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, the beverage, and Species A only requiring limonene in the reply filed on May 11, 2026 is acknowledged. Claims 4-5 and 9 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
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 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chua et al (WO 2019/165323).
Chua et al (Chua) teaches a bottled alcoholic beverage comprising ethyl palmitate and limonene (Example 3- see specifically page 284 line 5, page 284 line 15, and Table 14 Formulation 1 page 287 and 299).
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.
Note: ppm is equivalent to mg/L (see instant specification paragraph 9).
Claims 2-3 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Chua et al (WO 2019/165323) in view of Schuh et al (US 2015/0257428).
As discussed above, Chua teaches a specific example of a bottled alcoholic beverage comprising ethyl palmitate and limonene.
Regarding claims 1-3, Chua generally teaches of an alcoholic beverage (title, page 1 lines 6-7, and page 6 lines 12-24) comprising: about 0.009mg/L-1.5g/L of one or more esters which can contribute to the fruity and floral characteristics of the beverage and are selected from the group including ethyl palmitate (page 9 lines 4-6, 11, and 20-30, and page 11 lines 3 and 11-12); and 0.0002-95mg/L of one or more terpenes and isoprenoids which can contribute to the floral and green characteristics of the beverage and are selected from the group including limonene which contributes citrus flavor (page 15 lines 3-6 and 12-30, page 16 lines 3-9, and page 118 line 20 through page 119 line 2). Also see page 7 lines 11-17 and claims 9-10, 21, 43. Chua specifically teaches the limonene can be used in an amount of at least about 0.12mg/L to contribute a citrusy flavor and aroma (page 60 lines 17-23 and page 80 lines 12-13, page 117 lines 1-3).
Chua is not explicit to the about 0.009mg/L-1.5g/L of at least one ester as ethyl palmitate in combination with the 0.0002-95mg/L of at least one terpenes and isoprenoids as limonene, however, it would have been obvious to one of ordinary skill in the art that the disclosure of Chua because both are disclosed in the Markush groupings, it would at least make obvious the claimed combination. Furthermore, Schuh et al. (Schuh) teaches ethyl palmitate was known to be used in flavored beverages, including alcoholic beverages, to provide an umami taste and mouthfeel (abstract and paragraphs 44 and 46). It would have been particularly obvious for the ester as taught by Chua to be ethyl palmitate for its known umami taste and mouthfeel in view of Schuh; and it would have been particularly obvious for the beverage of Chua to specifically be limonene as the terpenes and isoprenoids in order to impart a citrus flavor in view of Chua, wherein it would have been obvious for said components to be included in an amount based on the desired taste and/or flavor and/or in the amount disclosed by Chua. Thus, the claimed combinations are considered obvious over the teachings of the prior art for forming a beverage with both a citrus and umami taste and flavor.
Regarding the beverage as comprising 1-9% v/v alcohol as recited in claim 6, Chua teaches that the beverage comprises about 3-70% v/v alcohol, including about 3-7% or about 5-10% (page 8 lines 6-7)
Regarding the beverage as comprising carbon dioxide as recited in claim 7, Chua teaches that the beverage may include sparkling wines which had carbon dioxide (page 7 lines 12-13, and page 275 line 14 through page 276 line 29). Thus, the use of carbon dioxide for its known purpose of imparting a sparkling/bubbling sensation to the beverage would have been encompassed or at least obvious over the teachings of the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. EP3805353 teaches an alcoholic beverage comprising 10-60ppm limonene.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY BEKKER whose telephone number is (571)272-2739. The examiner can normally be reached Monday-Friday 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY BEKKER
Primary Patent Examiner
Art Unit 1792
/KELLY J BEKKER/Primary Patent Examiner, Art Unit 1792
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