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 .
DETAILED ACTION
Status of Claims
Claims 1-14 are pending and currently under examination and the subject matter of the present Office Action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/27/2026, 05/19/2025, and 12/19/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
Double Patenting
Claim 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of Claim 6. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). While no claims have yet been found allowable, the Examiner noted both Claims 6 and 8 depend from Claim 5 and requires “wherein the alcoholic beverage to be imbibed at low temperature comprises 50 wt% or more of cryohydrates each having a major axis length of from 0.05 mm to 1.5 mm, and the cryohydrates are perceived at a time of imbibition thereof”.
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 1-12 and 14 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 1 and 5 recite “wherein the alcoholic beverage to be imbibed at low temperature comprises bubbles to have fluidity at a temperature of from -20°C to -2°C” which is indefinite. As written, it is unclear if the fluidity is in reference to the bubbles or the alcoholic beverage. For compact prosecution, the claim will be interpreted to mean that the fluidity refers to the alcoholic beverage. All claims depending from Claims 1 and 5 are also rejected for indefiniteness.
Claims 2, 4, 6, and 8 are indefinite for the recitation of “50% or more”, which appears to shift the range to include above the required 85% maximum weight of cryohydrate in Claims 1 and 5, from which these claims depend.
Claim 14 requires to further comprise “a step of hardening the resultant”, which appears to be missing a word, phrase, or something else. It is therefore unknown if additional features have been left out. As such, the claim is rejected. Appropriate correction is required.
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 is indefinite because it purports not to require both features of agar and mannan by reciting “at least one of the mannan or the agar”. However, independent Claim 5, from which Claim 7 depends, requires both mannan and agar.
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 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 1-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Masuda, G. (US 2007/0248736 A1, cited in the IDS), hereinafter Masuda, as evidenced by Mudgil et al. (J Food Sci Technol (August 2014) 51(8):1600–1605), hereinafter Mudgil.
Masuda discloses an alcoholic beverage that has fluidity at -15° to -2°C. and comprises fine ice pieces and bubbles and is produced by mixing an alcoholic beverage base mix containing alcohol and at least one type of water-soluble substance with ice pieces (Abstract; Claim 1).
Regarding Claims 1 and 12, Masuda expressly teaches the preparation of an alcoholic beverage base mix comprising mixing and warming 400 g sugar, 1 g carrageenan, 2 g milk protein digest, and 1273 g water up to 85°C.; the mixture is rapidly cooled in ice water; 324 g of vodka was added to this mixture, and the mixture further diluted to obtain 2 kg total of alcoholic beverage base mix [0048]. Fine ice pieces were prepared by shaving 4 kg of ice pieces, which were stored under conditions of -35°C., pulverized with a hammer, and sifted to obtain fractures with a length less than about 0.8 mm, and then further sifted using a sieve with an aperture of 0.1 mm to obtain 3400 g of fine ice pieces with a size greater than 0.1 mm but less than 0.8 mm [0049]. Finaly, the alcoholic beverage is prepared by mixing the fine ice pieces (size of 0.1 mm to 0.8 mm) with 2 kg of a product kept in a thermostatic bath of -10°C. and 2 kg of an alcoholic beverage base mix cooled at -3°C., and aerated, agitated and cooled to obtain 3700 g of alcohol containing half-frozen fine ice pieces with an air content of 20% by volume [0050]. The fine ice pieces have a major axis length of 0.06 mm to 0.8 mm were present in an amount of 90% by weight of the total ice pieces, which is near the claimed range of 10-85% cryohydrates, and an alcoholic beverage containing half-frozen fine ice pieces with a volume fraction of 20% was rendered as Sample 1 [0050]. As such, the claimed amount ranges for the alcohol and cryohydrates and the claimed axis length of cryohydrate have been rendered obvious by Masuda.
Regarding the agar, Masuda does not teach examples with agar. However, Masuda teaches an embodiment wherein stabilizers such as a polysaccharide thickener, pectin, gelatin, and agar are added [0036]. These stabilizers add smooth feeling of drinking to the alcoholic beverage of the present invention and prevent worsened mouthfeel and reduced fluidity attributable to coarsened ice crystals during frozen storage; the kind of stabilizer used determines the loadings but preferably prevents such high viscosity to preclude the use of straw, and gelatinization [0036].
Masuda expressly teaches incorporating carrageenan, which is also a polysaccharide thickener, in its samples (Table 1). Therefore, it would also have been prima facie obvious to one of ordinary skill in the art before the effective filing date to substitute the carrageenan with any polysaccharide thickener, starting with those recognized by Masuda, inter alia agar. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. See MPEP 2143. One would also start with the polysaccharide amount used by Masuda, and optimize as needed. One would use 1 g agar in place of 1 g carrageenan in a sample having a total weight of 4000 g, which gives 0.025%, and then optimizing the amount for agar depending on the gelling observed, and lowering the amount if gelatinization is observed.
Regarding Claim 2, Masuda has taught fine ice pieces having a major axis length of 0.06 mm to 0.8 mm were present in an amount of 90% by weight of the total ice pieces [0050]. Masuda also expressly teaches fine ice pieces with a major axis length of 0.06 mm to 0.8 mm present in an amount of 85% by weight of the total to obtain an alcoholic beverage containing semi-frozen fine ice pieces with a volume fraction of 40% and a mixture temperature of -9.5° C (Example 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding the claimed feature of the cryohydrates being perceived at a time of imbibition, Masuda teaches that it is desirable to drink the alcoholic beverage of the present invention at a temperature of -15° C. to -2° C, and that the shape of the ice pieces provides a smooth feeling of swallowing and pleasant sensation of coolness ([0043]-[0044]; Table 1). Furthermore, Masuda requires that the fine pieces are sensed, which reads on the claimed perception (Claim 1).
Regarding Claims 3-4, Masuda expressly teaches mixing ice pieces with an alcoholic beverage base mix and at a weight ratio of from 19:81 to 81:19 (Table 2); teaches aeration, stirring, and cooling so that a volume fraction of a gas up to 150% (Table 5; Claim 1). Regarding the claimed feature “wherein 80 wt% or more of the ice pieces each have a major axis length of from 0.01 mm to 5.0 mm and a product temperature thereof becomes less than -1°C”, Masuda teaches wherein fine ice pieces, with a major axis length of 0.06 mm to 0.8 mm, are present in an amount of at least 80% by weight of the total ice pieces present, so that at least part of the fine ice pieces are sensed (Claim 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding Claims 5 and 13, Masuda teaches the sugar solution comprising 0.2 kg guar seed gum in a 200 kg grapefruit-flavored alcoholic base mix; one part of this sugar mixture is mixed with one part shaved ice to give 0.05% guar seed gum in the mixture (Example 1). Guar seed gum, more commonly called guar gum, contains 83.64 % of galactomannan as evidenced by Mudgil (p. 1601, Materials and methods, Physicochemical analysis section). As such, galactomannan at ~0.04% is within the claimed range.
Masuda does not expressly teach the combination of agar and guar gum. However, as a general principle it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose, the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) MPEP 2144.06.
Further, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows:
This court has 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 all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221.
Therefore, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Note: MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
The patentable features in instant Claims 6-8 have been set forth supra.
Further regarding Claims 3 and 7, these are product-by-process claims, however, patentability is based on the product itself. If the product is the same as a product from the prior art, the claim is unpatentable. The MPEP indicates that the process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences' distinguishing the claimed product from the prior art”. See MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The MPEP also indicates that “the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it.” Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1369 (Fed.Cir.2009). The process of making is only relevant “if the process by which a product is made imparts ‘structural and functional differences' distinguishing the claimed product from the prior art” Greenliant Systems, Inc. v. XicorLLC, 692 F.3d 1261, 1268 (Fed. Cir. 2012).
Regarding Claim 9, Masuda teaches addition of stabilizers to add smooth feeling of drinking to the alcoholic beverage and prevent worsened mouthfeel and reduced fluidity attributable to coarsened ice crystals during frozen storage [0036].
Regarding Claim 10, Masuda teaches the alcoholic beverage further comprising at least one or more products selected from the group consisting of fruit juice, fruit, sarcocarp, mesophyll. nuts, seeds, and gel-like food mixed with the alcoholic beverage base mix (Claims 6 and 12). Masuda expressly teaches incorporating grapefruit juice and lemon juice in Examples 1 and 2, respectively.
Regarding Claim 11, the Examiner notes that how or where one stores the alcoholic beverage does not materially affect the composition unless shown otherwise. It is the Applicant’s burden to show that the plugged container is also an integral part of the claimed. See MPEP 2106.07(a). Applicant is further reminded that product claims are examined based on the components and not by what is done to the product, i.e. “loaded into a plugged container” in this case.
Regarding Claim 14, Masuda teaches hardening of its examples ([0054], Table 1, Test Example 3; Example 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Tako et al. (Agric. BioI. Chern., 52 (4), 1071-1072, 1988) teaches synergistic interaction between galactomannan and agarose, as well as with carrageenan.
Kawashima, S. (JP51002994B) teaches a method for producing solid alcoholic beverage that can be picked up and eaten, wherein the alcoholic beverage comprises agar-agar.
Van Bendeden et al. (US 2020/0157481 A1) relates the invention of an alcoholic beverage comprising xanthan and a galactomannan.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANICE Y SILVERMAN whose telephone number is (571)272-2038. The examiner can normally be reached on M-F, 10-6 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached on (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JANICE Y SILVERMAN/Examiner, Art Unit 1792
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