwara teaches a process of making a barley extract comprising:
Roasting barley in a rotary roaster at 100°-250°C (pg. 2)
Immersing the roasted barley in an extracting solvent at 80°C (pg. 2,3)
Recovering the extract (pg. 2)
The roasting temperature and solvent extraction temperature of Fujiwara overlap the values recited in claims 1, 15 and 16. 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)
Fujiwara is silent regarding the heating duration for the roasting step. However, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the roasting time to ensure sufficient roasted flavor development while avoiding allowing the barley to burn. As such, the heating times recited in claims 1, 15 and 16 are merely an obvious variant of the prior art. Therefore, claims 1, 15 and 16 do not recite any patentable distinctions from the prior art.
Regarding claim 3, Fujiwara teaches the barley may be crushed which is interpreted to read on barley grits. (pg. 2)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fujiwara JP2005013166 as applied to claim 1 above in further view of Savory Spice “Examining Baking Extracts: How Are They Made?” https://www.savoryspiceshop.com/blogs/news/examining-extracts?srsltid=AfmBOoq9vKpqDa9V-HpZ0cW8_mw7isEGmSkGif2C5yISZrBUS5i69xuC published online 26 November 2014, retrieved 12 May 2025.
Regarding claim 2, Fujiwara teaches what has been recited above. The solvent for extraction used in Fujiwara is disclosed to comprise ethanol and water. (pg. 2)
Savory Spice teaches regarding extracts “Alcohol is used with water to extract solvents and to keep the essential oils from separating (as oil and water are prone to do). For this same reason, solvents are used to maximize the extraction of flavor compounds that aren’t water-soluble. When looking at many of our extracts you’ll likely see one of the following: propylene glycol or polysorbate.” “Propylene glycol (or PG) is recognized by the FDA as being safe for use in food and is a clear, slightly syrupy solvent that has a bitter and slightly sweet taste but is otherwise flavorless. PG is highly effective in dispersing oil soluble flavor compounds and, because most extracts are added to food in very small amounts, the flavor is rarely perceptible in food.” (pg. 1)
Fujiwara and Savory Spice are both directed towards flavor extracts for food. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have used propylene glycol as the extracting solvent in Fujiwara given that propylene glycol was well known in the extraction arts to be highly effective in dispersing oil soluble flavor compounds and, because most extracts are added to food in very small amounts, the flavor is rarely perceptible in food. Therefore, the obvious modification of Fujiwara with Savory Spice renders obvious claim 3.
Response to Arguments
Applicant's arguments filed 17 November 2025 have been fully considered but they are not persuasive.
Applicant asserts on page 4-5 of the remarks that barley grain as claimed is distinct from malted barley grain as disclosed by Fujiwara. This assertion is not found persuasive as “barley grain” is a genus of which malted barley grain is a species.
Conclusion
THIS ACTION IS MADE FINAL. 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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michele L Jacobson/Primary Examiner, Art Unit 1793