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 § 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 89-95 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.
Claims 89-95 are rejected for reciting the term “traditionally produced Moscato”. The claims reference a traditional Moscato but there is no indication as to what constitutes a traditional Moscato. Moscato wine is a wine made from Muscat grapes. The final concentration and presence of volatile organic compounds (VOCs) will depend on a variety of factors such as growing conditions, specific strains of Muscat grapes, fermentation conditions and aging parameters. It is understood that applicant seeks to provide a reference point to determine what VOCs may be present but it remains unclear what constitutes a traditional Moscato, especially when comparing VOCs.
Claim Rejections - 35 USC § 103
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.
Claims 55-67, 69-73, 89-95 are rejected under 35 U.S.C. 103 as being unpatentable over OSSALA, et al, Comparison of fortified, sfursat, and passito wines produced from fresh and dehydrated grapes of aromatic black cv. Moscato nero (Vitis vinifera L.), Food Research International 98 (2017 59-67) (OSSOLA) in view of JP2015027309 (TAICHI). A translation for TAICHI has been provided in the previous Official Action.
Claim 55
At the outset, it is noted that the claimed invention is directed a moscato replica. Thus, the gist of the invention is to remake or copy an already known beverage.
OSSOLA teaches a moscato wine with ethanol and water (see Table 5). OSSOLA also teaches that the wine has pleasant nuances of fruit and flowers (i.e., grapes – See Introduction). 2
While OSSOLA teaches the importance of adding fruit and floral notes to moscato, OSSOLA is silent as to the addition of additional VOC compounds.
The reference is silent as to adding additional claimed VOCs.
TAICHI teaches flavoring agents for alcoholic beverages such as beer (abstract).
TAICHI teaches adding i) nonanal (line 338); and ii) cycloten (line 316, also known as methyl cyclopentenolone) ; iii) diethyl succinate (lines 154-155); iv) phenethyl propionate which is a synonym of phenethyl propanoate (line 385) and v) phenethyl butyrate which is a synonym of phenethyl butanoate (line 388) as a flavor imparting agent.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
The claimed invention is a recipe for producing an alcoholic beverage. The applicant is respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
Claim 56
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- benzyl alcohol (line 166)
- camphor (line 331)
- propanol (line 313)
- ethyl valerate (i.e., also known as ethyl pentanoate) (line 389)
- gamma decalactone (line 586)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 57
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- phenylacetaldehyde (line 178)
- octanoic acid (line 250)
- alpha-terpineol (line 314)
- ethyl butyrate (line 142)
- phenethyl acetate (line 384)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 58
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- butanol (line 163)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 59
OSSOLA is silent as to using additional esters, acids, alcohol, terpenes, and lactones as flavoring imparting agents.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents for alcoholic beverages – esters (lines 137-155), acids (lines 247-251), alcohols (lines 162-168), terpenes (line 260), and lactones (lines 216-219) as flavoring imparting agents.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 60
OSSOLA is silent as to using additional ester.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that esters such as hexyl acetate (line 140) can be added as a flavoring agent.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 61
OSSOLA is silent as to using additional acids.
TAICHI teaches that acids such as decanoic acid (line 250) can be added as a flavoring agent.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 62
OSSOLA is silent as to using additional alcohols.
TAICHI teaches that alcohols such as isoamyl alcohol (line 313) can be added as a flavoring agent.
It would have been obvious to one skill in the art to add the alcohols of TAICHI to the references above as they are flavoring imparting agents.
Claim 63
OSSOLA is silent as to using additional ketones.
TAICHI teaches that aldehydes such as 2-nonanoe (line 188) can be added as a flavoring agent.
It would have been obvious to one skilled in the art to add the ketones of TAICHI to the references above as they are flavoring imparting agents.
Claim 64
OSSOLA is silent as to using additional terpenes.
TAICHI teaches that aldehydes such as nerol (line 572) can be added as a flavoring agent.
It would have been obvious to one skill in the art to add compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 65
OSSOLA is silent as to using additional phenols.
TAICHI teaches that aldehydes such as 4-ethenylphenol (i.e., also known as 4-vinylphenol) (line 198) can be added as a flavoring agent.
It would have been obvious to one skill in the art to add the phenols of TAICHI to the references above as they are flavoring imparting agents.
Claim 66
OSSOLA is silent as to using additional lactones.
TAICHI teaches at lines 216-219 that various lactones such as delta-decalactone and gamma-decalactone can be added as a flavoring agents.
It would have been obvious to one skill in the art to add the lactones of TAICHI to the references above as they are flavoring imparting agents.
Claim 67
OSSOLA is silent as to using additional amines or pyrazines.
TAICHI teaches at lines 416-419 that various pyrazines such as methylpyrazine can be added as a flavoring agent.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 69
OSSOLA is silent as to using additional VOCs, as claimed.
TAICHI teaches the following compounds serve as flavoring agents in alcoholic beverages.
- phenethyl butanoate (i.e., synonym phenethyl butyrate) (line 388)
- l-linalool (line 166)
- ethyl lactate (line 152)
- hexyl acetate (line 140)
- alpha terpineol (lines 330)
- butyric acid (line 248)
- decanoic acid (line 250)
- ethyl butyrate (line 142)
- ethyl isobutyrate (line 143)
- ethyl hexanoate (line 145)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 70
OSSOLA is silent as to using additional VOCs, as claimed.
TAICHI teaches the following compounds serve as flavoring agents in alcoholic beverages:
1-propanol (lines 162-163)
2-nonanone (line 188)
benzaldehyde (line 177)
benzyl alcohol (line 166)
citronellol (line 328)
damascenone (line 349)
diethyl malate (line 265)
ethyl acetate (line 138)
ethyl myristate (line 150)
hexanoic acid (line 249)
isobutanol (line 313)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claims 71-72
OSSOLA is silent as to using additional non-volatile compounds, as claimed.
TAICHI teaches the addition of vanillin as flavor (line 319).
It would have been obvious to one skill in the art to add the vanillin of TAICHI to the references above as they are flavoring imparting agents.
Claim 73
OSSOLA is silent as to using non-volatile compounds.
TAICHI teaches at line the following nonvolatile compounds can be added as a flavoring agents:
- malic acid (lines 271)
- succinic acid (lines 272-273)
- tartaric acid (line 271)
- lactic acid (line 273
- citric acid (lines 271)
- sorbitol (line 298)
- fructose (line 285)
- glucose (line 285)
- mannitol (line 298)
- fumaric acid (lines 274)
It would have been obvious to one skill in the art to add the non-volatile compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 89
At the outset, it is noted that the claimed invention is directed a moscato replica. Thus, the goal of the invention is to remake or copy a known beverage.
OSSOLA teaches a moscato wine with ethanol and water (see Table 5). OSSOLA also teaches that the wine has pleasant nuances of fruit and flowers (i.e., grapes – See Introduction).
While OSSOLA teaches the importance of adding fruit and floral notes to moscato, OSSOLA is silent as to additional alcohols and aldehydes or ketones.
The references above are silent as to adding additional claimed VOCs.
TAICHI teaches flavoring agents for alcoholic beverages such as beer (abstract).
TAICHI teaches adding i) diethyl succinate (line 154), ii) nonanal (line 177), iii) methyl cyclopentenolone which is a synonym for cycloten (line 316), iv) phenethyl propionate which is a synonym of phenethyl propanoate (line 385) and v) phenethyl butyrate which is a synonym of phenethyl butanoate (line 388) as a flavor imparting agent.
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents. It would have been obvious to vary their amount based on their desired taste.
The claimed invention is a recipe for producing an alcoholic beverage. The applicant is respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
Claim 90
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- benzyl alcohol (line 166)
- camphor (line 331)
- propanol (line 313)
- ethyl valerate (i.e., also known as ethyl pentanoate) (line 389)
- gamma decalactone (line 586)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 91
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- phenylacetaldehyde (line 178)
- octanoic acid (line 250)
- alpha-terpineol (line 314)
- ethyl butyrate (line 142)
- phenethyl acetate (line 384)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claim 92
OSSOLA is silent as to adding the additional claimed VOCs.
As noted above, TAICHI teaches known flavoring agents for alcoholic beverages.
TAICHI teaches that the following compounds are known flavoring agents –
- butanol (line 163)
It would have been obvious to one skill in the art to add the compounds of TAICHI to the references above as they are flavoring imparting agents.
Claims 93-95
OSSOLA teaches a moscato wine with ethanol and water (see Table 5). OSSOLA also teaches that the wine has pleasant nuances of fruit and flowers (i.e., grapes – See Introduction). 2
It would have been obvious that a concentrate would have a higher amount of compounds so that when diluted the compound are in an amount typically found in beverages. . It would have been obvious to vary their amount based on their desired taste.
Claim 68 is rejected under 35 U.S.C. 103 as being unpatentable over OSSOLO and TAICHI as applied to claim 55 above, and further in view of Winter et al., Contribution of cysteine and glutathione conjugates to the formation of the volatile thiols 3-mercaptohexan-1-ol (3MH)and 3-mercaptohexyl acetate (3MHA) during fermentation by Saccharomyces cerevisiae, The Australian Wine Institute, 2011 (WINTER).
The references above are silent as to adding 3-mercaptohexyl acetate (3MHA). However, WINTER teaches that 3MHA is a major contributing compound to the aroma of wine (abstract). It would have obvious to add 3-MHA to the references above, as the compounds contributes to wine aroma.
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive.
At the outset, it is noted that VRHOVSEK is no longer cited.
The applicant does argue that TAICHI is directed to beer. However, while TAICHI does teach these VOCS can appear in beer, TAICHI shows that the claimed VOCs are known flavor compounds that appear in alcoholic beverages. It would have been obvious to provide known flavor compounds in alcoholic beverages to an alcoholic beverage.
Moreover, it is noted that none of the claims recite amounts for these known flavor compounds. Thus, the presence of trace amounts of these compounds satisfy the recitation of these claims.
Given that the claimed invention is an alcoholic beverage reciting known flavor compounds that are found in alcoholic beverages, it respectfully submitted that the citation of In re Levin is proper. The applicant is also respectfully reminded that while food items are patentable, the culinary creativity of chefs is not the type of creativity which meets the standards for patentability. See General Mills v. Pillsbury Co.,378 F.2d 666 (8th Cir.1967) (first commercially successful one step mix for angel food cakes is not patentable because of nonobviousness standard since alleged invention is only the exact proportion of an already known leavening agent). In this regard, courts have taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In re Levin, 178 F.2d 945, 948 (C.C.P.A.1949) (butter substitute not patentable).
The applicant argues that WINTER does not remedy the deficiencies of the OSSOLA, VRHOVSEK and TAICHI.
VRHOVSEK is not cited and the rejection of OSSOLA and TAICHI is proper for the reasons noted above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP A DUBOIS whose telephone number is (571)272-6107. The examiner can normally be reached M-F, 9:30-6:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at 571-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP A DUBOIS/Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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