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 § 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 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Calamari (Small non-alcoholic beer, Cookpad, 2012; made of record by applicant).
Regarding claim 1, Calamari teaches a method for producing a beer-taste beverage comprising a mixing step of mixing a beer-taste stock solution, e.g. the “hoppy”, and an edible aqueous solution, e.g. the carbonated water (page 1).
With respect to both the beer-taste stock solution and the edible aqueous solution being at a temperature of 3-15 C, Calamari teaches that both the hoppy and carbonated water are chilled in the refrigerator before mixing. It is well known in the art that refrigeration temperatures overlap the claimed temperature of 3-15 C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to chill both the hoppy and carbonated water to a desired chilled temperature depending on the desired temperature of the mixed product. As Calamari already teaches chilling both components, determining the optimum temperature is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: 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)
Regarding claim 3, Calamari teaches that the mixing step is performed in an open container (e.g. poured into a glass, page 1).
Regarding claim 4, Calamari fails to specifically teach that the open container, or glass, have a volume of 3 L or less. However, it is well known in the art that a “glass” for pouring a beverage is less than 3 L. It would have been obvious to one of ordinary skill in the art to use a glass that is less than 3 L depending on the amount of beverage desired to be consumed.
Regarding claim 5, Calamari teaches that the edible aqueous solution is carbonated water and is therefore an aqueous solution containing carbon dioxide (page 1).
Regarding claim 6, Calamari teaches a beer-taste beverage produced by the production method of claim 1 (page 1).
Regarding claim 7, Calamari teaches a method for providing a beer-taste beverage comprising mixing a beer-taste stock solution, e.g. the “hoppy”, and an edible aqueous solution, e.g. the carbonated water, and providing a mixture thereof (page 1).
With respect to both the beer-taste stock solution and the edible aqueous solution being at a temperature of 3-15 C, Calamari teaches that both the hoppy and carbonated water are chilled in the refrigerator before mixing. It is well known in the art that refrigeration temperatures overlap the claimed temperature of 3-15 C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to chill both the hoppy and carbonated water to a desired chilled temperature depending on the desired temperature of the mixed product. As Calamari already teaches chilling both components, determining the optimum temperature is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: 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)
Regarding claim 8, Calamari teaches a raw material set for producing a beer-taste beverage comprising a beer-taste stock solution, e.g. the “hoppy”, and an edible aqueous solution, e.g. the carbonated water (page 1).
With respect to both the beer-taste stock solution and the edible aqueous solution being at a temperature of 3-15 C, Calamari teaches that both the hoppy and carbonated water are chilled in the refrigerator before mixing. It is well known in the art that refrigeration temperatures overlap the claimed temperature of 3-15 C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to chill both the hoppy and carbonated water to a desired chilled temperature depending on the desired temperature of the mixed product. As Calamari already teaches chilling both components, determining the optimum temperature is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: 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)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Calamari (Small non-alcoholic beer, Cookpad, 2012; made of record by applicant) as applied to claim 1 above, and further in view of Peirsman (WO 2018/100107 A1; June 7, 2018; made of record by applicant).
Regarding claim 2, Calamari discloses the method as described above with respect to claim 1. Calamari further teaches that the carbonated water is 1/3 of your glass and the hoppy is 2/3 of your glass. Therefore, the weight ratio of edible aqueous solution to beer-taste stock solution as taught by Calamari is 0.5 (1:2), which falls outside the claimed range of 1.5-7.0.
Peirsman discloses a method of producing a beer taste beverage by mixing a beer-taste concentrate with carbonated water ([0001]). Peirsman further teaches a ratio of carbonated water to concentrate of 3:1 (page 4 line 30, [0018]), thus falling within the claimed range of 1.5-7.0.
As Peirsman teaches that it is well known in the art to provide a beverage having a ratio of carbonated water to beer stock solution within the claimed range, it would have been obvious to one of ordinary skill in the art to use a similar ratio in the method of Calamari. One of ordinary skill in the art would have been motivated to vary the ratio of that in Calamari to that taught by Peirsman depending on the desired taste of the beverage. Using a higher amount of carbonated water in Calamari would provide a less hoppy beer taste and would have been obvious if such taste was desired. This is merely routine experimentation that is well within the ordinary skill in the art.
As stated in MPEP 2144.05: 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)
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-10 and 12 of copending Application No. 18/870,067 (reference application) in view of Calamari (Small non-alcoholic beer, Cookpad, 2012; made of record by applicant).
Although the claims at issue are not identical, they are not patentably distinct from each other because both make claim to a beer taste beverage and method of producing such by mixing a beer-taste stock solution and an edible aqueous solution in a similar ratio, in an open container that is less than 3 L, and wherein the aqueous solution contains carbon dioxide.
With respect to the both the beer-taste stock solution and the edible aqueous solution being at a temperature of 3-15 C, Calamari teaches that both the hoppy and carbonated water are chilled in the refrigerator before mixing. It is well known in the art that refrigeration temperatures overlap the claimed temperature of 3-15 C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
It would have been obvious to chill both the beer-taste stock solution and the edible aqueous solution to a desired chilled temperature depending on the desired temperature of the mixed product. As Calamari already teaches chilling both components, determining the optimum temperature is merely routine experimentation that is well within the ordinary skill in the art. As stated in MPEP 2144.05: 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)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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