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 .
Status of the Application
Claims 1-20 filed in a preliminary amendment on 9/27/2024 are pending in the application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/27/2024 was filed before the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 14 and dependent claims 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 14 recites the use of dried malted cereals without method steps of using, rendering the claim indefinite. Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US2006/008995A1) cited in an IDS, in view of generally known method steps in making malt.
Regarding claims 1,2 and 13, Smith discloses a method of comprising providing cereals (barley for example), adding an infusible material (tea) which is an aromatic flavoring herb and malting comprising at least one steeping step, at least one germination step and at least one drying step (Fig 1) to produce flavored malted cereal.
Smith does not specifically disclose separating at least one solid infusible material from the dried flavored malted cereals. However, solid materials such as rootlets are routinely separated from dried malt (deculming) in preparing malt for use in making beverages. As Smith discloses flavoring cereals during a steeping and germination step, it would have been obvious to one of ordinary skill in the art using solid infusible materials to flavor malt to have included a separation step to remove spent materials after flavor is extracted into the malt during steeping and germination, with a reasonable expectation of success.
Regarding claim 3, 15, Smith discloses adding infusible material at an exemplary ½ lb per 5 lb of barley [0048] , corresponding to a ratio of 0.1:1 which falls within the claimed range.
Regarding claim 4,16, 17,18 Smith discloses that the infusible material is added either in any of the steps of steeping, germination and drying (Fig 1-4).
Regarding claim 6, Smith discloses adding tea extract (infused tea).
Regarding claim 7, pre-treatment as claimed is a routine step in preparing cereals for malting.
Regarding claims 8-12,19 and 20 the claimed methods of separation in separator devices having a set of sieves with varied pore sizes, are routinely applied in the art and would have been applied in separating infusible solids from malted barley in Smith with a reasonable expectation of success, absent a showing of unexpected results of such a separation step.
Regarding claim 14, Smith discloses a beverage comprising flavored malted grains (abstract, figures).
Claims 1-20 are therefore prima facie obvious in view of the art.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Subbalakshmi Prakash whose telephone number is (571)270-3685. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUBBALAKSHMI PRAKASH/Primary Examiner, Art Unit 1793
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