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 amendment filed on4/8/26. Claims 1,16-19 are amended and claims 15,21-22 are cancelled. Claims 24-27 are added. Claims 1-14,16-20 and 23-27 are pending.
Part of the previous 112 second paragraph rejection is withdrawn due to the amendment. The 103 rejection is modified due to the amendment. The following rejections remains.
Claim Rejections - 35 USC § 112
Claims 1,19,23 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.
In claim 1, the limitation “ under the detection level, when measured by Procedure A” is vague and indefinite because it’s not clear what procedure A is. The specification discloses procedure A for detecting methanol. However, features in specification are not read into the claim. The claim does not specify what procedure A is. The limitation “ median VOC (20” is vague and indefinite because it’s not known what this limitation encompasses. The specification discloses the procedure for measuring VOC; however, the 20 most common compounds are not disclosed and there is no data given for the median. Thus, it’s not known what median VOC 20 encompasses. The scope of the claim cannot be determined. The limitation of “ measured according to Procedure B” is vague and indefinite because it’s not clear what procedure B is. The specification discloses procedure B for analyzing VOC. However, features in specification are not read into the claim. The claim does not specify what procedure B is.
In claim 19: in step d, the limitation of “ measured according to Procedure B” is vague and indefinite because it’s not clear what procedure B is. The specification discloses procedure B for analyzing VOC. However, features in specification are not read into the claim. The claim does not specify what procedure B is.
Claim 23 is vague and indefinite. The claim depends from claim 1 and states that “ the drinkable article is wine” but claim 1 already recites that the drinkable article is prepared from an alcoholic wine. Thus, it’s unclear what is intended.
The rejection of claim 23 is necessitates by the amendment to claim 1.
Claims 24-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The new claims are not supported by the original disclosure. Applicant points to page 31 of the specification. But, the page discloses six samples having ethyl acetate concentrations of 25,50,77,100 and 200ppm. There is no disclosure of less than 50ppm, less than 30ppm, less than 15ppm and less than 10ppm as in claims 24-27.
Claim Rejections - 35 USC § 103
Claim(s) 1-14,16-20,23-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yonezawa ( 2023/0049743) in view of Gordon ( 20190127671), Reiss ( 2009/0155446) and Vason (AU 2013254924).
For claim 1, Yonezawa discloses a de-alcoholized beverage prepared from an alcohol-containing beverage including wines such Chinese wine and fruit wine. The beverage comprises the aroma compounds that are present in the original alcohol-containing beverage and has an ethanol concentration of lower than .005% v/v. The aroma component contained in an alcohol-containing beverage include acetaldehyde, ethyl acetate, i-butanol, isoamyl acetate, isoamyl alcohol. These compounds are some of the same compounds disclosed in the specification and cited in claim 13. Thus, the de-alcoholized beverage comprises an amount of innate volative organic compound. Yonezawa does not disclose adding additional flavoring or coloring. The de-alcoholized beverage is obtained by adding aroma compounds separated from the alcohol-containing beverage to a residual liquid where aroma compounds and ethanol are separated. The de-alcoholized beverage has no added flavor and/or coloring relative to the alcoholic beverage. ( see paragraphs 0008-0010, 0015, 0030,0040)
For claim 13, Yonezawa discloses the innate aroma compounds including ethyl acetate, isoamyl acetate, i-butanol. ( see paragraph 0055)
For claim 14, Yonezawa discloses the beverage has an ethanol concentration of lower than .005% v/v. ( see paragraph 0015)
For claim 16, Yonezawa discloses the alcoholic beverages including wine such as fruit wine. ( see paragraph 0031)
For claims 17-18, Yonezawa discloses the de-alcoholized beverage comprising at least 70% of the aroma compounds of the alcoholic beverage. ( see paragraph 0055)
For claim 19, Yonezawa discloses a process for preparing the de-alcoholized beverage. The process comprises the steps of providing an alcohol-containing beverage containing a plurality of innate aroma compounds, preparing a concentrate comprising the aroma compound by separating ethanol and aroma component from the alcohol-containing beverage, preparing a drink from the concentrate comprising ethanol and aroma component. For claim 20, Yonezawa discloses preparing a mixture by separating the ethanol and aroma component from the alcohol-containing beverage, concentrating the mixture by bringing a resin into contact with the mixture containing ethanol and aroma component, adsorbing the aroma component onto the resin, removing the ethanol from the resin and recovering the aroma component from the resin from which the ethanol was removed. In order to increase the adsorption rate of the aroma component, the mixture can be passed multiple times. The treatment with resin can be carried out in a column. The passing of the mixture through the column multiple times is equivalent to the claimed passing of the pre-concentrate and concentrate because each subsequent time, the mixture that is being passed had already been passed through once. In claim 19, the limitation Procedure B is not given weight because the claim does not define the procedure. ( see paragraphs 0008, 0010,0040, 0041-0049,0055)
Yonezawa does not disclose the methanol content and one of the ratio as in claim 1, the ratios as in claims 2-5, the amounts of VOC as in claims 6-10, the log Pow as in claims 11,12 , the ratio as in claim 23 and the amounts as in claims 24-27.
Vason discloses a process for extracting unwanted acidic compounds from wine. Vason discloses that excess volatile acidity in a wine negatively affects the organoleptic characteristics of the wine, giving the wine a rather unpleasant taste and bouquet. Such alteration in particular is accentuated by the presence of ethyl acetate in excessive concentrations. Vason discloses to remove unwanted non-acidic compounds such as ethyl acetate from wine. ( see abstract, pages 2,5,7)
Gordon discloses a method and device for producing of high quality beverages. Gordon discloses that methanol is an impuriy that is found in alcoholic beverages based on an aqueous solution of alcohol. Gordon discloses treatment to cause destruction of the impurity. ( see paragraph 0092)
Reiss discloses a process for the preparation of a flavoring concentrate. Reiss discloses methanol convey a negative sensory impression. Reiss also teaches that the log Pow value makes it possible to predict for the respective flavoring and/or aromatic substances in which the respective flavoring and/or aromatic substance adsorbs on adsorption material in the aqueous phase for a given solvent proportion or remains in the aqueous phase. ( see paragraphs 0011,0069)
Claim 1 is vague and indefinite with respect to procedure A and procedure B and the ratios as explained in the 112 rejection above. Since claim 1 is a product, how methanol and VOC are measured does not determine the patentability of the product. The limitation is also not given weight because claim 1 does not define procedure A and procedure B. The claim recites VOC 20 but does not define what these compounds are and what will constitute the median. The specification also does not give any data regarding the median VOC. The scope of the ratio is unclear. Yonezawa discloses de-alcoholized beverage comprising innate volatile compounds present in the original alcoholic beverage. The concentration of the volatile compounds and the types of compounds would vary depending on the type of alcoholic beverage and the degrees of concentration. Yonezawa discloses the adsorption rate of the aroma compounds can increase by passing the mixture containing the compounds multiple times. It would have been obvious to one of ordinary skill in the art to determine the ratio of the volatile compounds and the type of compounds depending on the alcoholic beverage used and the taste and flavor desired in the de-alcoholized beverage to be very closely to the original alcoholic beverage. For claims 1, 24-27, Vason shows that wine contains ethyl acetate and excessive concentration affects the organoleptic characteristic of the wine. Thus, in making the de-alcoholized wine, it would have been obvious to one skilled in the art to add ethyl acetate in any varying amount depending on the taste and flavor desired. This parameter can be determined through routine experimentation to obtain the most optimum product in taste and flavor. As shown in Gordon, methanol is an impurity in alcohol. Reiss also shows that methanol gives a negative sensory impression in flavoring concentrate. It would have been obvious to one of ordinary skill in the art to remove all methanol from the Yonezawa beverage to give a purer product with better taste.
For claims 2-5 and 6-10,21-23, Yonezawa discloses de-alcoholized beverage comprising innate volatile compounds present in the original alcoholic beverage. The concentration of the volatile compounds and the types of compounds would vary depending on the type of alcoholic beverage and the degrees of concentration. Yonezawa discloses the adsorption rate of the aroma compounds can increase by passing the mixture containing the compounds multiple times. It would have been obvious to one of ordinary skill in the art to determine the ratio of the volatile compounds and the type of compounds depending on the alcoholic beverage used and the taste and flavor desired in the de-alcoholized beverage to be very closely to the original alcoholic beverage. For claims 7-10, it would have obvious to one of ordinary skill in the to vary the amount and types of volatile components depending on the alcoholic beverage used and the flavor, aroma and taste desired in the de-alcoholized to resemble the original alcoholic beverage. For claims 11,12, Reiss teaches the log pow value can predict the aroma substances ability to adsorb on adsorption material. It would have been obvious to one of ordinary skill in the art to determine the log pow value of the volatile aroma component in Yonezawa to determine its absorption on the resin. It’s expected different component will have different log pow value.
Response to Arguments
Applicant's arguments filed 4/8/26 have been fully considered but they are not persuasive.
With respect to the 112 second paragraph rejection, applicant argues that the terms Procedure A and Procedure B are defined o pages 21 and 22 and applicants can be their own lexicographers. This argument is not persuasive. Procedure a and procedure B are not simply different terminology to describe a substance like using the term potato instead of tuber. They are processing steps that are not defined in the claims. Thus, it’s unclear what is intended and the scope of the claims is unclear. As to the VOC (20), the limitation is not rejected on the basis of the use of the term VOC (20). The limitation “ median VOC (20” is vague and indefinite because it’s not known what this limitation encompasses. The specification discloses the procedure for measuring VOC; however, the 20 most common compounds are not disclosed and there is no data given for the median. Thus, it’s not known what median VOC 20 encompasses. Applicant does not explain why the limitation is not vague and indefinite.
With respect to the 103 rejection, applicant argues Yonezawa teaches a dealcoholized beer and a person skilled in the art would not reasonably expect to apply a process develop to produce a dealcoholized beer to successfully dealcoholizing wine. This argument is not persuasive. The Yonezawa method is not limited to just beer. Yonezawa clearly discloses in paragraph 0031 that the alcohol-containing beverage includes wines such as Chinese wine, fruit wine and Japanese wine. As to the ratio, it's acknowledge that Yonezawa does not disclose the ratio of ethyl acetate to other components. The claims are not limited to just wine product. New prior art to Vason discloses a process for extracting unwanted acidic compounds from wine. Vason discloses that excess volatile acidity in a wine negatively affects the organoleptic characteristics of the wine, giving the wine a rather unpleasant taste and bouquet. Such alteration in particular is accentuated by the presence of ethyl acetate in excessive concentrations. Vason discloses to remove unwanted non-acidic compounds such as ethyl acetate from wine. Yonezawa discloses de-alcoholized beverage comprising innate volatile compounds present in the original alcoholic beverage. The concentration of the volatile compounds and the types of compounds would vary depending on the type of alcoholic beverage and the degrees of concentration. Yonezawa discloses the adsorption rate of the aroma compounds can increase by passing the mixture containing the compounds multiple times. It would have been obvious to one of ordinary skill in the art to determine the ratio of the volatile compounds and the type of compounds depending on the alcoholic beverage used and the taste and flavor desired in the de-alcoholized beverage to be very closely to the original alcoholic beverage. Vason shows that wine contains ethyl acetate and excessive concentration affects the organoleptic characteristic of the wine. Thus, in making the de-alcoholized wine, it would have been obvious to one skilled in the art to add ethyl acetate in any varying amount depending on the taste and flavor desired. This parameter can be determined through routine experimentation to obtain the most optimum product in taste and flavor. Applicant states that table 4 of the instant specification shows that elevated ethyl acetate similar to alcohol-containing wine have an unpleasant and undesirable aroma and flavor. This fact is known as shown in Vason. Thus, adding ethyl acetate in amount in correlation with other aroma compounds is a result-effective variable that can be determined by one skilled in the art to get optimum taste, flavor and aroma as Vason shows that excessive amount of ethyl acetate affects the organoleptic characteristic.
Applicant further argues that Yonezawa teaches a process of dealcoholizing and alcoholic beverage which retains the ethyl acetate content of the beverage. Applicant states Yonezawa produces a dealcoholized beer having an ethyl acetate of 50% or more. This argument is not persuasive because the example pointed out by applicant is directed to beer. Yonezawa discloses other alcoholic beverages including wine. Yonezawa teaches the absorption of the aroma component including ethyl acetate to remove it from the alcoholic beverage. As shown in Vason, high content of ethyl acetate in wine affects its organoleptic properties. Thus, it would have been readily obvious to one skilled in the art to have low level of ethyl acetate when producing dealcoholized wine beverage. The specific level selected depends on the taste, flavor and aroma desired which can be determined through routine experimentation. The Gordon and Reiss references are not relied upon for removal of ethyl acetate in wine. The reason for incorporating Gordon and Reiss is explained in the rejection and applicant does not argue the position taken.
Conclusion
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.
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April 27, 2026
/LIEN T TRAN/Primary Examiner, Art Unit 1793
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