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 § 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 1-15 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.
Regarding claim 1, it is not clear if the “retentate material” is different than the retentate. The second step in claim 1 recites “separating the mash into a fermentable work and a retentate”. The third step then recites “processing a retentate material into a slurry”. It is not clear if or how the retentate material is different than the retentate as there is no step in between the second and third steps reciting how the retentate material is provided or where it comes from. The instant specification appears to state that an optional step can be performed on the retentate to make a retentate material, however, the claimed steps do not any such processing step and therefore it is not clear how if the retentate and retentate material are the same or are different.
Regarding claims 10-12 and 14, the phrase "preferably" renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-9, 13 and 15 are included as they depend from rejected claim 1.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 7, 9-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beukel et al. (WO 2021/078996 A1, April 29, 2021).
Regarding claim 1, Beukel discloses a method of combined product of beer and a non-fermented beverage from grain material, comprising
processing the grain material into a mash (page 6 lines 1-8),
separating the mash into a fermentable wort and a BSG, corresponding to applicant’s claimed retentate (page 6 lines 9-20),
processing a retentate material into a slurry, wherein the retentate material comprises at least a portion of the retentate (e.g. BSG comprises a high amount of water, about 85%, page 6 lines 15-25),
separating the slurry into a liquid component and a solid component (page 6 line 24 – page 7 lines 35),
processing the liquid component into the non-fermented beverage, thus inherently outputting the non-fermented beverage (page 12 lines 16-31; Example 3), and
processing the fermentable wort into the beer, thus inherently outputting the beer (page 6 lines 9-12).
Regarding claims 2-3, Beukel further teaches that the raw BGS, or retentate material can be diluted with water, wherein the water is added and mixed with the BSG (Page 21, Example 2). Thus, Beukel teaches that processing the retentate material is initiated by adding water to the retentate material.
Regarding claim 7, Beukel teaches that the retentate material is obtained without active processing for modification of the retentate (See Examples, pages 6-7).
Regarding claims 9-10, Beukel teaches that the retentate and the retentate material can be the same material (e.g. as retentate does not undergo any processing) and therefore they would have approximately the same relative water content of 85% (page 6), thus falling within the claimed range of 60-90%.
Regarding claims 13-14, Beukel teaches that the retentate and the retentate material can be the same material (e.g. as retentate does not undergo any processing) and therefore they would have approximately the same temperature (pages 6-7), wherein the temperature difference would be 0, thus falling within the claimed range of less than 15 C.
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.
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 4-6, 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Beukel et al. (WO 2021/078996 A1, April 29, 2021) as applied to claim 1 above.
Regarding claims 4-5, Beukel teaches the processing the retentate material occurs after separating the mash into the wort and retentate, but fails to specifically teach the processing be initiated within a predefined maximum time from separating the mash, wherein the predefined maximum time is less than 8, 6, 4, or 2 hours.
However, Beukel teaches that unwanted microorganisms could be present in the BSG, which leads to decreased storage time (page 14 lines 1-20), and therefore it would have been obvious to one of ordinary skill in the art to initiate processing of the retentate within a predefined maximum time in order to prevent spoilage of the material.
As stated in MPEP 2144.05:Generally, differences in time will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such time is critical. "Where 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)
Regarding claim 6, with respect to the initiation of processing the retentate material to outputting the non-fermented beverage being equal to or less than the predefined maximum time, for the same reasons stated above with respect to claims 4-5, Beukel teaches that unwanted microorganisms could be present in the BSG, which leads to decreased storage time (page 14 lines 1-20), and therefore it would have been obvious to one of ordinary skill in the art to output the non-fermented beverage within the predefined maximum time in order to prevent spoilage of the beverage.
Regarding claim 8, as stated above with respect to claim 1, Beukel teaches fermenting wort to produce a beer and outputting a non-fermented beverage. While Beukel fails to specifically teach that the non-fermented beverage is output before processing the fermentable wort, it would have been obvious to output the non-fermented beverage before the beer as the fermentation process is known to take a longer amount of time when provided a non-fermented beverage. Additionally, as stated above, Beukel teaches that unwanted microorganisms could be present in the BSG, which leads to decreased storage time (page 14 lines 1-20), and therefore it would have been obvious to one of ordinary skill in the art to output the non-fermented beverage before processing of the fermentable wort is completed in order to prevent spoilage of the beverage.
Regarding claim 15, Beukel teaches performing an enzymatic treatment mash to deactivate the enzymatic activity (page 6 line 8). While Beukel fails to specifically teach performing such treatment on the slurry or liquid component after separating the mash, it would have been obvious to one of ordinary skill in the art to perform such step at any point before forming the beverage in order to ensure the enzymatic activity is deactivated. This is merely a change in order of processing steps and obvious to one of ordinary skill in the art absent new or unexpected results (MPEP 2144.04). In the instant case, there is no new of unexpected result as Beukel already teaches a step of deactivating enzymatic activity.
Beukel further teaches mixing the liquid component with different ingredients that can include sunflower seeds, which are known in the art to comprise sunflower oil (e.g. vegetable oil) (Example 9). Beukel teaches that the liquid component is blended with the sunflower seeds and therefore the vegetable oil is considered to be dispersed evenly throughout.
Beukel further teaches pasteurizing or sterilizing the non-fermented beverage (page 15).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Beukel et al. (WO 2021/078996 A1, April 29, 2021) as applied to claim 1 above, and further in view of Brown et al. (US 2019/0223457 A1; July 25, 2019).
Regarding claim 11, as stated above, Beukel teaches that the retentate is formed from separating the mash. Beukel, however, fails to teach the temperature of the retentate after separating from the mash.
Brown discloses a process for using BSG from mash, wherein the mash has a temperature of 170 F, or 77 C ([0116]), and the spent grain after separated can be at a temperature of greater than 100 F, or greater than 38 C ([0023]), which overlaps the claimed range of 55-90C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
As Brown teaches that such temperatures are suitable for mash and spent grain separated from mash, it would have been obvious for the retentate of Beukel to be at a similar temperature as taught by Brown. This would ensure the retentate is at a temperature suitable for further processing. As stated in MPEP 2144.05:Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. "Where 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)
Regarding claim 12, Beukel teaches that the retentate and the retentate material can be the same material (e.g. as retentate does not undergo any processing) and therefore the retentate material would have approximately the same temperature as the retentate (pages 6-7), a temperature of greater than 100 F, or greater than 38 C, as taught by Brown ([0023]), which overlaps the claimed range of 40-99C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
As Brown teaches that such temperatures are suitable for mash and spent grain separated from mash, it would have been obvious for the retentate material of Beukel to be at a similar temperature as taught by Brown. This would ensure the retentate is at a temperature suitable for further processing. As stated in MPEP 2144.05:Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. "Where 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)
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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