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 .
Election/Restrictions
Applicant’s election without traverse of claims 30- in the reply filed on March 5th, 2026 is acknowledged. The requirement is deemed proper and is therefore made FINAL.
Claims 1-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 43 and 45 are drawn to non-elected species of temperature and pressure ranges, respectively.
Claims 30-42, 44, and 46-49 are pending and were examined on the merits.
Information Disclosure Statement
The information disclosure statements filed on July 25th, 2025; and February 26th, 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because of:
Partial illegibility caused by inadequate scanning resolution and/or webpage features printed in the document that occlude some of the text. In some cases, partial illegibility may be unavoidable because of the condition of the published patent document.
A typographical error regarding the listing of DeCaro, document P6 on page 6 of the IDS received on July 25th, 2025 where the document number should be corrected to 2020/0010786.
The information disclosure statements recited above have been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
The information disclosure statement (IDS) submitted on February 28th, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings were received on June 17th, 2025. These drawings are acceptable.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The use of the terms Ball, Kingsford, Weber, Home Depot, Green Flash, Jack Daniel's, Instant Pot, GrowlerWerks, Longship Brewery, Jim Beam, and Protector Brewery each of which is a trade name or a mark used in commerce, has been noted in this application. Each term should be accompanied by the generic terminology; furthermore, the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claim 3 objected to because of the following informalities: for correct. Appropriate correction is required.
Claims 32-35 are objected to because of the following informalities: for correct grammar these claims should each recite "wood from a least one barrel" instead of "wood at least one barrel". Appropriate correction is required.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. In the context of the instant claims, the terms “extract” and “extracted” is considered by the examiner to encompass processes that involve contacting a solid matrix (such as wood) with either a liquid or supercritical fluid solvent; and in the case of the term “extract”, the resulting product. Therefore, contacting barrel wood with an aqueous alcohol such as an alcoholic beverage is reasonably considered a process of extraction. Considering the claims as drawn to a single invention, a sealed container is understood to encompass a container with a substantially airtight seal (instant claim 38), and a substantially airtight seal may allow some escape of gas when heated (instant specification page 6 of 132, F. Container), at least to the extent expected from a pressure cooker (instant claim 39).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 49 recites the limitation "said at least one flavored ethanol" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim. There is no flavored ethanol previously recited in dependent claim 49 or independent claim 30.
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.
Claims 31-35 are 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. Independent claim 30 step a) recites "providing at least one sample of wood; wherein said at least one sample of wood has not been previously extracted with and aqueous solution that includes water, ethanol, or any combinations thereof; wherein said at least one sample of wood comprises wood from at least one barrel"; dependent claims 31-35 recite "said at least one sample comprising wood" where the wood is from barrels used for ageing aqueous alcohols (various alcoholic beverages recited in claims 31-35). It is broadly understood in the art that ageing these aqueous alcohols in barrels involves contacting the barrel wood with the aqueous alcohol, reasonably considered a process of extraction (Claim Interpretation, above). However, claim 30 limits the wood, reciting that it has not been previously extracted with an "aqueous solution that includes water, ethanol, or any combinations thereof". Therefore, dependent claims 31-35 fail to include all the limitations of independent claim 30. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Claim 49 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. Independent claim 30 step a) recites a method of making a flavored extract of wood that does not include ethanol; dependent claim 49 recites an extract flavored with a flavored ethanol. An extract flavored with a flavored ethanol reasonably includes ethanol. Therefore, claim 49 fails to include all the limitations of independent claim 30. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim 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 (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, 36-42, 44, and 46-48 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/).
The instant claims rejected under this ground of rejection are as follows. Independent claim 30 recites “A method of making a flavored extract of wood, comprising: a) providing at least one sample of wood; wherein said at least one sample of wood has not been previously extracted with and aqueous solution that includes water, ethanol, or any combinations thereof; wherein said at least one sample of wood comprises wood from at least one barrel; 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 in said at least one sealed container to provide at least one reaction mixture; g) exposing said at least one reaction mixture to:1) heat;2) pressure; and3) time; to provide at least one flavored extract of wood that does not include ethanol. Dependent instant claim 36 recites “The method of claim 30, wherein said at least one aqueous solvent is water”. Dependent claim 37 recites “The method of claim 30, wherein said at least one aqueous solvent is filtered water, purified water, tap water, or any combinations thereof”. Dependent claim 38 recites “The method claim 30, of wherein said at least one sealed container is substantially airtight, airtight, or any combinations thereof, when in operation”. Dependent claim 39 recites “The method of claim 30, wherein said at least one sealed container comprises a pressure cooker”. Dependent claim 40 recites: “The method of claim 30, wherein said at least one heat source is a light source, a hot water source, a steam source, an electric source, a gas source, or any combinations thereof”. Dependent claim 41 recites “The method of claim 30, wherein said at least one 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 any combinations thereof”. Dependent claim 42 recites “The method of claim 30, wherein said temperature is between about 185 F and about 300 F”. Dependent claim 44 recites “The method of claim 30, wherein said pressure is between about 0.5 atmospheres and about 10 atmospheres”. Dependent claim 46 recites “The method of claim 30, wherein said reaction is run at a time between about 1 hour and about 6 days”. Dependent claim 47 recites “The method of claim 30, wherein said at least one flavored extract of wood is concentrated”. Dependent claim 48 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”.
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 and 48).
“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 48).
“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, 36, 37, 40, and 47).
“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 36, 37, 40, 42, and 46).
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 37.
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 pressurization would enable a liquid phase extraction at the temperature of the boiling point of the solvent under one atmosphere of pressure. A liquid phase extraction solvent has the benefit of the wood surface having more complete contact with the solvent than with a gas phase solvent, where the solvent molecules are more separated by empty space. Therefore, it would be within the understanding of one of skill in the art to predictably improve 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, 39, and 41). Furthermore, even if one of skill in the art intended to extract substances from wood using a gas-phase solvent, the pressurization of the gas in the pressure cooker would predictably contribute to the heating of the gas (Gay-Lussac’s Law), decreasing the energy burden on the heat source for heating the mixture to the target temperature and improving the energy-efficiency of the extraction(instant claims 30, 39, and 41). This improvement in energy efficiency would likewise be present in liquid-phase extractions where a gas phase is present in the headspace of the pressure cooker, transferring thermal energy to the contacting condensed phase(s) of the reaction mixture (instant claims 30, 39, and 41). One of skill in the art would also understand that a substantially 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 have enough break to release some steam while the pressure cooker remains operational (Modernist Cuisine, bullets B., C., and G.; instant claims 30, 38, 39, and 41).
Although Malher does not explicitly recite a pressure between about 0.5 atmospheres and 10 atmospheres, the instantly claimed invention as a whole is drawn to an extraction process using a pressure cooker (instant claims 30 and 39), and a pressure within this range of 1.99 atmospheres (one atmosphere + the pressure of 1 bar) 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 claim 44).
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 claim 30).
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, 36-42, 44, 46, and 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-11, 13, 15, 18, 19, 23-29, 31, 33, 34, 38-44, 46, 48, 51, 52, 55-61, 63, 65, and 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.
Independent instant claim 30 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; wherein said at least one sample of wood 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; e) providing at least one pressure source; 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) heat; 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 is not explicitly recited in the reference claims, barrel wood is not recited in the instant claims as having properties that would materially distinguish it from the wood types recited in the reference.
Dependent instant claim 36 and dependent reference claims 5, 23, 38, 55 each recite the aqueous solvent is water.
Dependent instant claim 37 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 38 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 39 and dependent reference claims 8, 26, 41, and 58 each recite the sealed container comprises a pressure cooker.
Dependent instant claim 40 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 41 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 42 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 44 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 46 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 47 and dependent reference claims 18, 34, 51, and 66 each recite the flavored extract of wood is concentrated.
Conclusion
No claims are allowed.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at (571) 272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.F.S./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655