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
Applicant’s election without traverse of Group II (claims 28-31, 34, and 37-38) in the reply filed on 09 January 2026 is acknowledged.
Claim Rejections - 35 USC § 103
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.
Claims 28, 31, 34, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Eads (“Beer marketed as ‘post-workout’ beverage”), Garonzik (US 2010/0285200 A1), and Sherwood et al. (herein referred to as Sherwood, US 7906160 B2)
With regard to Claim 28, Eads teaches an alcohol-free beer with an alcohol content of 0.5% abv (page 2) where the drink is “protein-packed (page 2).
However, Eads is silent to the type of protein within the beverage
Garonzik teaches a beer which contains hydrolyzed whey protein in an amount of about 2% ([0012], Claim 1, 7g whey protein per 354mL = ~2%). Garonzik teaches the amount of whey protein added to the beverage product should be sufficient to have a meaningful nutritive or physiological effect and is not merely added to improve or otherwise alter the flavor profile of physical characteristics of the beverage ([0022]). Garonzik teaches the whey protein preferably does not substantially coagulate or precipitate from the beverage product during storage or transportation at room temperature or while refrigerated ([0022]). Thus, Garonzik reads such that the beverage does not substantially contain coagulated matter. Garonzik also teaches the coagulation of the whey protein is directly a result of the pH of the beverage ([0013]). Therefore, one with ordinary skill in the art, through routine experimentation, would achieve the desired amount of coagulation in the beverage including through the instantly claimed range of less than 0.1% (w/v). See MPEP 2144.05(II) 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)
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Eads in view of Garonzik to include hydrolyzed whey protein in the beverage to sufficiently have a meaningful nutritive or physiological effect on the subject consuming the beverage.
Continuing, Garonzik is silent to the degree of hydrolysis.
Sherwood teaches an improved protein beverage/drink composition with a relatively high protein content, ranging from about 0.01% by weight to about 15% by weight (abstract). Sherwood teaches using whey protein hydrolysate and specifically that not all hydrolyzed whey proteins may behave alike in a food formulation, and thus one hydrolyzed whey protein may not be interchange able with another. The functional and biological properties of whey protein hydrolysates may vary depending upon factors, such as degree of hydrolysis (Col 3, lines 6-23).
Therefore, it would have been obvious to one with ordinary skill in the art to modify the combination of Eads and Garonzik to view of Sherwood to utilize a hydrolyzed whey protein with the desired degree of hydrolysis to achieve the functional and biological properties of the whey protein which is desired for the final beverage product.
With regard to Claim 31, The examiner would like to note that this claim is a “product-by-process” claim which is limited by and defined by the process. However the patentability is still determined based on the product itself. In this case, the product is the same as what is taught in the previous are Eads in view of Garonzik and Sherwood. Specifically, the limitations presented in steps (d) and (e) are substantially identical to the product claimed in Claim 28 (see rejection above). Therefore, the claim is rejected because the product is identical to the product in claim 28 which is rejected by Eads in view of Garonzik and Sherwood and the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See MPEP 2113(I) "[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).
With regard to Claims 34 and 37, Eads is silent to the type and amount of protein within the beverage.
Garonzik teaches a beer which contains hydrolyzed whey protein in an amount of about 2% ([0012], Claim 1, 7g whey protein per 354mL = ~2%). Garonzik teaches the amount of whey protein added to the beverage product should be sufficient to have a meaningful nutritive or physiological effect and is not merely added to improve or otherwise alter the flavor profile of physical characteristics of the beverage ([0022]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Eads to include hydrolyzed whey protein in the beverage in the amount taught by Garonzik to have a meaningful nutritive or physiological effect on the subject consuming the beverage.
Claims 29-30 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Eads (“Beer marketed as ‘post-workout’ beverage”), Garonzik (US 2010/0285200 A1), Sherwood (US 7906160 B2), and Vanderhaegen (EP 2385100 A1).
With regard to Claim 29 and 38, Eads is silent to the beer containing maltose and maltotriose.
Vanderhaegen teaches an alcohol free or low alcohol beer (abstract). Vanderhaegen teaches the beer contains maltose and maltotriose ([0028]) which give the beer a strongly sweet taste.
It would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Eads to include maltose and maltotriose as taught by Vanderhaegen to give the beer a strongly sweet taste. It would have been obvious to one with ordinary skill in the art to modify the amount of maltose and maltotriose in the beer to achieve the desired sweet taste. See MPEP 2144.05(II) 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)
With regard to Claim 30, Eads is silent to the beer further comprising higher dextrins.
Vanderhaegen teaches that the higher content in dextrins is responsible for less Maillard reactions during the boiling step ([0022]). Vanderhaegen teaches the Maillard reaction forms a complex mixture of poorly characterized molecules responsible for a range of odors and flavor ([002]). Vanderhaegen teaches the dextrins are high molecular weight dextrin ([0028]) and therefore reads on the claim limitation of “higher dextrins”.
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filing date of the claimed invention to modify Eads to include the dextrins taught by Vanderhaegen to reduce the Maillard reactions and as a result reduced the amount of complex mixture of poorly characterized molecules responsible for a range of odors and flavor that are in the beer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARLA I DIVIESTI whose telephone number is (571)270-0787. The examiner can normally be reached Monday-Friday 7am-3pm (MST).
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/K.I.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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