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 of Group I, claims 1-11 and 13 in the reply filed on July 22, 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)).
Claim 12 is subsequently withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim.
Claim Status
The status of the claims upon entry of the present amendments stands as follows:
Pending claims:
1-13
Withdrawn claims:
12
Claims currently under consideration:
1-11, 13
Currently rejected claims:
1-11, 13
Allowed claims:
None
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 9 is objected to because of the following informalities: “FEMA GRAS” should be written out as “Flavor and Extract Manufacturers Association Generally Recognized as Safe (FEMA GRAS)”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites the glassy matrix (B) containing at least one carbohydrate and at least one substance selected from the claimed acids, which increases the load of encapsulate (A). All of the limitations of claim 7 are currently present in claim 1, upon which claim 7 depends. Although claim 7 recites the transition word “containing” instead of comprising, MPEP §2111.03(I) states “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.” As such, claim 7 is interpreted to be open-ended. Thus, claim 7 does not further limit the scope of claim 1, upon which claim 7 depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-7, 9-11, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Zasypkin (US 2011/0256199 A1)(IDS Reference filed 08/29/2024) and Dahlberg (US 2015/0197472 A1).
Regarding claim 1, Zasypkin teaches a method of encapsulating flavor compounds in a glassy state (Abstract) comprising:
Suitable flavoring agents include spices and herbs, which include hops ([0070]) and hops extract (i.e., an encapsulate containing hop oil extract; [0077]);
wherein the flavor compound is encapsulated in a glassy matrix ([0002]);
Zasypkin also teaches that the matrix comprises 40-90% maltodextrin ([0045]), which overlaps with the claimed range of “85 to 99% by weight”;
Wherein the spice or herb (i.e., the hop extract) is included in an amount of 5 to 40% by weight ([0045]), which overlaps with the claimed range of “4 to 15% by weight”;
Wherein the glassy extrusion composition contains less than 10% of water ([0050], which matches the claimed range of “water content below 10%”;
Wherein the composition is subjected to hot melt extrusion ([0002]) then cooled ([0092]).
Zasypkin does not teach wherein the glassy matrix comprises 0.5 to 5% by weight of at least one substance selected from isoalpha acids, tetrahydro- isoalpha acids. hexahydro-isoalpha acids, humulinones, hulupones and other modified or oxidized derivatives from alpha and/or beta acids and their salt forms or wherein the load of the encapsulate is increased due to the presence of isoalpha acids, tetrahydro- isoalpha acids. hexahydro-isoalpha acids, humulinones, hulupones and other modified or oxidized derivatives from alpha and/or beta acids and their salt forms.
However, in the same field of endeavor, Dahlberg teaches that humulones and other alpha acids are used as the main bittering agent in brewing methods and are thought to be responsible for other beneficial effects of beer ([0002]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the composition of Zasypkin with the use of alpha and beta-acids as taught by Dahlberg. One of ordinary skill would have been motivated to make this modification because Dahlberg teaches that the compounds used as the main bittering agent in brewing methods and are thought to be responsible for other beneficial effects of beer ([0002]).
Although the cited prior art does not teach the amount of alpha- or beta-acids to add to the composition, Therefore, one of ordinary skill in the art would have adjusted the amount of alpha- and/or beta-acids during routine optimization to arrive at the amount of acid to impart the desired bitterness and health profile. MPEP §2144.05(II) states generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The claimed range would thus be obvious.
Although the cited prior art does not explicitly teach wherein the load of the encapsulate is increased due to the presence of isoalpha acids, tetrahydro- isoalpha acids. hexahydro-isoalpha acids, humulinones, hulupones and other modified or oxidized derivatives from alpha and/or beta acids and their salt forms, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Additionally, the instant application teaches that the use of hop acids has been found to increase the loading of the encapsulate compared to a glassy matrix that does not contain hop acids ([0002]). Thus, the composition of Zasypkin in view of Dahlberg would inherently have this property.
The recitation “for providing flavor and aroma, but organoleptically insignificant bitterness to beer” is interpreted as the intended use of the claimed invention. Because the intended use does not result in a manipulative difference to the composition as claimed, the recitation does not carry patentable weight. The composition of Zasypkin in view of Dahlberg would be capable of performing the recited intended use because the composition of the prior art is the same as that of the claimed invention.
Regarding claim 2, although the cited prior art does not explicitly teach that the composition decreases turbidity upon dispersion of the encapsulate in the aqueous media, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Additionally, the instant application teaches that the use of hop acids has been found to increase the loading of the encapsulate compared to a glassy matrix that does not contain hop acids ([0002]). Thus, the composition of Zasypkin in view of Dahlberg would inherently have this property.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantialy identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the composition of the cited prior art is substantially identical in structure to that of the claimed invention, the claimed composition is obvious.
Regarding claim 3, although the cited prior art does not teach wherein the glassy matrix has a positive impact on the foam stability upon addition of the encapsulate to non-alcohol and alcoholic beverages, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Additionally, the instant application teaches that the use of hop acids has been found to increase the loading of the encapsulate compared to a glassy matrix that does not contain hop acids ([0002]). Thus, the composition of Zasypkin in view of Dahlberg would inherently have this property.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantialy identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the composition of the cited prior art is substantially identical in structure to that of the claimed invention, the claimed composition is obvious.
Regarding claim 4, Zasypkin teaches that the advantages of retaining the glass form in the matrix includes reduction of oxidation ([0029]). Additionally, this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Additionally, the instant application teaches that the use of hop acids has been found to increase the loading of the encapsulate compared to a glassy matrix that does not contain hop acids ([0002]). Thus, the composition of Zasypkin in view of Dahlberg would inherently have this property.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantialy identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the composition of the cited prior art is substantially identical in structure to that of the claimed invention, the claimed composition is obvious.
Regarding claims 5 and 6, although the cited prior art does not teach wherein said glassy matrix does not impart any noticeable bitterness increase (a BU of 0 as recited in claim 6 would be recognized by one of ordinary skill to be no noticeable bitterness), this is an inherent property of the composition as claimed. MPEP §2112.01(II) states that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the applicant discloses and/or claims are necessarily present. Additionally, the instant application teaches that the use of hop acids has been found to increase the loading of the encapsulate compared to a glassy matrix that does not contain hop acids ([0002]). Thus, the composition of Zasypkin in view of Dahlberg would inherently have this property.
Additionally, MPEP §2112.01 states where the claimed and prior art are identical or substantialy identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Because the composition of the cited prior art is substantially identical in structure to that of the claimed invention, the claimed composition is obvious.
Claim 7 is rejected under 35 USC 112(d) for failing to further limit the claim upon which it depends. Claim 1 is rejected above as being obvious over Zasypkin in view of Dahlberg. Thus, claim 7 is also rendered obvious.
Regarding claim 9, Zasypkin also teaches that the flavor compounds can further include multiple spices, herbs, fruits, berries, and essential oils ([0077]).
Regarding claim 10, Zasypkin teaches that the extrusion encapsulation composition is prepared by adding water as a plasticizer ([0046]-[0048]).
Regarding claim 11, Zasypkin also teaches adding an emulsifier to the lipophilic phase (i.e., the encapsulate; [0079]).
Regarding claim 13, Zasypkin modified by Dahlberg teaches the extrusion encapsulation composition of claim 1 as described above. Zasypkin also teaches adding the encapsulation to water (i.e., a beverage; [0004]). Thus, Zasypkin discloses a beverage comprising the encapsulation composition.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zasypkin (US 2011/0256199 A1)(IDS Reference filed 08/29/2024) and Dahlberg (US 2015/0197472 A1) evidenced by Rutnik (Rutnik, Ksenija, et al. “Changes in Hop (Humulus lupupus L.) Oil Content and Composition during Long-Term Storage under Different Conditions”, Foods, 11, 3089, published October 5, 2022 [accessed online August 11, 2026]).
Regarding claim 8, although Zasypkin does not teach that the hop oil fraction comprises one component generated by chemical or biochemical transformation or conversion of a hop oil component, any hop oil used for the process would inherently possess a component generated by chemical or biochemical transformation or conversion. Evidence to support that any hop oil used for the process would inherently possess a component generated by chemical or biochemical transformation or conversion is provided by Rutnik. Rutnik discloses that during storage, hop oil chemical composition undergoes chemical changes that impact its quality (Abstract) and that regardless of temperature, losses of chemical compounds were similar if any oxygen was present (p. 10, ¶ 1). Unless the entirely of the process of Zasypkin in view of Dahlberg was carried out in the absence of oxygen, the hop oil extract of the cited prior art would inherently have a hop oil fraction that comprises one component generated by chemical or biochemical transformation or conversion of a hop oil component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda S Hawkins whose telephone number is (703)756-1530. The examiner can normally be reached M-Th 8:00a-4:00p, F 8:00a-1:00p ET.
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/A.S.H./Examiner, Art Unit 1793
/Michele L Jacobson/Primary Examiner, Art Unit 1793
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