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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claim 5-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/22/2026.
Applicant’s election without traverse of Group I (claims 1-4) in the reply filed on 05/22/2026 is acknowledged.
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.
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.
Claim(s) 1-4 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Saerens et al (US 20160010042 A) in view of Bisterfeld Von Meer (US 2014/0044807 A1).
Claim 1 is directed to a beverage composition comprising fermented hemp or fermented hemp extract wherein the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal is greater than 2000 and the beverage composition is a ready to drink beverage. It is noted that isoamyl acetate is also known as 3-methylbutyl acetate and isoamyl alcohol is also known as 3-methylbutanol.
In regard to claim 1, Saerens et al discloses a fermented beverage with high concentrations of specific flavor compounds including isoamyl acetate (3-methylbutyl acetate), isoamyl alcohol (3-methylbutanol), ethyl butyrate, ethyl hexanoate and ethyl octanoate (Abstract). Saerens et al discloses:
It has unexpectedly been found that a low alcohol or alcohol-free beverage, with a flavor profile very close to a beer of at least 4% (vol/vol) alcohol, can be produced by using Pichia kluyveri yeast strains. In particular, Pichia kluyveri yeast strains only use the glucose in the wort, and have the ability of converting this substrate into a high concentration of specific flavor compounds, which are normally produced by Saccharomyces ssp. yeast strains used for the brewing of beer. In this way the Pichia kluyveri yeast strains can be used to produce either a low alcohol or alcohol-free beverage, depending on the glucose levels in the wort. The main flavor compounds produced by Pichia kluyveri in the fermentation of wort are isoamyl acetate, isoamyl alcohol, ethyl butyrate, ethyl hexanoate and ethyl octanoate (Abstract).
Saerens et al discloses “[t]he inventors of the present invention have unexpectedly found that Pichia kluyveri yeast strains are able to enhance the presence of desirable flavor compounds in beverages prepared by fermenting wort with the Pichia kluyveri yeast strains. In particular, it was found that concentrations of flavor compounds desirable for beer, such as isoamyl acetate, isoamyl alcohol and ethyl octanoate, were increased” ([0028]).
Further in regard to the increased concentrations of desired aroma compounds, Saerens et al discloses:
FIGS. 6 and 7 show the ester concentrations in all final fermentation products, as well as in the basic wort with and without hops. All ester concentrations are the highest in the fermentation products with Pichia kluyveri, both with and without hops. In the case of isoamyl, phenylethyl, isobutyl and butyl acetate, Pichia kluyveri produces higher amounts of these esters when no hops are added, compared to ethyl decanoate. Especially the levels of isoamyl acetate and phenylethyl acetate are very high. Isoamyl acetate results in a banana aroma, while phenylethyl acetate results in a more flowery, honey aroma. Both ester compounds are wanted compounds in beer ([0117]).
Saerens et al discloses “adding to the wort at least one hop variety prior to fermenting the wort with the at least one Pichia kluyveri yeast strain” ([0043], claim 11). Saerens et al discloses that “[h]ops can be added to the wort to balance the sweetness of the malt with bitterness and impart onto the beer desirable flavors and aromas. Several varieties exist including but not limited to Ahtanum, Amarillo, Apollo, Bravo, Calypso, Cascade, Centennial, Chelan, Chinook, Citra, Cluster, Columbus, Comet, Crystal, El Dorado, Eroica, Galena, Glacier, Greenburg, Horizon, Liberty, Millenium, Mount Hood, Mount Rainier, Mosaic, Newport, Nugget, Palisade, San Juan, Santiam, Satus, Simcoe, Sonnet Golding, Sterling, Summit, Super Galena, Tillicum, Tomahawk, Ultra, Vanguard, Warrior, Willamette, Zeus, Admiral, Brewer's Gold, Bramling Cross, Bullion, Challenger, First Gold, Fuggles, Goldings, Herald, Northdown, Northern Brewer, Phoenix, Pilgrim, Pilot, Pioneer, Progress, Target, Whitbread Golding Variety (WGV), Hallertau, Hersbrucker, Saaz, Tettnang, Spalt, Ella, Feux-Coeur Francais, Galaxy, Green Bullet, Hallertau Aroma, Kohatu, Motueka, Nelson Sauvin, Pacific Gem, Pacific Jade, Pacifica, Pride of Ringwood, Rakau, Riwaka, Southern Cross, Sticklebract, Summer, Super Alpha, Super Pride, Topaz, Wai-iti, Hallertau Herkules, Hallertau Magnum, Hallertau Taurus, Magnum, Merkur, Opal, Perle, Saphir, Select, Smaragd, Tradition, Bor, Junga, Lublin, Marynka, Premiant, Sladek, Strisselspalt, Styrian Atlas, Styrian Aurora, Styrian Bobek, Styrian Celeia, Styrian Golding, Sybilla, Tardif de Bourgogne and Sorachi Ace” ([0031]).
Saerens et al does not disclose that the beverage composition comprises fermented hemp or fermented hemp extract as recited in claim 1.
Bisterfeld Von Meer discloses “... a method for the manufacturing of beverages on the basis of juice from the hemp plant, wherein the hemp juice is mixed with yeast and than fermented” (Abstract). Bisterfeld Von Meer discloses that “[p]referably, a beer like beverage is brewed from the hemp juice ([0054]). Bisterfeld Von Meer discloses production of a “conventional light colored beer on the basis of barley malt or rice malt or wheat malt or oat malt” or a “conventional dark colored beer on the basis of rye malt and/or dark malts” where “hops and/or hop aroma can be replaced in part or entirely replaced by the desired mixture of cold-pressed Cannabis juices” ([0094]).
Bisterfeld Von Meer also discloses that hemp juice is combined with extract of malted barley and/or malted rye and /or malted rice depending on the intended final taste of the beverage:
[0058] Preferably, the juice of the hemp plant is initially heated to a temperature of over 30.degree. C., preferably over 45.degree. C. Depending on the intended final taste of the beverage, malt extract obtained from different grain can be added to the heated hemp juice. For example, the hemp juice can be mixed with the extract of malted wheat and/or malted rice. Preferably, the hemp juice or mixtures thereof obtained according to b) or c) are mixed with the extract of malted wheat and/or malted rice. The result is a pale, light hemp beverage.
[0059] Additionally or alternatively, the hemp juice can be mixed with the extract of malted rye and/or malted barley. Preferably, the hemp juice or a mixture thereof obtained according to a) or b) is mixed with the extract of malted rye and/or malted barley. The result is a strong, dark hemp beverage.
Claim 11. Method according to claim 10, wherein the hemp juice is boiled with malt extract from wheat, rice, rye and/or barley prior to the addition of yeast.
Bisterfeld Von Meer discloses production of a “conventional light colored beer on the basis of barley malt or rice malt or wheat malt or oat malt” or a “conventional dark colored beer on the basis of rye malt and/or dark malts” where “hops and/or hop aroma can be replaced in part or entirely replaced by the desired mixture of cold-pressed Cannabis juices” ([0094]):
[0094] A conventional light colored beer on the basis of barley malt or rice malt or wheat malt or oat malt can be brewed in the known ways, however the hops and/or hop aroma can be replaced in part or entirely replaced by the desired mixture of cold-pressed Cannabis juices to obtain a light colored beer. A conventional dark colored beer on the basis of rye malt and/or dark malts from the before mentioned grains can be brewed in the known ways, again the hops and/or hop aroma is replaced by the desired mixture of cold-pressed Cannabis juices to obtain for instance a dark colored, stronger beer with a more pronounced bitter taste. The Cannabis juice can best be chosen from the leafy blossom tops and added for flavor when the temperature in the brewing process will not rise beyond 60 degrees centigrade any more.
Both references are directed to the production of beer-like beverages. Saerens et al teaches low alcoholic beer-like beverage having desired flavor/aroma profile comparable to conventional full alcoholic beer due to the fermentation of wort with Pichia kluyveri yeast strains. Saerens et al discloses “adding to the wort at least one hop variety prior to fermenting the wort with the at least one Pichia kluyveri yeast strain” ([0043], claim 11). Bisterfeld Von Meer discloses production of a “conventional light colored beer on the basis of barley malt or rice malt or wheat malt or oat malt” or a “conventional dark colored beer on the basis of rye malt and/or dark malts” where “hops and/or hop aroma can be replaced in part or entirely replaced by the desired mixture of cold-pressed Cannabis juices”. One of ordinary skill in the art would have been motivated to modify Saerens et al in view of Bisterfeld Von Meer and to replace in part or entirely replace by the desired mixture of cold-pressed Cannabis juices as suggested by Bisterfeld Von Meer.
In regard to the recitations of the weight ratio of the sum of 3-methylbutyl acetate and 3-methylbutanol to 3-methylbutanal being greater than 2000 (claim 1), the weight ratio of the sum of 2-methylbutyl acetate and 2-methylbutanol to 2-methylbutanal being greater than 2000 (claim 2), and 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 being greater than 50, it is noted that although the reference does not specifically disclose every possible quantification or characteristic of its product, these characteristics would have been expected to be as claimed absent any clear and convincing evidence and/or arguments to the contrary. The references discloses the same starting materials and methods as instantly (both broadly and more specifically) claimed, and thus one of ordinary skill in the art would recognize that the weight ratios as claimed among many other characteristics of the product obtained by referenced method, would have been an inherent result of the process disclosed therein. The Patent Office does not possess the facilities to make and test the referenced method and product obtain by such method, and as reasonable reading of the teachings of the reference has been applied to establish the case of obviousness, the burden thus shifts to applicant to demonstrate otherwise.
In regard to claim 4, Saerens et al teaches low alcohol or alcohol-free beverage ([0059]). Saerens et al discloses:
[0051] The term “low-alcohol beer” herein refers to a beer with an alcohol content of more than 0.5% and no more than 1.2% (vol/vol) of alcohol.
[0052] The term “non-alcohol beer” herein refers to a beer with an alcohol content of no more than 0.5% ABV.
Therefore, Saerens et al meets the limitations of claim 4.
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/721,401 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to the beverage composition comprising fermented plant extract wherein the weight ratio of the sum of 3-methylbutyl acetate and 3- methylbutanol to 3-methylbutanal is greater than 2000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/721,384 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to a beverage composition comprising fermented plant extract 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/721,391 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to a beverage composition comprising fermented plant extract 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/721,362 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to the beverage composition comprising fermented plant extract wherein the weight ratio of the sum of 3-methylbutyl acetate and 3- methylbutanol to 3-methylbutanal is greater than 2000.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/722,711 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both applications are directed to a beverage composition comprising fermented plant extract 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/VERA STULII/Primary Examiner, Art Unit 1791
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