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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15565834, filed on 10/11/2017.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Portman (US 2004/0033292 A1).
Independent claim 1 recites the following limitations:
A sport beverage, produced by:
providing malt and/or one or more unmalted grains;
processing spent grains to produce a mashing liquor comprising proteins;
processing the malt and/or one or more unmalted grains and the mashing liquor to obtain a wort;
fermenting the wort by using a yeast;
adding one or more flavors and/or vitamins to the wort and/or fermented wort; and
(vi) adding NaCl to the wort and/or fermented wort;
wherein the sport beverage comprises:
ethanol at a concentration of less than about 1.2 vol-%;
NaCl;
one or more flavors and/or vitamins,
a protein content of about 5.5 g/L to about 25 g/L; and
a carbohydrate content of about 45 g/L to about 60 g/L.
Claim 1 is a product-by-process claim. Claim 1 recites the following process limitations:
providing malt and/or one or more unmalted grains;
processing spent grains to produce a mashing liquor comprising proteins;
processing the malt and/or one or more unmalted grains and the mashing liquor to obtain a wort;
fermenting the wort by using a yeast;
adding one or more flavors and/or vitamins to the wort and/or fermented wort;
adding NaCl to the wort and/or fermented wort.
In regard to the process limitations recited in the product claim, it is noted that:
"[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)
Further in regard to claim 1, it is noted that:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Therefore, the following limitations are directed to the product:
A sport beverage comprising:
--ethanol at a concentration of less than about 1.2 vol-%;
--NaCl;
--one or more flavors and/or vitamins,
--a protein content of about 5.5 g/L to about 25 g/L; and
--a carbohydrate content of about 45 g/L to about 60 g/L.
It is further noted that the limitation of “ethanol at a concentration of less than about 1.2 vol-%” reads on zero ethanol, i.e. non-alcoholic sport beverage. Hence, claim1 is interpreted as a non-alcoholic sport beverage containing table salt (NaCl, sodium chloride), flavors and/or vitamins, wherein the concentration of protein is about 5.5 g/L to about 25 g/L; and the concentration of carbohydrate is about 45 g/L to about 60 g/L.
In regard to claim 1, Portman discloses a sport drink (i.e. beverage) comprising sodium chloride (NaCl), proteins, carbohydrates, flavors and vitamins (Abstract).
More specifically, Portman discloses:
The nutritional composition for improving muscle performance and extending endurance during exercise includes nutritional agents being carbohydrates, proteins, antioxidant Vitamins E and C, the amino acid arginine, electrolytes, flavoring agents, coloring agents and diluents. Carbohydrates include high and low glycemic sugars selected from the group consisting of aldohexoses, disaccharides and polysaccharides, such sugars being glucose, glucose polymers, dextrose, maltose, maltodextrins, maltotriose, lactose, galactose, sucrose, high fructose corn syrup, beet sugar, cane sugar, and sucanat ketohexoses such sugars being arabinose, ribose, fructose, sorbose, tagatose and sorbitol. Total carbohydrates are in the range of 50.51% to 84.81% (See Table B) (For an alternate range, see Table A.) by weight of the dry nutritional composition, having a preferred percentage of 74.57% (See Table A) by weight of the dry nutritional composition ([0032]).
Hence, Portman discloses sport drink composition comprising proteins, carbohydrates, fermentable and non-fermentable sugars such as maltodextrins, flavors, vitamins ([0032]).
Portman does not disclose the presence of ethanol in the sport beverage. Hence, Portman meets the limitation of “ethanol at a concentration of less than about 1.2 vol-%” which reads on zero ethanol.
In regard to the proteins and protein content as recited in claims 1, 5 and 6, Portman discloses:
One or more protein compounds are used in the forming of the dry nutritional composition. These proteins are used as a source of stimulation of insulin during exercise. Protein sources are selected from the group consisting of calcium caseinate, whey protein concentrate, whey protein isolate, whey protein hydrolyzate, soy protein, casein hydrolyzate, rice protein, wheat protein, corn protein and yeast concentrate. Total proteins are in the overall range of 10.29% to 32.25% (See Table B) (For an alternate range, see Fable A.) by weight of the dry nutritional composition, having a preferred percentage of 18.66% (See Table A) by weight of the dry nutritional composition ([0033]).
One of ordinary skill in the art would have been motivated to employ any protein source absent any clear evidence to the contrary.
In regard to the recitation of NaCl (sodium chloride), Portman discloses that “[t]he dry nutritional composition also includes electrolytes for replenishing electrolytes lost during exercise and for facilitating intestinal reabsorption of fluid” (Abstract). Portman discloses sodium chloride as an electrolyte ([0036]).
In regard to the recitation of a sport drink, Portman discloses:
Sports drink composition for enhancing glucose uptake into the muscle and extending endurance during physical exercise (Title).
[0002] The present invention relates to a nutritional composition for optimizing muscle performance and extending endurance during exercise and preventing free radical buildup and muscle damage after exercise. More particularly, the nutritional composition includes carbohydrates and protein in a 4 to 1 ratio to stimulate insulin and glucose uptake during exercise, arginine for stimulating the release of insulin, Vitamins C and E for reducing free radical buildup and electrolytes for replenishing electrolytes and water lost during exercise.
In regard to the recitation of the beverage, Portman discloses that “[t]ypically, the dry nutritional composition, as shown in Tables A and B, is mixed with water, such that approximately 36 grams of the dry nutritional composition is dissolved in twelve (12) ounces of water (340.2 grams) in order to provide the nutritional drink composition ([0039]).
In regard to the concentration of beverage ingredients, Portman discloses:
Total carbohydrates are in the overall range of 4.06% to 10.33% by weight of the nutritional drink composition having a preferred range of 5.76% to 7.59% by weight of the nutritional drink composition ([0040]).
Total proteins are in the overall range of 1.37% to 2.19% by weight of the nutritional drink composition having a preferred range of 1.42% to 1.92% by weight of the nutritional drink composition ([0041]).
The first vitamin compound used is Vitamin C in the overall range of 0.01% to 0.11% by weight of the liquid nutritional composition having a preferred range of 0.03% to 0.04% by weight of the liquid nutritional composition. A second vitamin compound used is Vitamin E in the overall range of 0.01% to 0.11% by weight of the liquid nutritional composition having a preferred range of 0.03% to 0.04% by weight of the liquid nutritional composition ([0042]).
[0043] A first electrolyte ion being sodium (Na.sup.+) compounds are in the overall range of 0.03% to 0.08% by weight of the liquid nutritional composition having a preferred range of 0.04% to 0.05% by weight of the liquid nutritional composition ([0043]).
[0044] The flavor component is in the overall range of 0.32% to 0.55% by weight of the liquid nutritional composition having a preferred range of 0.31% to 0.42% by weight of the liquid nutritional composition.
[0045] The colorant component is in the overall range of 0.01% to 0.28% by weight of the liquid nutritional composition having a preferred range of 0.001% to 0.001% by weight of the liquid nutritional composition.
Further, regarding the composition 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
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). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Scherl, 156 F.2d 72, 74-75 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Swenson, 132 F.2d 1020, 1022 (CCPA 1942); In re Bergen, 120 F.2d 329, 332 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937); In re Dreyfus, 73 F.2d 931, 934 (CCPA 1934); In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014); Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002).
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).
In regard to claim 2, Portman discloses that beverage comprises flavors and vitamins ([0037], [0042]). In regard to the specific flavors, Portman discloses:
The flavor component is selected from the group consisting of water soluble natural or artificial extracts that include apple, banana, cherry, cinnamon, cranberry, grape, honeydew, honey, kiwi, lemon, lime, orange, peach, peppermint, pineapple, raspberry, tangerine, watermelon., wild cherry, and equivalents and combinations thereof... ([0037]).
In regard to the specific vitamis, Portman discloses Vitamin E and Vitamin C (Abstract, [0032], [0035], [0042], Table A, Table B, Table C, Claims 2, 3, 11, 12, 20-22).
Claims 3 and 4 require the presence of non-fermentable sugars. Portman discloses sport drink composition comprising proteins, carbohydrates, fermentable and non-fermentable sugars such as maltodextrins, flavors, vitamins ([0032]). Portman discloses non-fermentable sugars such as maltodextrin. Hence, Portman meets the limitations of claims 3 and 4.
Claims 7-19 are directed to the process for the production of the beverage.
In regard to the process limitations recited in the product claims 7-19, it is noted that:
"[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)
Further in regard to claims 7-19, it is noted that:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
In regard to claim 19, it is noted that the beverage is a liquid that has to be contained in a container. It would have been obvious to place the beverage in a bottle as a conventional container for beverages.
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791
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