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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claim 8 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/27/2026.
Applicant’s election without traverse of claims 1-7 in the reply filed on 01/27/2026 is acknowledged.
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 1-7 are 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.
Claims 1, 2, 3, and 7 recite concentration of various compounds “in terms of an ethanol concentration at 40 vol%”. This concentration expression is not clear, confusing and is not generally accepted in the art. This concentration expression does not allow to establish the concentration of recited compounds in the final beverage.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto (JP2020031610 A).
Matsumoto (US 20210179342 A1) is relied upon as an English translation Matsumoto JP2020031610 (A).
Klaverstijn (Does a High Phenol Count Actually Mean a Peatier Scotch?) is relied upon as an evidence of the Scotch whiskey being a peated whiskey.
The Whiskey Professor (The truth about peated whisky and phenols) is relied upon as an evidence of peated smoky whisky containing phenols, guiacol and cresol.
Claim 1 is directed to a “whisky highball beverage” comprising:
a heavily peated whisky in which a concentrations of
phenol is 0.1 mg/L or more,
guaiacol is 0.05 mg/L or more, and
o-cresol contained is 0.05 mg/L or more in terms of an ethanol concentration at 40 vol%; and
a non-peated whisky in which a concentrations of
phenol is less than 0.1 mg/L,
guaiacol contained is less than 0.05 mg/L, and
o-cresol contained is less than 0.05 mg/L in terms of the ethanol concentration at 40 vol%,
wherein an ethanol concentration is 4 vol% or less.
The claim is directed to a composition that is characterized by providing two different types of whiskeys (peated and non-peated) and then mixing at least two different types of whiskeys to produce a whiskey blended beverage with reduced alcohol content of 4 vol% or less. It is noted that the steps of providing two different types of whiskeys (peated and non-peated) and then mixing at least two different types of whiskeys are directed to the process of making a beverage. These steps do not further limit the composition as claimed. The instant claim 1 does not recite the concentrations of phenol, guaiacol and o-cresol in the final beverage. The instant claim 1 does not recite the concentrations of peated and non-peated whiskeys in the final composition. Hence the claim could be interpreted as directed to a beverage that contains a blend of whiskeys and additional ingredients so the final alcohol content is 4 vol% or less. The whiskey blend contains phenol, guaiacol and o-cresol. However, the concentrations of these compounds in the final beverage are unknown.
In regard to claim 1, Matsumoto discloses “[a] beverage packed in a package, the beverage comprising a distilled liquor and having an alcohol content of 1 to 20 v/v %” ( [0011]). Matsumoto discloses that “[t]he distilled liquor used in this invention is not limited by its source materials or by its preparation method” ([0026]). Matsumoto discloses that whiskey blend is employed as a distilled liquor that may include various types of whiskeys including Scotch whiskey:
[0027] The term “whiskey” as referred to herein refers to a distilled liquor obtained by saccharifying and fermenting a cereal such as barley, rye or corn with a malt enzyme, followed by distilling the fermented mash. The distilled liquid is generally aged in barrels made of oak or other kinds of wood to give a final product. Examples of whiskeys include, but are not limited to, bourbon, Tennessee whiskey, Scotch whiskey, Irish whiskey, Canadian whiskey, Japanese whiskey, malt whiskey, grain whiskey, corn whiskey, rye whiskey, and/or blended whiskeys made from blends of any of the above whiskeys..
Matsumoto discloses that the final beverage may be provided as carbonated beverage and include carbon dioxide or mixed with carbonated water ([0044]). Matsumoto discloses that the final beverage may further include fruit juice ([0046]), and other various additives such as sweeteners such as sugars and high-intensity sweeteners, acidulants, flavorants, vitamins, pigments, antioxidants, emulsifiers, preservatives, essences, dietary fibers, pH adjustors, thickeners, and quality stabilizers ([0048]).
More specifically in regard to the alcohol content of the final beverage, Matsumoto discloses “[t]he alcohol content of the beverage of the present invention is in the range of from 1 to 20 v/v %, preferably from 1 to 15 v/v %, more preferably from 2 to 10 v/v % ([0043]). Hence the claimed range of “ethanol concentration is 4 vol% or less” overlaps with alcohol content ranges disclosed by Matsumoto.
Further in regard to the concentration recitations, it is noted that:
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) (MPEP 2144.05, II A).
Further, regarding the concentration ranges as examined above, it is noted that 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). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In summary, Matsumoto discloses a beverage that contains a blend of whiskeys and additional ingredients so the final alcohol content is 4 vol% or less. Matsumoto is silent as to the whiskey blend containing phenol, guaiacol and o-cresol.
As evidenced by Klaverstijn, Scotch whiskies are peated whiskies with the higher content of phenols than other types of whiskey. Klaverstijn discloses that “[a]t respectively 100 and 131ppm, these smokiest of Scotch whiskies were a big step up from the usual peat levels for a heavily-peated single malt, which hovers at around 40 or 50ppm”. Klaverstijn discloses that peat was traditionally used in the whisky making process across the whole of Scotland and it was crucial to Scotland’s early distillers in the 19th century. Klaverstijn discloses that”[i]n modern times, these distillers have alternative fuels, but still (in most cases) choose to use peat to give their whisky its traditional flavor”. Klaverstijn discloses that peat is added to the fire during the malt kilning, so peat smoke sticks to the moist malt surface. At this point in whisky production, the phenol levels in the malted barley are measured. Phenols are the chemical compounds within the peat smoke that are responsible for the smoky aromas and flavors that peat heads have come to love and expect. Klaverstijn discloses that measurement of phenolic compounds may refer to the concentration of phenolic compounds either in peated malt or in the final beverage (14.8ppm for Flaughter Scotch whiskey).
Hence, Klaverstijn is relied upon as an evidence of the Scotch whiskey being a peated whiskey.
The Whiskey Professor (The truth about peated whisky and phenols) discloses:
If a distiller wishes to make a smoky whisky, at the start of the kilning process he will light a peat fire and allow it to smoulder beneath the damp barley. Lighting the peat releases a family of compounds grouped together as ‘phenols’ – phenol itself, guiacol, cresol and so on. Oily in nature, they adhere to the surface of the moist barley, helping to scent it.
Hence, The Whiskey Professor is relied upon as a teaching of peated smoky whisky containing phenols, guiacol and cresol.
By suggesting the blend of Scotch whiskey, Matsumoto suggests the use of peated whiskey containing phenols, guiacol and cresol, as evidenced by The Whiskey Professor and Klaverstijn as discussed above.
In regard to claims 2-3 and 4-7, it is noted that the final concentration of phenols, guiacol and cresol would depend on the particular whiskey blend composition and relative amount of Scotch whiskey in the final whiskey blend, and amount of whiskey blend in the final beverage. One of ordinary skill in the art would have been motivate to vary the concentration of scotch whiskey in the final whiskey blend and also final diluted beverage based on the personal preferences of the consumer and desired organoleptic properties of the final beverage (flavor, aroma, etc).
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791