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 of Group I in the reply filed on 05/28/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/28/2026.
Status of claims
Claims 6 and 14-15 are cancelled. Claims 1-5 and 7-13 are pending. Claims 7-13 are withdraw. Claims 1-5 are under examination.
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 1-5 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.
Claim 1 recites the limitation "the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. In order to provide proper antecedent basis for the cited limitation, the claim should first introduce the ingredients. The introduction of the ingredient(s) provides the required antecedent basis for the intrinsic property(ies) of the ingredients. In the instant case, weight is the intrinsic property of the ingredient(s). For examination purpose, the claim is interrupted as a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
Claim 2 recites the limitation " the weight ratio of the sum of 2-methylbutyl acetate and 2-methylbutanol to 2-methylbutanal is greater than 2000" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The ingredients 2-methylbutyl acetate, 2-methylbutanol and 2-methylbutanal are not first recited in claim 1. For examination purpose, the claim is interrupted as the composition of claim 1 further comprising 2-methylbutyl acetate, 2-methylbutanol and 2-methylbutanal, wherein the weight ratio of the sum of 2-methylbutyl acetate and 2-methylbutanol to 2-methylbutanal is greater than 2000.
Claim 3 recites the limitation "the weight ratio of the sum of 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol to 2,3-butanedione is greater than 50" in lines 1-3. There is insufficient antecedent basis for this limitation in the claim. The ingredients 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol, and 2,3-butanedione are not first recited in claim 1. For examination purpose, the claim is interrupted as the composition of claim 1 further comprising 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate, 2-phenylethanol, and 2,3-butanedione, wherein the weight ratio of the sum of 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol to 2,3-butanedione is greater than 50.
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.
Claim(s) 1-2, 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schumacher in view of Dong.
Schumacher (Schumacher. Methyl-Branched Flavor Compounds in Fresh and Processed Apples. Journal of Agricultural and Food Chemistry. October 15, 1998.)
Dong. (Dong. Characterization of volatile aroma compounds in different brewing barley cultivars. J Sci Food Agric 2015; 95: 915–92.)
Regarding claim 1: Schumacher teaches apple juice. [Table 2] The cider of Schumacher comprises 3-methylbutyl acetate (6) and 3-methylbutanol (2). Schumacher does not teach the presence of 3-methylbutanal. However, Schumacher notes that 3-methylbutanal has been present as an apple constituent.
Regarding 3-methylbutanal, Dong teaches that 3-methylbutanal has a malty odor perception. [Table 3]
Give this, it would have been obvious for one of ordinary skill before the effective filing date in the art to zero out the concentration of 3-methylbutanal in apple juice. One of ordinary skill in the art would have been motivated to do so to produce an apple juice to avoid malty odor perception. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Dong establishes that 3-methylbutanal has a malty odor perception.
Regarding claim 2: The cider of Schumacher comprises 2-methylbutyl acetate (5) and 2-methylbutanol (1). Schumacher does not teach the presence of 2-methylbutanal. However, Schumacher notes that 2-methylbutanal has been present as an apple constituent.
Regarding 2-methylbutanal, Dong teaches that 3-methylbutanal has a cocoa odor perception. [Table 3]
Give this, it would have been obvious for one of ordinary skill before the effective filing date in the art to varied the concentration of 2-methylbutanal in apple juice. One of ordinary skill in the art would have been motivated to do so to minimize or maximize the cocoa odor perception in apple juice. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Dong establishes that 2-methylbutanal is responsible for the cocoa odor perception, thereby, making it a result effective variable, and the adjustment of result effective variable is routinely practiced in the art.
Regarding claim 4: Schumacher teaches apple juice. Apple juice has zero alcohol.
Regarding claim 5: Schumacher teaches apple juice, which is at least a ready to drink beverage.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ledauphin, as evidenced by Ledauphin2, in view of Ferrari.
Ledauphin (Ledauphin. Identification of Trace Volatile Compounds in Freshly Distilled Calvados and Cognac Using Preparative Separations Coupled with Gas Chromatography−Mass Spectrometry. Journal of Agricultural and Food Chemistry. (2004) 52 (16): 5124–5134.)
Ledauphin2 (Ledauphin2. Gas chromatographic quantification of aliphatic aldehydes in freshly distilled Calvados and Cognac using 3-methylbenzothiazolin-2-one hydrazone as derivative agent. Journal of Chromatography A, 1115 (2006) 225–232.)
Ferrari (Ferrari. Determination of Key Odorant Compounds in Freshly Distilled Cognac Using GC-O, GC-MS, and Sensory Evaluation. J. Agric. Food Chem. 2004, 52, 5670-5676.)
Ledauphin teaches cognac. At Table 1, Ledauphin notes the cognac contains the following ingredients: 3-methylbutylacetate (33), 3-methylbutanol (54), 2-methdylbutyl acetate (32), Isobutyl acetate (also known as 2-methylpropyl acetate (3)), 2-phenylethylacetate (238), and 2-phenylethanol (257).
Ledauphin does not teach the presence of 3-methylbutanal in the cognac.
Ledauphin2, the same author as Ledauphin, evidences that cognac contains 3-methylbutanal. [Abstract]
Ledauphin nor Ledauphin2 teaches the claimed ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
Ledauphin2 notes that 3-Methylbutanal has a low detection threshold. Ledauphin2 notes that 3-Methylbutanal is likely to contribute to the overall aroma of cognac. [Last full paragraph of Section 3]
Given this, it would have been obvious for one of ordinary skill in the art before the effective filing date to have varied the concentration of 3-methylbutanal in cognac. One of ordinary skill in the art would have been motivated to do so to minimize or maximize the overall aroma of cognac. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Ledauphin2 establishes that 3-Methylbutanal is responsible for the overall aroma of cognac, thereby, making it a result effective variable, and the adjustment of result effective variable is routinely practiced in the art.
Ledauphin does not teach that the cognac also contains 2,3-butanedione.
Ferrari (along with co-author Ledauphin) evidences that cognac contains diacetyl. [Abstract] Diacetyl is a synonym for 2,3-butanedione, which has a buttery aroma.
Ledauphin, Ledauphin2 nor Ferrari teach the claimed ratio of the sum of 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol to 2,3-butanedione is greater than 50.
Ferrari teaches that 2,3-butanedione has a buttery odor descriptor.
Give this, it would have been obvious for one of ordinary skill before the effective filing date in the art to varied the concentration of 2,3-butanedione in cognac. One of ordinary skill in the art would have been motivated to do so to minimize or maximize the buttery odor of cognac. One of ordinary skill in the art would have had a reasonable expectation of success for doing so because Ferrari establishes that 2,3-butanedione is responsible for the butter odor of cognac, thereby, making it a result effective variable, and the adjustment of result effective variable is routinely practiced in the art.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18721401 (copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is directed toward a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
Claim 1 of copennding application is directed toward a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
The difference between claim 1 and copending claim 1 is the source of said ingredients. Claim 1 states that the ingredients are obtained from hemp or hemp extract. Claim 1 of copending application states that the ingredients are obtained from chamomile or fermented chamomile extract.
In the instant case, Applicant is reminded that the claim is a product claim. The source of the ingredients is immaterial in the determination of patentability.
Regarding claim 2: The claim requires the composition of claim 1 to further comprises 2-methylbutyl acetate, 2-methylbutanol and 2-methylbutanal, wherein the weight ratio of the sum of 2-methylbutyl acetate and 2-methylbutanol to 2-methylbutanal is greater than 2000.
Claim 2 of copending application is the same as claim 2.
Regarding claim 3: The claim requires the composition of claim 1 to further comprising of 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate, 2-phenylethanol, and 2,3-butanedione, wherein the weight ratio of the sum of 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol to 2,3-butanedione is greater than 50.
Claim 3 of copending application is the same as claim 3, except: the ratio of “greater than 400”, which is within the claimed ratio of “greater than 50”.
Claim 4 of copending application is the same as claim 3, except: the ratio of “greater than 60”, which is within the claimed ratio of “greater than 50”.
Regarding claim 4: The claim requires the composition of claim 1 to have an ethanol content below 1.2wt%.
Claim 5 of copending application is the same as claim 4.
Regarding claim 5: The claim requires the composition of claim 1 to be selected from the group consisting of a ready to drink beverage, a beverage liquid concentrate, a soluble beverage powder, dried aromatic plant material and combinations of these.
Claim 6 of copending application is the same as claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18721413 (copending application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is directed toward a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
Claim 1 of copennding application is directed toward a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000.
The difference between claim 1 and copending claim 1 is that claim 1 of copending application requires the composition be ready to drink. In the instant case, the composition of claim 1 is not limiting to any structure or form, and its full scope includes ready to drink.
Regarding claim 2: The claim requires the composition of claim 1 to further comprises 2-methylbutyl acetate, 2-methylbutanol and 2-methylbutanal, wherein the weight ratio of the sum of 2-methylbutyl acetate and 2-methylbutanol to 2-methylbutanal is greater than 2000.
Claim 2 of copending application is the same as claim 2.
Regarding claim 3: The claim requires the composition of claim 1 to further comprising of 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate, 2-phenylethanol, and 2,3-butanedione, wherein the weight ratio of the sum of 3-methylbutyl acetate, 2-methylbutyl acetate, isobutyl acetate, 2- phenylethyl acetate and 2-phenylethanol to 2,3-butanedione is greater than 50.
Claim 3 of copending application is the same as claim 2.
Regarding claim 4: The claim requires the composition of claim 1 to have an ethanol content below 1.2wt%.
Claim 4 of copending application is the same as claim 4.
Regarding claim 5: The claim requires the composition of claim 1 to be selected from the group consisting of a ready to drink beverage, a beverage liquid concentrate, a soluble beverage powder, dried aromatic plant material and combinations of these.
Claim 1 of copending application is directed toward a composition comprising fermented hemp or fermented hemp extract comprising 3-methylbutyl acetate, 3-methylbutanol and 3-methylbutanal, wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000 wherein the composition be ready to drink.
Conclusion
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/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793
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