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 § 102/103
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 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.
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.
Claims 37-40 and 42-51 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sheppard et al. (WO 2016/187021 A1; Nov. 24, 2016; using US equivalent US 2018/0119074 A1; May 3, 2018).
Regarding claim 37, Sheppard discloses a yeast strain from the genus Lachancea used to produce a yeast-fermented beverage with a low pH and a sour taste without the use of lactic acid producing bacteria ([0011], [0066], [0070], [0074], [0091]. [0169]).
Sheppard further teaches that the Lachancea yeast strain does not grown on lactose (See Table 2, negative for “Type Strain”).
With respect to the kit comprising instruction materials comprising instructions for producing a yeast-fermented beverage using the yeast strain, the examiner notes that the claimed instructional materials are merely printed matter with no functional relationship to the product. As stated in MPEP 2111.05(I)(B), in a kit containing a set of chemicals and a printed set of instructions for using the chemicals, the instructions are not related to that particular set of chemicals. In re Ngai, 367 F.3d at 1339, 70 USPQ2d at 1864. In the instant case, the claimed instructional materials are not specifically related to the products in the kits. Therefore, the instructional materials are not given patentable weight as not functional relationship exists. Sheppard therefore anticipates the claimed kit comprising the yeast strain.
Alternatively, it would have been obvious to have included a set of instructions for making the yeast-fermented beverage of Sheppard.
Regarding claim 38, Sheppard teaches that the method for producing the yeast-fermented beverage comprises ingredients selected from wort, malt, or grain selected from barley, rye, wheat, corn, rice, or sorghum, at least one additional yeast strain that can be Saccharomyces cerevisiae and/or Saccharomyces pastorianus ([0058]), one or more sugar adjuncts, and one or more variety of hops ([0054], [0067], [0068]), which meets a kit further comprising one or more of the claimed ingredients.
Regarding claim 39, Sheppard teaches that the yeast strain is able to produce a yeast-fermented beverage with a pH of 3.9 to 4.1 ([0096]), thus falling within the claimed range of 3.3 to 4.2, without the use of lactic acid producing bacteria.
Regarding claim 40, Sheppard teaches that the yeast-fermented beverage is beer ([0096]).
Regarding claim 42, Sheppard teaches that the yeast strain is able to produce a yeast-fermented beverage with a pH of 3.9 to 4.1 ([0096]), thus falling within the claimed range of 3.3 to 4.2.
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, where the yeast strain is used to produce a yeast-fermented beverage with a pH of 3.9 to 4.1 ([0096])
Regarding claims 43-45, Sheppard teaches fermenting a wort with the yeast strain in the absence of any acid producing bacteria, including lactic acid producing bacteria, including bacteria belonging to genera Lactobacillus or Pediococcus ([0070], [0091], [0169]).
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally, it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, where the wort is fermented with the yeast in the absence of any acid producing bacteria, including lactic acid producing bacteria, including bacteria belonging to genera Lactobacillus or Pediococcus ([0070], [0091], [0169]).
Regarding claim 46, Sheppard teaches fermenting a wort comprising malt derived from barley with the yeast strain of claim 37 ([0091]).
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally, it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, including fermenting a wort comprising malt derived from barley ([0091]).
Regarding claim 47, Sheppard further teaches fermenting a wort with the yeast of claim 37 in the presence of at least one additional yeast strain that can be Saccharomyces cerevisiae and/or Saccharomyces pastorianus ([0058]).
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally, it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, including fermenting a wort with the yeast of claim 37 in the presence of at least one additional yeast strain that can be Saccharomyces cerevisiae and/or Saccharomyces pastorianus ([0058]).
Regarding claims 48-49, Sheppard teaches that the wort further comprises a hops that can be Amarillo, Bravo, Calypso, Centennial, Glacier, Greenburg, Nugget, Serling, Hallertau, Tetnanger, Saaz, Cascade, Tomahawk, Fuggles, Tillicum, Zythus, Admiral, Phoenix, Herald, Hallertauer, Magnum, Perle, Tettnang, Spalt, Topaz, Motueka, Pacifica, Aramis, Junga, or Sladek Sorachi Ace ([0068], [0069], [0091]).
Regarding claims 50-51, Sheppard teaches that the brewing process produces lactic acid and not that lactic acid is added or used in the brewing process ([0079]). Therefore, the process of Sheppard does not use lactic acid while producing a yeast-fermented beverage, including not adding lactic acid to a wort, before, during or after fermentation.
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally, it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, including fermenting without the addition of lactic acid ([0079]).
Claim 41 is rejected under 35 U.S.C. 103 as obvious over Sheppard et al. (WO 2016/187021 A1; Nov. 24, 2016; using US equivalent US 2018/0119074 A1; May 3, 2018) as applied to claim 41 above.
Regarding claim 41, Sheppard teaches that the yeast strain of 37 is used to ferment a wort and able to reduce the pH of the wort to 3.47 in about 5 days without the use of acid producing bacteria (Table 31), which is considered to overlap “about 3.5”, or is close enough to 3.5 that is would be the same. 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)
Additionally, it is apparent, however, that the instantly claimed amount of 3.5 and that taught by Sheppard are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 3.47 disclosed by Sheppard and the amount disclosed in the present claims, it therefore would have been obvious to one of ordinary skill in the art that the amount of 3.5 disclosed in the present claims is but an obvious variant of the amounts disclosed in Sheppard, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
As stated above with respect to claim 37, the instructional materials are printed matter and not given patentable weight.
Additionally, it would have been obvious to include a set of instructions to make the yeast-fermented beverage of Sheppard, wherein the yeast is able to reduce the pH of the wort to about 3.5 in about 5 days without the use of acid producing bacteria.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 37-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10-19 of U.S. Patent No. 12,054,696 B2 in view of Sheppard et al. (WO 2016/187021 A1; Nov. 24, 2016; using US equivalent US 2018/0119074 A1; May 3, 2018).
Although the claims at issue are not identical, they are not patentably distinct from each other because both make claim to a kit comprising a yeast strain from the genus Lachancea and instructional materials comprising instructions for producing a yeast-fermented beverage. Additionally, both make claim to a low pH, yeast-fermented beverage having a pH of about 3.3 to 4.2, wherein the yeast-fermented beverage is a beer and made without the use of acid producing bacteria. Both also disclose using the same additional ingredients in the preparation of the yeast-fermented beverage.
While the ‘696 patent does not claim a sour taste or that the yeast strain does not grow on lactose, Sheppard renders such limitations obvious as Sheppard teaches a low pH yeast-fermented beverage produced using a yeast strain from the genus Lachance, wherein the beverage has a sour taste and does not grow on lactose (([0011], [0066], [0070], [0074], [0091]. [0169]; See Table 2: negative for “Type Strain”).
Claims 37-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-12 of U.S. Patent No. 11,286,445 B2 in view of Sheppard et al. (WO 2016/187021 A1; Nov. 24, 2016; using US equivalent US 2018/0119074 A1; May 3, 2018).
Although the claims at issue are not identical, they are not patentably distinct from each other because both make claim to producing a yeast-fermented beverage from a yeast strain without the use of lactic acid producing bacteria, wherein the beverage has a low pH and a sour taste. Additionally, both make claim to a yeast-fermented beverage having a pH of about 3.3 to 4.2, wherein the yeast-fermented beverage is a beer. Both also disclose using the same additional ingredients in the preparation of the yeast-fermented beverage.
While the ‘445 patent does not specifically claim that the yeast strain is from the genus Lachancea, the specification states that the claimed strain is related to a yeast strain from the genus Lachancea. Sheppard further teaches using a yeast strain from the genus Lachancea for producing a fermented beverage with a low pH and sour taste without the use of lactic acid producing bacteria and therefore it would have been obvious to use a yeast strain from the genus Lachancea in the kit of the instant claims.
With respect to the instructional materials, it would have been obvious to have included a set of instructions for making the yeast-fermented beverage.
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