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 .
This office action is in response to an amendment received on July 20th, 2026.
The applicant has canceled claims 33-49 and added new claims 50-75.
Any objections or rejections not reiterated below are hereby withdrawn.
Claims 30-32 and 50-75 are pending and were examined on the merits.
Information Disclosure Statement
The examiner has reconsidered the information disclosure statements (IDSs) received on July 25th, 2025, to now consider certain U.S. patent applications (P4, P5, and P22 on page 6 of the IDSs) that were previously lined through. All references not lined through have been considered.
Withdrawal of Objections and Rejections
Applicant’s arguments, filed July 20th, with respect to the objections to the specification have been fully considered and are persuasive. The objection of the specification has been withdrawn. The applicant has filed amendments for the specification clarifying the meaning of the graph axes for figures 8A-8X, and recited trademarks and tradenames with corresponding symbols in the definitions section.
Applicant’s arguments, filed July 20th, 2026, with respect to the objections to claims 30 and 32 have been fully considered and are persuasive. The objections to claims 30 and 32 have been withdrawn. The applicant has amended claims 30 and 32 to resolve the informalities that warranted an objection.
The objection to claims 33-35 is withdrawn, these claims having been cancelled by the applicant.
The rejection of claim 49 under 35 U.S.C. 112(b) is withdrawn, this claim having been cancelled by the applicant.
The rejection of claims 33-35 under 35 U.S.C. 112(d) is withdrawn, these claims having been cancelled by the applicant.
The rejection of claim 49 under 35 U.S.C. 112(d) is withdrawn, this claim having been cancelled by the applicant.
The rejection of claims 36-42, 44, 46, and 47 under non-statutory double patenting has been withdrawn, these claims being canceled by the applicant.
The rejection of claims 36-42, 44, and 46-48 under 35 U.S.C. 103 has been withdrawn, these claims being canceled by the applicant.
Pending Objections and Rejections
Claim Objections
Claim 54 is objected to because of the following informalities: the claim recites the term "sprit", which should be spelled "spirit". Appropriate correction is required.
Claims 67 and 68 are objected to because of the following informalities: a degree symbol is missing where the applicant recites temperatures. For example. Other temperatures listed in claims 67 and 68 should follow this format. Appropriate correction is required.
Claim 70 is objected to because of the following informalities. The pressure range recited in claim 70, while Amendment of claim 70 to recite a pressure setting on a pressure cooker (Example 31) is suggested to avoid confusion with total physical pressure, if this is what the applicant means by “at least one pressure within said sealed container” in claim 70. Appropriate correction is suggested.
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.
The term “about” in claims 67-71 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Reaction temperature, pressure, and time, are rendered indefinite by the use of the term "about".
The term “substantially” in claim 63 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The conditions (if any) under which the reaction container is airtight, are rendered indefinite by the use of the term "substantially".
Claim 73 recites the limitation "at least on flavored extract of wood" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
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 30, 61-72, 74, and 75 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-15, 18, 19, 23-34, 38-48, 51, 52, and 55-66 of U.S. Patent No. 11781097. Although the claims at issue are not identical, they are not patentably distinct from each other because of the similarities stated the comparisons below.
Applicant's arguments filed July 20th, 2026 have been fully considered but they are not persuasive. Although claim 30 not recites wood from at least one barrel used for ageing at least one alcoholic beverage, i. Therefore, the wood recited in instant claim 30 step a) reasonably encompasses both wood that has been previously extracted with an aqueous ethanol, and wood that has not contacted an aqueous ethanol, but is intended for, or manufactured into a barrel for, ageing an alcoholic beverage. Therefore, in view of the language of instant claim 30, there is still overlapping subject matter supporting a non-statutory double patenting rejection over U.S. Patent No. 11781097 as recited below.
Independent instant claims 30, 74, and 75 and independent reference claims 1, 19, 35, and 52 each recite a method of making a flavored extract of wood comprising a) providing at least one sample of wood; encompassing wood that has not been previously extracted with and aqueous solution that includes water, ethanol, or a combination thereof; b) providing at least one aqueous solvent; wherein said at least one aqueous solvent does not include ethanol; c) providing at least one sealed container; d) providing at least one heat source (a heat source is not explicitly recited in instant claim 74, but within the knowledge of one of skill in the art to use to manipulate temperature upwards, within the scope of instant claim 74, step e); e) providing at least one pressure source (not explicitly recited in instant claim 74, but implied by a pressure condition in instant claim 74, step e); f) contacting said at least one sample of wood with said at least one aqueous solvent in said at least one sealed container to provide at least one reaction mixture; g) exposing said at least one reaction mixture to: 1) temperature; 2) pressure; and 3) time (it is broadly understood that all extractions involve a time duration); to provide at least one flavored extract of wood that does not include ethanol. Although barrel wood (instant claims 30 and 74) or wood that has been used for flavoring an alcoholic beverage (instant claim 75) is not explicitly recited in the reference claims, these types of wood are not recited in the instant claims as having properties that would materially distinguish it from the wood types recited in the reference. Specifically for the limitation of wood that has been used for flavoring an alcoholic beverage (instant claim 75), it is not clear that this wood has been previously extracted with an aqueous solution that includes water, ethanol, or a combination thereof (and therefore non-overlapping with the wood recited in reference claims 1, 19, 35, and 52).
Dependent instant claim 61 and dependent reference claims 5, 23, 38, 55 each recite the
aqueous solvent is water.
Dependent instant claim 62 and dependent reference claims 6, 24, 39, and 56 each recite the
aqueous solvent is filtered water, purified water, tap water, or a combination thereof.
Dependent instant claim 63 and dependent reference claims 7, 25, 40, and 57 each recite the
sealed container is substantially airtight, airtight, or a combination thereof.
Dependent instant claim 64 and dependent reference claims 8, 26, 41, and 58 each recite the
sealed container comprises a pressure cooker.
Dependent instant claim 65 and dependent reference claims 9, 27, 42, and 59 each recite the
heat source is a light source, a hot water source, a steam source, an electric source, a gas source, or (at
least) a combination thereof.
Dependent instant claim 66 and dependent reference claims 10, 28, 43, and 60 each recite the
pressure source is a pressure cooker, an autoclave, a sealed container, said at least one sealed
container, air pressure, water pressure, steam pressure, heat generated pressure, or (at least) a
combination thereof.
Dependent instant claim 67 and dependent reference claims 11, 29, 44, and 61 each recite the
temperature is between about 185 F and about 300 F.
Dependent instant claim 68 and dependent reference claims 12, 30, 45, and 62 each recite the temperature within said sealed container is between about 229 F and about 244 F.
Dependent instant claim 69 and dependent reference claims 13, 31, 46, and 63 each recite the
pressure is between about 0.5 atmospheres and about 10 atmospheres.
Dependent instant claim 70 and dependent reference claims 14, 32, 47, and 64 each recite the
Pressure within said sealed container is between about 5.8 psi and about 11.6 psi.
Dependent instant claim 71 and dependent reference claims 15, 33, 48, and 65 each recite the
reaction is run at a time between about 1 hour and about 6 days.
Dependent instant claim 72 and dependent reference claims 18, 34, 51, and 66 each recite the
flavored extract of wood is concentrated.
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 30-32 and 50-75 are rejected under 35 U.S.C. 103 as being unpatentable over
Malher-Besse and Chove (WO-2016046481-A1), abbreviated "Malher" below, and further in view of
Modernist Cuisine (How Pressure Cookers Work. https://modernistcuisine.com/mc/how-pressure-
cookers-work/).
Claim 30 recites a method of making a at least one flavored aqueous extract of wood, comprising: a) providing at least one sample of wood; wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one alcoholic beverage; b) providing at least one aqueous solvent; wherein said at least one aqueous solvent does not include ethanol; c) providing at least one sealed container; d) providing at least one heat source; e) providing at least one pressure source; f) contacting said at least one sample of wood with said at least one aqueous solvent to provide at least one reaction mixture in said at least one sealed container; to provide at least one reaction mixture; to provide at least one reaction; g) exposing said at least one reaction mixture to at least one set of conditions comprising: 1) at least one temperature; 2) at least one pressure; and 3) at least one period of time; h) reacting said at least one reaction mixture under said at least one set of conditions; reacting said at least one reaction mixture under said at least one set of conditions; to provide at least one flavored aqueous extract of wood that does not include ethanol. Claim 31 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing beer, wine, sake, mead, spirits, or any combinations thereof. Claim 32 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing whisky, scotch, tequila, mescal, rum, bourbon, or any combinations thereof. Claim 50 recites method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one beer. Claim 51 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one wine. Claim 52 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one sake. Claim 53 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one mead.
Claim 54 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one sprit. Claim 55 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one whisky. Claim 56 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one scotch. Claim 57 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one tequila. Claim 58 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one mescal. Claim
59 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one rum. Claim 60 recites the method of claim 30, wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one bourbon. Claim 61 the method of claim 30, wherein said at least one aqueous solvent is water. Claim 62 recites the method of claim 61, wherein said water is filtered water, purified water, tap water, or any combinations thereof. Claim 63 recites the method of claim 30, wherein said at least one sealed container is substantially airtight, airtight, or any combinations thereof, when in operation. Claim 64 recites the method of claim 30, wherein said at least one sealed container comprises a pressure cooker.
Claim 65 recites the method of claim 30, wherein said at least one heat source comprises a light source, a hot water source, a steam source, an electric source, a gas source, or any combinations thereof.
Claim 66 recites the method of claim 30, wherein said at least one pressure source comprises a pressure cooker, an autoclave, a sealed container, said at least one sealed container, air pressure, water pressure, steam pressure, heat generated pressure, or any combinations thereof. Claim 67 recites the method of claim 30, wherein said at least one temperature is between about 185 F and about 300 F. Claim 68 recites the method of claim 30, wherein said at least one temperature within said sealed container is between about 229 F and about 244 F. Claim 69 recites the method of claim 30, wherein said at least one pressure is between about 0.5 atmospheres and about 10 atmospheres. Claim 70 recites the method of claim 30, wherein said at least one pressure within said sealed container is between about 5.8 psi and about 11.6 psi. Claim 71 recites the method of claim 30, wherein said at least one period of time is between about 1 hour and about 6 days. Claim 72 recites the method of claim 30, further wherein said at least one flavored aqueous extract of wood is concentrated. Claim 73 recites the method of claim 30, wherein said at least one flavored extract of wood is flavored with said at least one sample comprising wood. Claim 74 recites a method of making at least one flavored aqueous extract of wood, comprising: a) providing at least one sample of wood; wherein said at least one sample of wood comprises wood from at least one barrel used for ageing at least one alcoholic beverage; b) providing at least one aqueous solvent; wherein said at least one aqueous solvent does not include ethanol; c) providing at least one sealed container; d) contacting said at least one sample of wood with said at least one aqueous solvent to provide at least one reaction mixture in said at least one sealed container; e) exposing said at least one reaction mixture to at least one set of conditions comprising:1) at least one temperature; 2) at least one pressure; and 3) at least one period of time; to provide at least one flavored aqueous extract of wood that does not include ethanol. Claim 75 recites a method of making at least one flavored aqueous extract of wood, comprising: a) providing at least one sample of wood; wherein said at least one sample of wood comprises at least one wood that has been used for flavoring at least one alcoholic beverage; b) providing at least one aqueous solvent; wherein said at least one aqueous solvent does not include ethanol; c) providing at least one sealed container; d) providing at least one heat source; e) providing at least one pressure source; f) contacting said at least one sample of wood with said at least one aqueous solvent to provide at least one reaction mixture in said at least one sealed container; g) exposing said at least one reaction mixture to at least one set of conditions comprising: 1) at least one temperature; 2) at least one pressure; and 3) at least one period of time; h) reacting said at least one reaction mixture under said at least one set of conditions; to provide at least one flavored aqueous extract of wood that does not include ethanol.
Applicant's arguments filed July 20th, 2026 have been fully considered but they are not persuasive. The arguments for
Malher recites:
“Process for treating pieces of wood and their use in the manufacture of wines and spirits, or wood
extracts, or wooden containers
The present invention relates to a method for treating pieces of wood, preferably oak, comprising a
particular heating step, as well as the oenological product obtained by this process and its use in the
manufacture of wines and spirits, wood and still barrels and barrels”. (Malher, Description, paragraphs 1
and 2).
Malher further recites:
“Pieces of wood intended especially for the production of wines and spirits and the preparation of wood
extracts can be obtained from logs and wooden blocks, as well as from by - products of the industry,
stonecutting and cooperage as pieces of wood unfit for the manufacture of staves, delignings, cuts and
decommissioned parts. The pieces of wood contain molecules that are extractable compounds allowing
the strengthening of the fruity notes, the contribution of woody aromas, the gain of complexity, of
sweetness and / or of tannic structure (hereinafter referred to as "molecules with enological interest ")”
(machine translation, page 2 of 9, lines 29-32 from the top, excluding the header and empty lines;
instant claims 30-32, 50-60, and 73-75).
It is not clear from the language of claims 30-32, 50-60, and 74 that the barrels recited therein were previously used for ageing an alcoholic beverage, so they are considered “cooperage”, broadly understood. It is also not clear from the language of claim 75 that the wood that has been used for flavoring at least one alcoholic beverage is materially distinct from the wood recited by Malher above.
It is not clear that Mahler teaches away from the instantly claimed invention in the following text, because it is not clear that the wood recited in claims 30-32, 50-60, 74, and 75, has previously contacted water, ethanol, or a mixture thereof:
“On the other hand, washing with non - toxic products, commonly used in oenology, such as water and ethanol, extracts few deviation markers, and at the same time extracts molecules with an interest in wine such as tannins, furan compounds or vanillin. This extraction depletes the pieces of wood and makes them not very effective for their initial purpose of use, namely in particular the contribution of woody flavors and sweetness. There is therefore a need for a method making it possible to obtain pieces of wood devoid of deflection markers while limiting the loss of molecules of enological interest, or still retaining their initial content. The Applicant has surprisingly found that the method of treating pieces of wood, preferably oak, comprising the following steps: (a) drying pieces of wood, (b) mechanical transformation, and (c) optionally heating, in which a heating step (d) is carried out under an inert atmosphere, at a temperature ranging from 30 to 120 ° C and at a pressure ranging from 1 to 60 MPa (10 to 600 bar), this step (d) being carried out after step (a), (b) or (c), overcame the disadvantages mentioned above” (machine translation, page 2 of 9 lines 1-8 from the bottom, and page 3 of 9 lines 1-3 form the top, excluding headers, footers, and empty lines; instant claims 30 (note: step a) and 73-75).
“For example, the oenological product, that is to say the pieces of wood that can be obtained with the method of the invention, …” (machine translation, page 5 of 9, line 1 from the top, excluding the header and empty lines); this quote makes of record the oenological product of Malher as pieces of wood that can be obtained with the method of the invention.
“Another use of the oenological product consists in bringing the pieces of wood obtainable with the
process of the invention into contact with water, one or more solvents such as ethanol, or a mixture
thereof. For example, the oenological product can be macerated in water, one or more solvents such as
ethanol, or a mixture thereof, then concentrated and dried by atomization, lyophilization or other
technique. This use leads to the manufacture of wood extracts” (machine translation, page 5 of 9, lines
6-8 from the top, excluding the header and empty lines; instant claims 30, 61, 62, 65, and 72).
Mahler explicitly recites temperature and time conditions for maceration of the oenological product, leading to the production of wooded waters:
“In another embodiment, the oenological product is macerated in boiling water, in particular at a temperature ranging from 80 to 100 ° C., preferably in an amount ranging from 0.5 to 100 g / l, more preferably 10 to 50 g / l of water. The duration of maceration can range from 1 hour to 24 hours, better from 6 to 12 hours. This last use leads to the production of wooded waters” (machine translation, page 5 of 9, lines 13-15 from the top, excluding the header and empty lines; instant claims 61, 62, 65, 67, and 71).
Although Mahler does not explicitly recite the alternatives “filtered water, purified water, tap
water, or any combinations thereof” as an extraction solvent; these are alternative forms of water
broadly known in the art, readily available for commercial use. Therefore, it would have been obvious to
one of skill in the art to select a form of water from among these recited in instant claim 62.
In response to applicant's argument that Mahler is deficient as to the claimed invention, with respect to the limitations of claim 30a, c, e, g, and f; specifically the type of wood used, the use of a sealed container to contain the reaction mixture, and subjecting the reaction mixture to temperature , pressure, and time, which produces at least one flavored extract of wood; the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, the maintained overlap between the wood type recited by Malher and that recited in the instant claims is clarified above. As recited below, there is motivation to modify the teachings of Malher for making an aqueous extract of wood by using a pressure cooker to contain the reaction mixture based on both the teachings of Modernist Cuisine and the knowledge of one of skill in the chemical arts. It is also within the knowledge of one of skill in the art that a pressure cooker would require a seal to avoid depressurization of its contents, as further clarified below.
Although Mahler does not teach each and every element of the claimed invention, and this renders the invention not anticipated by Malher, the deficiencies of Mahler alone are not sufficient to render the instantly claimed invention non-obvious over Malher in combination with the prior art reference Modernist Cuisine.
In response to applicant's argument that Modernist Cuisine is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Modernist Cuisine is relevant to understanding the physical capabilities of a pressure cook. Therefore, Modernist cuisine is relevant to the problem of optimizing the temperature and pressure conditions of aqueous extractions. For this reason, Modernist Cuisine is included as prior art reference, even though it does not recite the use of wood with an aqueous solvent to make a flavored aqueous extract of wood under the conditions of the present invention.
Although Malher does not explicitly recite preparing wood extracts or wooded waters in a
pressure cooker, one of skill in the art could have predicted that the pressure in a pressure cooker would
force association between solvent molecules, increasing the boiling point of the solvent to above that
under one atmosphere of pressure (Modernist Cuisine, bullet G). This increase in the boiling point of water reasonably increases the effective cooking temperature for foods prepared in water or aqueous media (Modernist Cuisine, second Paragraph). The increase in effective cooking temperature decreases the cooking time (Modernist Cuisine, second Paragraph).
One of skill in the art would have been motivated to decrease the time required for a method of making an extract of wood, to increase the industrial efficiency of the method. Cooking inside a pressure cooker is known to decrease the time needed to cook foods, as of record above. Cooking food inside a pressure cooker, as recited by the reference Modernist Cuisine, reasonably encompasses softening cellulosic vegetable material; Modernist Cuisine explicitly recites ”grits and polenta” (paragraph 1). Therefore, one of skill in the art would have had a reasonable expectation of success, even if not absolute certainty, at decreasing the time needed to macerate (soften) wood, a cellulosic vegetable material, by boiling the wood in a pressure cooker. Therefore, it be obvious to one of skill in the art to modify a technique recited by Malher of macerating wood pieces in boiling water (machine translation, page 5 of 9, lines 1, 6-8, and 13-15 from the top, excluding the header and empty lines) by heating the reaction mixture inside a pressure cooker (instant claims 30, 64, 66, 74, and 75).
One of skill in the art would understand that an airtight seal of a pressure cooker is necessary to avoid decompression of its contents from the release of gasses into the surrounding atmosphere, although this seal may sometimes break to release some steam while the pressure cooker remains operational (Modernist Cuisine, bullets B., C., and G.; instant claims 30, 63, 64, and 66).
Regarding the applicant’s argument that the proposed mechanisms of action as to what happens within a pressure cooker in operation are not supported by substantial evidence, the increase in boiling point of water with increasing pressure is supported by Modernist Cuisine (paragraph 2 and bullets B and G). Upon further consideration, the heated headspace gas trapped in the pressure cooker, retards the dissipation of heat from the pressure cooker, that would otherwise occur more quickly with air circulation. The energy efficiency advantages of using a pressure cooker constitutes a motivation to use a pressure cooker to heat to cook or extract a material. Gay-Lussac’s Law, cited in the previous office action, is broadly known in the art as describing a relationship between gas pressure and temperature under a fixed volume, and is relevant to the internal conditions of the pressure cooker; heating the pressure cooker contents in a fixed volume space increases both their temperature and the pressure of gasses contained in the pressure cooker. The examiner does not deny the possibility of a more intricate relationship between Gay-Lussac’s Law and the energy efficiency of a pressure cooker. However, considering the level of knowledge of one of ordinary skill in the art, exploring this possibility would warrant citing additional reference(s) and therefore a new ground of rejection, and is unnecessary to maintain the current ground of rejection.
Although Malher does not explicitly recite a pressure between about 0.5 atmospheres and 10
atmospheres or between 5.8 psi and 11.6 psi above ambient pressure (claim 70 is interpreted as reciting gauge pressure, i.e. pressure above the ambient atmosphere, in view of pressure cooker settings recited in instant specification Example 31 and Modernist Cuisine bullet B) the instantly claimed invention as a whole is drawn to an extraction process using a pressure cooker (instant claims 30 and 64), and a pressure within this range of 1.99 atmospheres (one atmosphere + the pressure of 1 bar) or 1.79 atmospheres (one atmosphere + 11.6 psi) would have been obvious to one of skill in the art through the use of a pressure cooker, before the effective filing date of the claimed invention (Modernist Cuisine, page 1 of 3, bullet B.; instant claims 69 and 70).
The temperature range recited in claim 68 is interpreted as applying to the reaction mixture within the sealed container recited in claim 30 steps f-h. Although Mahler does not recite a water temperature range between about 229 F and about 244 F (109 – 118 °C) (instant claim 68), Malher recites maceration of the oenological product (a type of wood) in boiling water leading to the production of wooded waters, and recites an upper temperature of 100 °C, the boiling point of water under one atmosphere of pressure (see Malher quotes above). The temperature range of between 229 °F and 244 °F (109 – 118 °C) (instant claim 68) encompasses the boiling point of water at 0.7 bar above atmospheric pressure, 237 °F (114 °C) achievable using a pressure cooker (Modernist Cuisine, bullet B). Therefore, in view of both the maceration procedure recited by Malher and the advantages of using a pressure cooker recited above, one of skill in the art would have had motivation to perform the aqueous extraction of wood within the temperature range of 229-244 °F . One of skill in the art would have had a reasonable expectation of success at reaching this temperature and boiling water at this temperature using a pressure cooker, as taught by Modernist Cuisine (second paragraph and bullet B).
Although Malher does not explicitly recite providing a flavored extract of wood that does not
include ethanol, one of skill in the art would have been motivated to exclude ethanol because doing so
would make the extract applicable to flavoring non-ethanolic beverages without introducing ethanol
and its intoxicating effects. Therefore, excluding ethanol from the flavored extract would broaden the
scope of the applicability of the product, improving its marketability. One of skill in the art would have a
reasonable expectation of success at excluding ethanol from the final extract by excluding ethanol from
the extraction solvent, and instead using water as an extraction solvent (Malher, machine translation,
page 5 of 9, lines 1, 6-8, and 13-15 from the top, excluding the header and empty lines). Therefore, it
would have been obvious to one of skill in the art to try to provide a flavored extract of wood that does
not include ethanol (instant claims 30, 74, and 75).
Relevant and Prior Art Made of Record
The relevant and/or prior art made of record and not relied upon is considered pertinent to applicant's disclosure, including the following:
Kolodziejak and Zukowski (US-20060216383-A1) recites giving a wine flavoring to an alcohol distillate by using barrels that have been previously used to store white wine (paragraphs [0026]-[0028]). This reference further recites “Barrels that were previously used to store other types of beverages can also be used to impart other desirable flavors” (paragraph [0028]).
Ryan (WO-2021178940-A1) recites a motivation for using a used barrel, rather than a new barrel, for flavoring. However, this reference is not an eligible prior art reference because it has a later publication date (September 10th, 2021) than the date of a US provisional application 62/942,083 (dated November 30th, 2019) which recites making a flavored extract of wood (claim 1) specifying using wood already used in a barrel for aging alcoholic beverages (specification, pages 10 and 11). US provisional application 62/942,083 is a provisional application of the parent (USSN 16/907,232) of the instant application (USSN 19/241,184). Ryan recites:
“New vs. Old Barrels Expressly, new wood (i.e., wood used to produce a straight bourbon) holds a great deal of tannin, which can sometimes come across as a “hot” or sour flavor. Alternatively, previously used wood will yield more subtle consequences in terms of ester and phenol development — when Eugenol and other esters do not compete with wood tannins and Guaiacol for expression and “attention”. These ingredients can thus be more delicately expressed. Often vintage (i.e. previously used) American oak barrels are utilized to develop delicate profiles for their final blend in products ranging from wines to liquors to beer. As aging is a natural process, and all barrels age at their own pace and impart their own flavor profile to the whiskey, a specific barrel may trigger one or more of a desired profiles, including Clove (spice) Orange (fruity) or Vanilla (vanillin) recognized as ‘COV’. The result is the higher vanillin from this ‘used’ oak will help to make subsequently treated batches more flavorful and complex. With less spice flavor present, more subtle and smooth flavors can be unmasked and expressed. The consequences of the use of “new” as opposed to “old” barrels can be evidenced where “new” barrels impart a flavor that is stronger and bolder whereas a “used” barrel conveys flavors that are more mellow and gentler on the palate” (Ryan, page 7, lines 10-23).
Additional prior art has been sent by the applicant through electronic mail and were cited on the PTO-892 form.
ASE® 200 Accelerated Solvent Extractor; DIONEX. www.dionex.com (accessed 2006 or
later, based on copyright)
Alañón, M. E.; et al. Extraction of natural flavorings with antioxidant capacity from cooperage
by-products by green extraction procedure with subcritical fluids. Industrial Crops &
Products 2017, 103, 222–232.
Ko, M. J.; et al. Subcritical water extraction of bioactive compounds from Orostachys
japonicus A. Berger (Crassulaceae). Nature Scientific Reports 2020, 10, 10890.
• The Science of Wood; Stoak Technologies. https://www.stoaktechnologies.com/technology/ (accessed 2020-06-04)
Oak Character Barrel Aged Precise Control; Stoak Technologies.
https://www.stoaktechnologies.com/oak-aged beer/ (accessed 2020-06-04)
• Wine Stability Non Flavouring Precise Control; Stoak Technologies.
https://www.stoaktechnologies.com/wineshield-wine-preservative/ (accessed 2020-06-
04)
• Oak Character Barrel Aged Precise Control; Stoak Technologies.
https://www.stoaktechnologies.com/distillers/ (accessed 2020-06-04)
• Brewshield; Brewshield. https://brew-shield.com (accessed 2020-06-04)
Oak wood extract in an ISO 22000 and NSF approved facility; Stoak Technologies.
https://www.stoaktechnologies.com/certified-oak-extraction/ (accessed 2020-06-04)
• Stoak Technologies; Stoak Technologies. https://www.stoaktechnologies.com (accessed
2026-02-24)
• Timeline; Lost Spirits. https://lostspirits.net/timeline (accessed 2019-07-06)
Smokey, Woody, Flavorful; Amoretti.
Bousinage Line; Bousinage Oak Alternative. (accessed 2024 or later, based on copyright).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert F Spaine whose telephone number is (571)272-9099. The examiner can normally be reached 8:00 AM - 4:00 PM United States Eastern Time, Monday-Friday.
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/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
