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 without traverse of group I, claims 1-3 , 6, 9, 12-14, 18, 20-23, 27 and 98-102 in the reply filed on 1 July 2026 is acknowledged. Claims 50-51, 54, 57, 60-62, 66, 68-71, 75 and 103-107 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 18, 20, 27 and 98-102 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 claims 18 and 20, these claims depend from cancelled claims. As stated in MPEP 2173.05(f) where the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Since it is unclear what claim these claims are intended to depend from, these claims have not been treated on the merits because assumptions must be made as to the scope of the claims. (See MPEP 2173.006 II) Appropriate correction is required.
Regarding claim 27, this claim recites proportions of “traditional brandy” and “oak extract”. However, once these components are mixed into a solution, it is not possible to differentiate between the compounds from the added “traditional brandy” or “oak extract” and other compounds present in the composition that are the same as, but not contributed from, the additional of “traditional brandy” or “oak extract”. For instance, a brandy replica would comprise added VOC that is the same as those present in traditional brandy, even though they were added individually. Likewise, oak extract comprises tannins and therefore it is not clear how to distinguish what percentage of the composition is contributed by “oak extract” and what is contributed from other tannins. Therefore, it is not clear what compositions would be included/excluded from claim 27 because it is not clear how to determine where components of the claimed composition originated from. As such, a composition comprising the components recited will be interpreted to read on the claims. Appropriate correction is required.
Claims 98-101 recite a comparison of the claimed invention to a “corresponding traditional brandy”. Applicant’s specification states “As used herein, a “corresponding reference brandy” can be a single type, a single brand, or a single bottle of traditionally-produced brandy that a brandy replica as described herein is intended to replicate. In some cases, a single type, single brand, or single bottle of traditionally-produced brandy can be a blend of two or more (e.g., two, three, four, or more than four) brandies. For example, if a brandy replica is meant to be the same as a Cognac, then a Cognac would be a corresponding reference brandy”. When the term “corresponding traditional brandy” is interpreted in light of applicant’s specification, it is unclear what composition the reference brandy must have since applicant discloses that a corresponding brandy can be any of a number of different species. As such, it is not clear how one of ordinary skill in the art would be able to reproducibly evaluate the limitations of claims 98-101 because the reference for comparison is not definitive. Claim 102 depends from claim 98 and necessarily incorporates the deficiencies therein. Appropriate correction is required.
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 1-3 , 6, 9, 12-14, 21-23, 27 and 98-102 are rejected under 35 U.S.C. 103 as being unpatentable over Chua WO 2019/165323.
Regarding claims 1, 3, 6, 9 and 12, Chua teaches a brandy replica (Pg. 6, line 24) comprising water, distilled ethanol (interpreted to read on neutral grain spirit), oak extract (a tannin)(Pg. 84, line 17-18), and added VOC. (Pg. 7, lines 11-23)
Chua discloses adding more than 6 VOC, the added VOC selected from, inter alia,
Ester such as ethyl acetate, ethyl laurate, ethyl butyrate (Pg. 9, lines 4-9) as recited in claim 3
Additional alcohol such as isoamyl alcohol or phenylethyl alcohol (Pg. 12, lines 17-22) as recited in claim 9.
At least one aldehyde or ketone such as 2,3 pentanedione, 2-heptanone or methyl cyclopentenolone(Pg. 13, line 18-Pg. 15, line 2) as recited in claim 6
At least one terpene or isoprenoid such as linalool (Pg. 15, line 7) as recited in claim 12
The proportions of these components disclosed by Chua overlaps with the proportion of VOC recited in claim 1 (see calculations on pg. 4 of ISR made of record 7/2/24, incorporated by reference herein) 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 limitations of claims 1, 3, 6, 9 and 12.
Regarding claim 2, Chua does not require the presence of traditional brandy.
Regarding claims 13 and 14, Chua discloses that the VOC can comprise 2-pentylfuran (Pg. 25, line 22), butyric acid (Pg. 42, line 20) and eugenol (Pg. 53, line 10).
Regarding claims 21-23, Chua discloses that the composition can comprise at least one at least one added non-volatile compound such as betaine (Pg. 92, line 30) or a coloring agent (Pg.111, line 4)
Regarding claim 27, the composition of Chua is disclosed to comprise the components recited in claim 27. (See discussion of claims 1, 21-23)
Regarding claims 98-102, Chua discloses a concentrate capable of being diluted to read on claim 1. (Pg. 111, line 6-11)
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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