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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication No. 2019/0112564 (CYZEN).
As to claims 1 and 3, CYZEN teaches an alcoholic beverage that comprises inorganic salts/electrolytes such as sodium chloride and sodium bicarbonate [0042]. A distilled spirit such as vodka [0019]. If bottled, the vodka is bottled at 40 % alcohol by volume, that is , 80 proof [0019].
As to claims 4-5, single or multiple flavors can be added [0017]. In [0053], an 80 proof vodka is added with honey, and ginger. It is noted that claim 4 uses the transitional phrase “comprising”. Thus, additional flavors can be added.
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.
Claim(s) 2, 6-8, 14 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over CYZEN as applied to claim 1 above, and further in view of US2010/0183736 (HAYS).
As to claim 2, CYZEN teaches an alcoholic beverage that contains distilled spirits such as vodka [0018].
CYZEN teaches the alcoholic beverage can contain electrolytes [0042] but silent as to using electrolytes such as potassium chloride, potassium bicarbonate and potassium phosphate. CYZEN is also silent as to what amount of electrolytes to add.
[0036] of HAYS teaches that the electrolytes can be added in amount of 10mg/8oz (0.01 g/236 ml; 8oz water = 236ml) which equals 0.004 %w/v to 500mg/8oz (0.5g/235ml) which equals 0.2 % w/v (i.e., at least 0.02% as claimed).
As to claims 6-8, 14 and 19, HAYS teaches that electrolytes can be used in beverages to relieve hangover symptoms (abstract, [0010], [0036]). In particular, the multiple electrolytes can be added in the form of a salt such as sodium chloride, sodium bicarbonate, potassium chloride, potassium bicarbonate and potassium phosphate (abstract, [0036], [0010]). Thus, it would have been obvious to one skilled in the art to add electrolyte salts to a beverage composition, and especially an alcoholic beverage composition to inhibit hangovers.
As to the recited amounts, HAYS teaches that the electrolytes can be added in amount of 10mg/8oz (0.01 g/236 ml; 8oz water = 236ml) which equals 0.004 %w/v to 500mg/8oz (0.5g/235ml) which equals 0.2 % w/v (i.e., at least 0.02% as claimed). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05. Thus, the claimed ranges for the electrolytes of claims 6-8, 14 and 19 are obvious given the disclosed ranges of HAYS in [0036].
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).
Claim(s) 9-13, 15-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CYZEN and HAYS as applied to claim 2 above, and further in view of United States Patent No. 5,830,523 (TAKAICHI).
Claims 9-13, 15-18 and 20 recite additional electrolytes along with their respective ranges.
CYZEN teaches an alcoholic beverage [0018] that may comprise inorganic salts/electrolytes such as sodium chloride and sodium bicarbonate [0042].
CYZEN is silent as to the amount of electrolytes.
HAYS teaches that the electrolytes can be added in amount of 10mg/8oz (0.01 g/236 ml; 8oz water = 236ml) which equals 0.004 %w/v to 500mg/8oz (0.5g/235ml) which equals 0.2 % w/v. It would have been obvious to add electrolytes within this range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Moreover, it would have been obvious to one of ordinary skill in the art to select any portions of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art references, particularly in view of the fact that; "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set percentage ranges is the optimum combination of percentages" In re Peterson 65 USPQ2d 1379 (CAFC 2003). Also In re Malagari, 182 USPQ 549,533 (CCPA 1974) and MPEP 2144.05.
CYZEN and HAYS are silent as to adding sodium aspartate and potassium aspartate.
As to col. 2, lines 18-46, TAKAICHI teaches that inorganic electrolytes can be incorporated into beverage compositions to provide inorganic electrolyte cations and anions. Inorganic electrolytes are typically present as salts of inorganic acids. These salts are usually used in combination with sodium or potassium salt. Examples of useful salts of organic acids include aspartic acid. Given TAKAICHI teaches the addition of aspartic acid and that these organic acids can be in the form of sodium and potassium salts, it would have been obvious to use sodium aspartate and potassium aspartate.
Thus, it would have been obvious to one skilled in the art to use potassium aspartate and sodium aspartate in the beverages above to provide inorganic electrolyte cations and anions. Given HAYS teaches that the electrolytes can be added in amount of 10mg/8oz (0.01 g/236 ml; 8oz water = 236ml) which equals 0.004 %w/v to 500mg/8oz (0.5g/235ml) which equals 0.2 % w/v, it would have been obvious to add electrolytes within the claimed ranges.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,227,722 (722 Patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the present application and that of the 722 Patent are both directed to electrolyte enhanced spirits. As to claims 1-2, and 6-20, the 722 Patent recites similar electrolytes (i.e., a combination of sodium chloride, sodium bicarbonate, potassium chloride, potassium bicarbonate, and potassium phosphate in a close-ended claim utilizing the transitional phrase “consisting of”) in similar amounts, respectively. It would have been obvious that the electrolytes of the 722 Patent could be added to alcoholic beverages comprising other ingredients. For example, as to claims 4-5, it would have been obvious to add one more flavors to an alcoholic beverage.
Conclusion
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
