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 with traverse of group I, claims 1-7, in the reply filed on 24 December 2025 is acknowledged. The traversal is on the grounds that Wang does not teach a fatty acid ester as claimed. While applicant’s arguments regarding Wang are found persuasive, no unity of invention exists for the groups identified in the restriction requirement as demonstrated by the rejection of the elected claims below.
The requirement is still deemed proper and is therefore made FINAL.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kanayama USPGPub 20170107464 and Hasegawa JP2020162602 (translation provided herewith relied on for reference).
Regarding claims 1- 5, Kanayama teaches a beer taste beverage comprising fatty acids having 8-14 carbon atoms. [0032]
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The contents of individual C8-C14 fatty acids and the total content overlap or encompass the ranges of C8-C18 fatty acids recited in claims 1, 3 and 4. 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)
Kanayama is silent regarding C12-C18 fatty acid ethyl esters.
Hasegawa teaches a beer taste beverage. [0008] The beer taste beverage of Hasegawa is disclosed to comprise fatty acid ethyl esters such as ethyl dodecanoate and ethyl tetradecanoate in order to impart a refreshing flavor. [0014,0016] The fatty acid ethyl esters can be included in a concentration of 0.001 to 300 ppm for each ester. [0018]
Kanayama and Hasegawa are both directed to beer taste beverages. It would have been obvious to one of ordinary skill in the art at the time the application was filed to have included ethyl dodecanoate and ethyl tetradecanoate in the beverage of Kanayama in a proportion of 0.001 to 300 pm each in order to impart a refreshing flavor to the beer taste beverage of Kanayama. The proportion of C12-C18 fatty acid ester in the modification of Kanayama with Hasegawa overlaps with the proportions recited in claims 1 and 5. 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) Therefore, the modification of Kanayama with Hasegawa renders obvious the limitations of claims 1-5.
Regarding claims 6 and 7, Kanayama teaches beer-like levels of alcohol, low-alcohol and non-alcoholic beverages which are interpreted to encompass the alcohol contents recited in claims 6-7. Additionally, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have optimized the amount of alcohol present in the beverage of Kanayama depending on the amount of intoxication the beverage was desired to impart.
Conclusion
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.
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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.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
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