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 § 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.
Claims 1, 3-4, 7-9, 11 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over FR 356024 A to Rolland in view of US 5,205,496 to O’Donnell.
Regarding claim 1, Rolland teaches an impact mill (Fig. 1) comprising:
a casing A enclosing a milling chamber (Fig. 1; Para. [0015]);
at least one rotor D (Fig. 1; Para. [0015]),
impacting elements B driven in rotation by the rotor D (Fig. 1; Para. [0015]);
wherein the casing has an inlet M for the raw material and an outlet for the milled material (Fig. 1; Paras. [0016] and [0018]; as shown in Fig. 1, the outlet the portion beyond the plate E),
wherein the milling chamber comprises a sieve E (Fig. 1; Para. [0016]), and
wherein the casing is equipped with water injectors F (Fig. 1; Para. [0016]).
Rolland fails to explicitly teach wherein the impacting elements are mounted in a pivotal manner on axes driven in rotation by the rotor, the impacting elements being hammers and/or knives.
In the field of impacting mills for grains (Col. 1, Lns. 13-24), O’Donnell teaches a mill including a rotor 56 and a plurality of impacting elements 48 mounted in a pivotal manner on axes driven in rotation by the rotor (Figs. 2-3 and 12; Col. 11, Ln. 51 through Col. 12, Ln. 2), the impact elements being hammers and/or knives (Col. 19, Lns. 40-56; the impacting elements mounted in a pivotal manner may be hammers, knives or combinations of the both).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to substitute the impact elements in the mill of Rolland with the impacting elements of O’Donnell as those components and their functions were well known in the art and a person of ordinary skill in the art could have substituted each of these known elements for another with the predictable result of mashing and comminuting the grain products in the mill.
Regarding claim 3, Rolland teaches the impact mill according to claim 1 (Fig. 1), wherein one or more injectors F of the water injectors are placed in such a way as to feed water directly into the milling chamber (Fig. 1 shows that one of the injectors is positioned to direct water directly into the milling chamber).
Regarding claim 4, Rolland teaches the impact mill according to claim 1 (Fig. 1), wherein one or more injectors F of the water injectors are placed in such a way as to carry water behind the sieve E (Fig. 1 shows that one of the water injectors is positioned behind the sieve).
Regarding claim 7, modified Rolland teaches the impact mill according to claim 1 (Fig. 1), comprising 4 to 8 axes (O’Donnell, Figs. 2-3 and 12; Col. 11, Ln. 51 through Col. 12, Ln. 2; modified Rolland includes the impacting elements of Rolland which teaches at least 4 axes, i.e., at pins 78, for the impacting elements).
Regarding claim 8, modified Rolland teaches the impact mill according to claim 1 (Fig. 1), wherein on a same axis the impacting elements are alternately knives and hammers (O’Donnell, Col. 19, Lns. 50-56; modified Rolland includes the impacting elements of O’Donnell, which teaches that the impacting elements may be both hammers and knives, and in at least the portion in which a hammer and a knife are next to each other on the rotor there will be alternating knives and hammers).
Regarding claim 9, modified Rolland teaches the impact mill according to claim 1 (Fig. 1). While modified Rolland teaches that the impacting elements may be both hammers and knives (O’Donnell, Col. 19, Lns. 50-56; modified Rolland includes the impacting elements of O’Donnell, which teaches that the impacting elements may be both hammers and knives, and in at least the portion in which a hammer and a knife are to each other on the rotor there will be alternating knives and hammers), the references are silent regarding the ratio of hammers to knives.
It would have been obvious to the person of ordinary skill in the art to have the majority of the impacting elements be knives, since it has been held that where the general conditions of a claim are disclosed in the prior art, determining the optimum or workable ranges involves only routine skill in the art (MPEP § 2144.05). On Page. 6, Lns. 7-15 and P. 8, Lns. 26-29 of the Specification, the impacting elements are described as being hammers or knives with no discussion about any criticality for either type of impacting element being used. Therefore, it would have been prima facie obvious to modify Rolland to obtain the invention as specified in claim 9 because such a modification would have been considered a mere design consideration which fails to patentably distinguish the claimed invention over the prior art.
Regarding claim 11, modified Rolland teaches a method of milling green malt comprising providing an impact mill according to claim 1 and milling green malt in the impact mill (Fig. 1; Para. [0007]; this claim is interpreted as depending from claim 1, and as discussed above the combination of Rolland and O’Donnell teaches the impact mill of claim 1 while Rolland teaches using such a mill to mill green malt).
Regarding claim 20, modified Rolland teaches the impact mill according to claim 6 (Fig. 1), comprising 4 axes (O’Donnell, Figs. 2-3 and 12; Col. 11, Ln. 51 through Col. 12, Ln. 2; modified Rolland includes the impacting elements of Rolland which teaches at least 4 axes, i.e., at pins 78, for the impacting elements).
Regarding claim 21, modified Rolland teaches the impact mill according to claim 1 (Fig. 1), wherein a first of the impacting elements is mounted on a first axis and a second of the impacting element sis mounted on a second axis separate from the first axis (O’Donnell, Figs. 2-3; modified Rolland includes the pivotably mounted impacting elements of O’Donnell, and as shown in Figs. 2-3 the impacting elements in O’Donnell in the direction of rotation are each mounted to a separate axis of rotation, i.e., Fig. 2 shows that the four impacting elements mounted consecutively in the direction of rotation are each mounted on a separate axis).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland in view of O’Donnell in further view of US 5,453,285 A to Versteegh
Regarding claim 10, modified Rolland teaches the impact mill according to claim 1 (Fig. 1), including a sieve E (Fig. 1; Para. [0016]).
However, Rolland fails to teach the size of perforations in the sieve.
Versteegh teaches a process and apparatus for producing wort (Abstract) including a hammer mill including a sieve that has perforations a size of which is between 1.0 mm and 4.0 mm (Col. 5, Lns. 18-26).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the sieve of Rolland to include perforations between 1.0 mm to 4.0 mm as taught by Versteegh so that only screen only allows the desirable components to pass through.
Claims 12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Rolland in view of O’Donnell in further view of US 3,594,179 to Korolev.
Regarding claim 12, Rolland teaches a process for producing a wort (Paras. [0007] and [0022]-[0023]), comprising feeding green malt or any other germinated cereal (Paras. [0007] and [0018]) into an impact mill, and
simultaneously undergoing milling and mashing operations (Fig. 1; Paras. [0016]-[0017]),
wherein the impact mill includes
a casing A enclosing a milling chamber (Fig. 1; Para. [0015]);
at least one rotor D (Fig. 1; Para. [0015]),
impacting elements B driven in rotation by the rotor D (Fig. 1; Para. [0015]);
wherein the casing has an inlet M for the raw material and an outlet for the milled material (Fig. 1; Paras. [0016] and [0018]; as shown in Fig. 1, the outlet the portion beyond the plate E),
wherein the milling chamber comprises a sieve E (Fig. 1; Para. [0016]), and
wherein the casing is equipped with water injectors F (Fig. 1; Para. [0016]).
Rolland fails to explicitly teach wherein the impacting elements are mounted in a pivotal manner on axes driven in rotation by the rotor, the impacting elements being hammers and/or knives, and the green malt or germinated cereal having a moisture content of more than 15%.
In the field of impacting mills for grains (Col. 1, Lns. 13-24), O’Donnell teaches a mill including a rotor 56 and a plurality of impacting elements 48 mounted in a pivotal manner on axes driven in rotation by the rotor (Figs. 2-3 and 12; Col. 11, Ln. 51 through Col. 12, Ln. 2), the impact elements being hammers and/or knives (Col. 19, Lns. 40-56; the impacting elements mounted in a pivotal manner may be hammers, knives or combinations of the both).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to substitute the impact elements in the mill of Rolland with the impacting elements of O’Donnell as those components and their functions were well known in the art and a person of ordinary skill in the art could have substituted each of these known elements for another with the predictable result of mashing and comminuting the grain products in the mill.
Korolev teaches a method for producing wort including providing germinated cereal having a moisture content more than 15% (Col. 1, Lns. 35-44 and Col. 2, Lns. 47-50).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the process of Rolland to include providing green malt or germinated cereal having a moisture content over 15% as taught by Korolev so that the cereal product is properly germinated before it is milled.
Regarding claim 14, modified Rolland teaches the method according to claim 12 (Fig. 1), wherein mash water is introduced by the water injectors F (Fig. 1; Para. [0016]).
Regarding claim 15, modified Rolland teaches the process according to claim 14 (Fig. 1).
Rolland fails to explicitly teach wherein a total amount of mash water introduced so that a ratio (water/green malt) is between 0.5 and 3.0. Rolland is silent regarding the amount of water introduced.
Korolev teaches a process for producing wort including adding a total amount of mash water to obtain a ratio of water/malt of between 0.5 to 3.0 (Col. 2, Lns. 35-39).
It would have been obvious a person of ordinary skill in the art before the effective filing date to modify the process of Rolland to include a ratio of water/malt between 0.5 and 3.0 as taught by Korolev so that there is sufficient water present during the milling process to produce wort with the desired properties.
Regarding claim 16, modified Rolland teaches the process according to claim 15 (Fig. 1), wherein a part of the mashing water is introduced by one or more injectors F of the water injectors placed in such a way as to bring the water directly into the milling chamber and another part of the mashing water is introduced by one or more injectors F of the water injectors placed behind the sieve E (Fig. 1 shows the water injectors positioned in such a manner).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rolland in view of O’Donnell in further view of Korolev in further view of Versteegh.
Regarding claim 17, modified Rolland teaches the process according to the preceding claim 16 (Fig. 1).
Rolland fails to explicitly teach a duration of the milling/mashing operation is a maximum of 45 min.
Versteegh teaches a process for producing wort including the duration of the milling/mashing operation is a maximum of 45 minutes (Col. 5, Lns. 18-25; the milling process occurs at 50 C for 5 minutes and 95 C for 10-15 minutes, so the total time is 15-20 minutes).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the process of Rolland to include a milling time of under 45 minutes as taught by Versteegh so that the mixture being milled has enough time to be properly milled without overly crushing and comminuting the solids in such a manner that it impacts the physical properties of the output.
Regarding claim 18, modified Rolland teaches the process according to claim 14 (Fig. 1).
Rolland fails to explicitly teach the mashing water is introduced at a temperature between 20 and 95°C.
Versteegh teaches a process for producing wort including the mashing water is introduced at a temperature between 20 and 95°C (Col. 5, Lns. 18-25; the water is introduced at 55 C).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the process of Rolland to include a introducing the water at a temperature between 20 and 95 C as taught by Versteegh so that the conditions for milling the germinated malt are optimal for crushing the malt while still maintaining the desired properties.
Claims 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rolland in view of O’Donnell in further view of Korolev in further view of US 2012/0032007 A1 to Mulder.
Regarding claim 19, modified Rolland teaches the process according to claim 12 (Fig. 1).
Rolland fails to explicitly teach the milling/mashing operation is carried out at a peripheral rotational speed of between 80 and 120 m/sec. Rolland is silent regarding the rotation speed.
Mulder teaches a process for milling cereal grain to obtain wort (Para. [0036]) including the milling/mashing operation is carried out at a peripheral rotational speed of between 80 and 120 m/sec (Para. [0060]; the milling is carried out with a very high speed of rotation that is higher 70 m/s, which would include 80-120 m/s).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the process of Rolland to include the milling is carried out at a speed of 80-120 m/s as taught by Mulder so that the impact elements rotate at a sufficient speed to crush the malt and form the wort.
Response to Arguments
Applicant’s amendments and remarks dated June 2, 2026, with respect to the 35 USC 112 rejections have been fully considered and are persuasive. The35 USC 112 rejections have been withdrawn.
Applicant’s amendments and remarks with respect to the rejections under 35 USC 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the combination of prior art discussed above, in particular the combination of Rolland and O’Donnell to teach the features of the mill.
Applicant argues that the rationale to modify Rolland to include the impacting elements of O’Donnell is not sufficient because Applicant’s suggests a person of ordinary skill in the art could not substitute the impacting elements of O’Donnell into the mill of Rolland and such a modification would destroy the principle of operation of Rolland. Remarks, PP. 8-10. This argument has been carefully considered and it is not persuasive. Rolland explicitly states that the “propeller can be replaced by any other progressive transport and compression member” (Rolland, Para. [0017]), and the compression member is the knife which impacts the malt and compresses it against the sieve. Applicant suggests that the configuration of the knife and plate in Rolland may not be modified without destroying the principle of operation (Remarks, PP. 8-10), however Rolland itself suggests that it would be obvious to modify at least the knife as well as other parts of the system while still performing the desired operation. Thus, a person of ordinary skill in the art would understand that the knives of Rolland may be modified to be a different impacting device while the mill of Rolland still performs the desired operation. While Rolland describes a particular interaction between the knives and the sieve plates to push material through the sieve, a person of ordinary skill in the art would understand that the motion of the auger and the feeding of additional water and material would result in milled material being pushed through the sieves even in configurations where the knife is not directly pushing against the sieve. It is noted that Rolland also contemplates the mill being oriented vertically (Para. [0027]) which would result in gravity also assisting in moving the milled material through the sieve. Thus, the milled material would still be pushed through the sieve in modified Rolland as the only components being substituted are the knives, i.e., the modified mill would still perform the same operation. Applicant further argues that O’Donnell is from a different field than Rolland because O’Donnell describes the mill as operating in various environments such as dry grinding (Remarks, PP. 10-12), however this argument is not persuasive as both references are in the field of impact mills that may be used on grains and other edible materials.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MATTHEW STEPHENS/Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725
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