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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 26, 2026 was filed after the mailing date of the Office Action mailed on October 24, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-7, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Young US 2012/0015094 in view of Coleman US 4,528,200, Walker et al. US 2005/0163904, Mulye et al. US 6,416,786, Ball US 2015/0328275, and Nickel DE 10 2014 000 187 (cited on Information Disclosure Statement filed October 16, 2020).
It is noted that a formal human translation of Nickel DE 10 2014 000 187 was previously furnished with the Office Action mailed June 22, 2023. All citations to Nickel DE 10 2014 000 187 are with respect to the formal human translation.
Regarding Claim 1, Young discloses a pellet composed of a coffee powder mixture (compacted coffee tablet) (‘094, Paragraph [0101]). Applicant discloses a pellet is understood to be compacted powder (Specification, Page 20, lines 4-5). Young also discloses the pellet (compacted coffee tablet) is sheathed with at least one coating layer (external coating that enhances the tablet strength) (‘094, Paragraph [0085]) comprising a polysaccharide (starch or cellulose or acacia sodium alginate) (‘094, Paragraphs [0058] and [0085]). The coffee powder mixture of the pellet contains a first polysaccharide (excipients such as binders including starch, cellulose, and/or acacia sodium alginate) (‘094, Paragraphs [0057]-[0058]) composed of a first coffee powder in a form of ground coffee beans (mixtures of different ground roast coffees and/or different flavorings and/or different excipients (‘094, Paragraph [0061]), the first coffee powder (mixtures of different ground roast coffees) having a first average particle size A (‘094, Paragraph [0056]) of between 250 microns and 3 mm (‘094, Paragraph [0051]).
Young discloses the mixture of ground roast coffees is made of ground roast coffees having different particle sizes (‘094, Paragraph [0056]) wherein acacia sodium alginate gums binders are combined with the mixture of ground roast coffees or modified starch particulate binders (‘094, Paragraph [0058]). However, Young is silent regarding the binder of sodium alginate gums of modified starches being an inert water insoluble filler. Additionally, Young is also silent regarding the coffee powder mixture having a solubility in water at 23°C of less than 0.1 g/ml and the inert water insoluble filler having an average particle size C different from the first average particle size A.
Coleman discloses a ground coffee mineral blend comprising flow reducing agents such as modified starches wherein the modified starches are water insoluble (‘200, Column 3, lines 3-8) wherein the insoluble starches are inert (‘200, Column 5, lines 36-43) wherein the mineral particles are ground to a fine particle size of 0.2 mm or less in size (‘200, Column 4, lines 60-65), which is a different particle size than the ground roast coffee of 760 microns disclosed that Young (‘094, Paragraph [0155]).
Both Young and Coleman are directed towards the same field of endeavor of ground coffee compositions comprising modified starches. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the ground coffee composition of Young and incorporate a water insoluble filler in the form of insoluble modified starches as taught by Coleman since Coleman teaches that modified starches are a type of flow reducing agent added to the ground coffee (‘200, Column 3, lines 3-8). Coleman discloses the amount of flow retardant to be used is strictly a matter of results desired wherein too much flow retardant will plug the filter or increase the brewing time beyond that required to extract the desired flavor components (‘200, Column 5, lines 47-51). It would have been obvious to one of ordinary skill in the art would adjust the solubility of the insoluble modified starch of the ground coffee composition of Young and incorporate flow reducing agents such as insoluble modified starches, which are types of insoluble polysaccharides, as taught by Coleman based upon the desired flow rate of brewed beverage (‘200, Column 3, lines 1-10). Additionally, the disclosure of Coleman that the mixture of ground coffee and mineral source blend containing modified starch that is water insoluble indicates that the degree of solubility can be adjusted to have a solubility in water at 23°C less than 0.1 g/ml by adjusting the amount of water insoluble modified starch incorporated into the mineral blend that is mixed with the mixture of ground coffee. Differences in concentration of the degree of solubility of the coffee powder mixture will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such degree of solubility of the coffee powder mixture is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the average particle size of the water insoluble filler of Young to be different than the average particle size of the first ground coffee powder since Coleman teaches it was known and conventional in the food and beverage art to incorporate water insoluble fillers in the form of insoluble modified starches that have a different particle size than the ground coffee in which the insoluble modified starches are incorporated.
Further regarding Claim 1, Young discloses the coating that sheathes the pellet to be made with a binder (‘094, Paragraph [0085]) wherein the binder is a solid particulate binder of starch or modified starch and/or ethyl cellulose (‘094, Paragraph [0058]). However, Young modified with Coleman is silent regarding the coating that sheathes the pellet to be a water insoluble coating having a solubility in water at 23°C of less than 0.1 g/ml.
Walker et al. discloses a coated coffee powder (‘904, Paragraph [0034]) comprising a coating agent that coats a shell that is insoluble in water made of polysaccharides having a solubility that may be adjusted by selecting a degree of substitution that makes them insoluble in water or delays dissolution in water at a temperature greater than the temperature that causes flocculation of one or more of the additives (‘904, Paragraph [0019]) (‘904, Paragraphs [0015] and [0019]). The disclosure of polysaccharides and cellulose having a solubility that is adjusted by selecting a degree of substitution that makes them insoluble in water indicates that the first polysaccharide can be water insoluble whose solubility is adjusted such that the solubility in water at 23°C is less than 0.1 g/ml. Walker et al. also discloses the coating being made with an insoluble substance that is not impervious and is capable of breaking (‘904, Paragraph [0041]) and the water insoluble coating agent can be slightly soluble in hot water (‘904, Paragraph [0057]).
Both modified Young and Walker et al. are directed towards the same field of endeavor of coffee compositions comprising a coating composition made of ethylcellulose. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the coated ground coffee powder of modified Young et al. to have a first polysaccharide comprising powder made of water insoluble materials as taught by Walker et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). The disclosure of Walker et al. that the polysaccharides can be water insoluble can also be water insoluble indicates that the degree of solubility can be adjusted to have a solubility in water at 23°C less than 0.1 g/ml. Differences in concentration of the degree of solubility will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such degree of solubility is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the coated ground coffee powder of modified Young to have the coating be made of water insoluble materials as taught by Walker et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Walker et al. teaches that there was known utility in the food art to incorporate water insoluble coating agents for delaying dissolution of particles (‘904, Paragraph [0043]), which delayed/retarded dissolution is also contemplated by Coleman (‘200, Column 3, lines 3-8).
Further regarding Claim 1, Young modified with Coleman and Walker et al. is silent regarding the coffee powder mixture of the pellet containing 1 to 40% by weight of the water insoluble inert filler.
Mulye et al. discloses a tablet for oral administration (‘786, Column 9, lines 3-13) comprising an inert, water insoluble filler comprising a pharmaceutically acceptable saccharide including microcrystalline cellulose wherein the filler is present in amounts ranging from about 1% to about 90% by weight (‘786, Column 7, lines 3-18), which encompasses the claimed mixture of 1 to 40% by weight of the water insoluble inert filler.
Young discloses the pellet comprising solid particulate binders of celluloses (‘094, Paragraph [0058]). Both modified Young and Mulye et al. are directed towards the same field of endeavor of edible orally administered tablets comprising celluloses. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the pellet/tablet of modified Young and incorporate a water insoluble inert filler in the form of microcrystalline cellulose into the pellet/tablet as taught by Mulye et al. since Ball teaches that inert fillers are used to add bulk and improves the mouthfeel of edible products (‘275, Paragraph [0041]). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the mixture of the pellet/tablet of modified Young and adjust the concentration of water insoluble inert filler in the mixture of the pellet/tablet to fall within the claimed amount of 1 to 40 wt% by weight of the water insoluble inert filler within the mixture as taught by Mulye et al. since where the claimed water insoluble inert filler concentration ranges encompasses water insoluble inert filler concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the concentration of water insoluble inert filler within the mixture will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of water insoluble inert filler is critical. Where the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the amount of water insoluble inert filler added to the mixture of modified Young based upon the bulk and mouthfeel desired as suggested by Ball. Furthermore, the claims do not recite the particular water insoluble inert filler. The claims recite an unknown and generic water insoluble inert filler. Different water insoluble inert fillers have different mechanical and chemical properties.
Further regarding Claim 1, Young modified with Coleman, Walker et al., Mulye et al., and Ball is silent regarding the polysaccharide of the water insoluble coating to be a crosslinked polysaccharide and the ground coffee composition to be incorporated into a capsule for preparing the coffee beverage by introduction of water into the capsule.
Nickel discloses a pellet composed of a powder mixture (coffee powder 1 made of pressed ground coffee) (‘187 Translation, Paragraph [0007]) wherein the pellet is sheathed with at least one coating layer (liquid cellulose 2) (‘187 Translation, Paragraphs [0036]-[0037]) comprising a crosslinked polysaccharide (‘187, FIG. 3) (‘187 Translation, Paragraphs [0018] and [0038]) wherein the pellet composed of the powder mixture if disposed in a capsule (‘187 Translation, Paragraph [0001]).
Both modified Young and Nickel are directed towards the same field of endeavor of coffee pellets composed of a powder mixture of ground coffee wherein the pellet is sheathed with at least one polysaccharide coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the polysaccharide coating layer sheathing the pellet of the ground coffee composition of modified Young and incorporate a crosslinked polysaccharide as taught by Nickel since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Nickel teaches that there was known utility in the food and beverage art to utilize a cross linked polysaccharide in a coating layer that sheaths a coffee pellet. Additionally, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the ground coffee composition of modified Young and dispose the ground coffee composition into a capsule since Nickel teaches that it was well known and conventional in the beverage capsule art to incorporate a coated ground coffee powder into a beverage capsule for making a beverage using a beverage machine.
Further regarding Claim 1, Young discloses a coffee powder mixture of the pellet (coffee tablet) contains a polysaccharide (carbohydrates) comprising powder (‘094, Paragraph [0111]) having a first average particle size A and a second average particle size B that is different from the first average particle size A (‘094, Paragraph [0056]) and a filler (solid particulate binders of gums and soluble fibers) (‘094, Paragraphs [0057]-[0058]). Although Young modified with Coleman, Walker et al., and Nickel does not explicitly disclose the coffee powder mixture of the pellet containing at least 50% by weight of the first coffee powder, differences in the amount of first coffee powder having the first average particle size A will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such amount of powder having the first average particle size A is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). The claims do not recite the particular first water insoluble polysaccharide comprising powder. The claims recite an unknown and generic polysaccharide comprising coffee powder. Different polysaccharide comprising coffee powders have different mechanical and chemical properties.
Further regarding Claim 1, the limitations “for preparing a beverage by introduction of water into the capsule” are seen to be recitations regarding the intended use of the “capsule.” In this regard, applicant’s attention is invited to MPEP § 2114.I. and MPEP § 2114.II. which states features of an apparatus may be recited either structurally or functionally in view of In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possess the functionally defined limitations of the claimed apparatus in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. See also Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639-40,100 USPQ2d 1433, 1440 (Fed. Cir. 2011). The burden then shifts to applicant to establish that the prior art does not possess the characteristic relied on in view of In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432; In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 228 (CCPA 1971). Additionally, apparatus claims cover what a device is, not what a device does in view of Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claimed in view of Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, if the prior art structure is capable of performing the intended use, then it meets the claim. Nevertheless, Nickel teaches the coffee capsule being used in a coffee machine to brew a beverage (‘187 Translation, Paragraph [0017]).
Regarding Claim 2, Young discloses the ground roast coffee having additional filler ingredients (solid particulate binders) (‘094, Paragraphs [0057]-[0058]). Young modified with Coleman, Walker et al., Mulye et al., Ball, and Nickel is silent regarding the first polysaccharide comprising coffee powder having the first average particle size A and the water insoluble inert filler having the average particle size C identical to the first average particle size A. However, differences in the amount of coffee powder having the first average particle size A and the amount of water insoluble inert filler will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such amount of coffee powder having the first average particle size A and amount of water insoluble inert filler is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). The claims do not recite the particular composition of the generic coffee powder or water insoluble inert filler. The claims recite an unknown and generic coffee powder and inert filler that are insoluble. Different coffee powders and different fillers have different mechanical and chemical properties.
Regarding Claim 3, Young discloses the first average particle size A being between 250 microns and 3 mm (‘094, Paragraph [0051]), which overlaps the claimed first average particle size A of 0.01 mm up to less than 0.5 mm since the claimed average particle size A converts to 10 microns up to less than 500 microns. Where the claimed first average particle size A ranges encompasses first average particle size A ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Regarding Claim 4, Young discloses the powder mixture of the pellet (coffee tablet) contains a coffee powder containing polysaccharides (‘094, Paragraph [0111]) having the first average particle size A and the second average particle size B that is different from the first average particle size A (‘094, Paragraph [0056]) (‘094, Paragraphs [0057]-[0058]). Coleman discloses a ground coffee mineral blend comprising flow reducing agents such as modified starches wherein the modified starches are water insoluble (‘200, Column 3, lines 3-8) wherein the insoluble starches are inert (‘200, Column 5, lines 36-43) wherein the mineral particles are ground to a fine particle size of 0.2 mm or less in size (‘200, Column 4, lines 60-65), which is a smaller particle size than the ground roast coffee of 760 microns disclosed that Young (‘094, Paragraph [0155]).
Regarding Claim 5, Young discloses the average particle size A of the first coffee powder being 250 microns to 3 mm (‘094, Paragraph [0051]), which overlaps the claimed average particle size A of the first coffee powder of 0.5 mm up to 1.5 mm since the claimed average particle size A converts to 500 microns up to 1500 microns. Where the claimed first average particle size A ranges encompasses first average particle size A ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Regarding Claim 6, Young discloses the coffee powder mixture of the pellet (coffee tablet) contains a coffee powder containing a polysaccharide (‘094, Paragraph [0111]) having the first average particle size A and the second average particle size B that is different from the first average particle size A (‘094, Paragraph [0056]) and a filler (solid particulate binders of gums and soluble fibers) (‘094, Paragraphs [0057]-[0058]). Coleman discloses a ground coffee mineral blend comprising flow reducing agents such as modified starches wherein the modified starches are water insoluble (‘200, Column 3, lines 3-8) wherein the insoluble starches are inert (‘200, Column 5, lines 36-43) wherein at least 90% of the mineral particles are ground to a fine particle size of 1.0 mm in diameter (‘200, Column 4, lines 60-65), which encompasses larger particle sizes than the ground roast coffee of 760 microns disclosed that Young (‘094, Paragraph [0155]).
Regarding Claim 7, Young discloses the average particle size A of the first coffee powder being 250 microns to 3 mm (‘094, Paragraph [0051]), which overlaps the claimed average particle size A of the first coffee powder of 0.01 mm up to 0.5 mm since the claimed average particle size A converts to 10 microns up to 500 microns. Where the claimed first average particle size A ranges encompasses first average particle size A ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Regarding Claim 12, Young discloses the filler containing a material (‘094, Paragraph [0048]) of methylcellulose (‘094, Paragraph [0058]). Coleman also discloses the water insoluble filler containing an inert material of methylcellulose (‘200, Column 5, lines 36-43).
Regarding Claim 16, Young discloses a coffee powder mixture of the pellet (coffee tablet) contains a polysaccharide (carbohydrates) comprising powder (‘094, Paragraph [0111]) having a first average particle size A and a second average particle size B that is different from the first average particle size A (‘094, Paragraph [0056]) and a filler (solid particulate binders of gums and soluble fibers) (‘094, Paragraphs [0057]-[0058]).
Mulye et al. discloses a tablet for oral administration (‘786, Column 9, lines 3-13) comprising an inert, water insoluble filler comprising a pharmaceutically acceptable saccharide including microcrystalline cellulose wherein the filler is present in amounts ranging from about 1% to about 90% by weight (‘786, Column 7, lines 3-18), which encompasses the claimed mixture of 2 to 30% by weight of the water insoluble inert filler.
Young discloses the pellet comprising solid particulate binders of celluloses (‘094, Paragraph [0058]). Both modified Young and Mulye et al. are directed towards the same field of endeavor of edible orally administered tablets comprising celluloses. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the pellet/tablet of modified Young and incorporate a water insoluble inert filler in the form of microcrystalline cellulose into the pellet/tablet as taught by Mulye et al. since Ball teaches that inert fillers are used to add bulk and improves the mouthfeel of edible products (‘275, Paragraph [0041]). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the mixture of the pellet/tablet of modified Young and adjust the concentration of water insoluble inert filler in the mixture of the pellet/tablet to fall within the claimed amount of 2 to 30 wt% by weight of the water insoluble inert filler within the mixture as taught by Mulye et al. since where the claimed water insoluble inert filler concentration ranges encompasses water insoluble inert filler concentration ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.). Furthermore, differences in the concentration of water insoluble inert filler within the mixture will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration of water insoluble inert filler is critical. Where the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the amount of water insoluble inert filler added to the mixture of modified Young based upon the bulk and mouthfeel desired as suggested by Ball.
Further regarding Claim 16, although Young modified with Coleman, Walker et al., Mulye et al., Ball, and Nickel does not explicitly disclose the powder mixture of the pellet containing at least 60% by weight of the first coffee powder having the first average particle size A, differences in the amount of coffee powder having the first average particle size A will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such amount of coffee powder having the first average particle size A is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). The claims do not recite the particular coffee powder. The claims recite an unknown and generic coffee powder. Different coffee powders and polysaccharide comprising powders have different mechanical and chemical properties.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Young US 2012/0015094 in view of Coleman US 4,528,200, Walker et al. US 2005/0163904, Mulye et al. US 6,416,786, Ball US 2015/0328275, and Nickel DE 10 2014 000 187 (cited on Information Disclosure Statement filed October 16, 2020) as applied to claim 1 above in further view of Black et al. US 2017/0210554.
It is noted that a formal human translation of Nickel DE 10 2014 000 187 was previously furnished with the Office Action mailed June 22, 2023. All citations to Nickel DE 10 2014 000 187 are with respect to the formal human translation.
Regarding Claim 8, Young discloses the coffee powder mixture comprising the first coffee powder having the first average particle size A (‘094, Paragraph [0056]) and a binder of modified starches (‘094, Paragraph [0058]). Coleman discloses the modified starch to be water insoluble (‘200, Column 3, lines 3-8) and inert (‘200, Column 5, lines 36-42). Mulye et al. discloses incorporating a water insoluble inert filler of microcrystalline cellulose (‘786, Column 7, lines 3-19) However, Young modified with Coleman, Walker et al., Mulye et al., Ball and Nickel is silent regarding the water insoluble filler having an elongated shape with an aspect ratio of greater than 2.
Black et al. discloses a nutritional powder pod containing a nutritional powder for use with a beverage production machine (‘554, Paragraph [0005]) wherein the nutritional powder comprises a filler (other ingredients such as preservatives, emulsifying agents, additional nutrients, and thickening agents) (‘554, Paragraph [0068]) wherein the size and shape of the nutritional powder particles are characterized by aspect ratio and solidity fiber elongation wherein the nutritional powder comprises particles that are flakes or spheroidal ellipses (‘554, Paragraph [0044]) wherein the flake shaped particles have a width and/or a length that is at least about 5% larger than its thickness (‘554, Paragraph [0045]) wherein the nutritional powder pod comprises coffee (‘554, Paragraph [0078]).
Both modified Young and Black et al. are directed towards the same field of endeavor of coffee compositions comprising a powder mixture and fillers in the form of other additional ingredients. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the shape and aspect ratio of the other additional ingredient fillers of modified Young since Black et al. teaches that powdered particles can take on the form of flakes or spheroidal ellipses. The configuration of the claimed shape of the other ingredient fillers is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the other ingredient fillers was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.).
Regarding Claim 9, Young discloses the average particle size A of the first coffee powder being 250 microns to 3 mm (‘094, Paragraph [0051]), which overlaps the claimed average particle size A of the first coffee powder of 0.01 mm up to 0.5 mm since the claimed average particle size A converts to 10 microns up to 500 microns. Where the claimed first average particle size A ranges encompasses first average particle size A ranges disclosed by the prior art, a prima facie case of obviousness exists in view of 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) (MPEP § 2144.05.I.).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Young US 2012/0015094 in view of Coleman US 4,528,200, Walker et al. US 2005/0163904, Mulye et al. US 6,416,786, Ball US 2015/0328275, and Nickel DE 10 2014 000 187 (cited on Information Disclosure Statement filed October 16, 2020) as applied to claim 1 above in further view of Stock et al. US 2008/0213406.
It is noted that a formal human translation of Nickel DE 10 2014 000 187 was previously furnished with the Office Action mailed June 22, 2023. All citations to Nickel DE 10 2014 000 187 are with respect to the formal human translation.
Regarding Claim 12, Young discloses the powder mixture comprising a filler (additional ingredients) (‘094, Paragraphs [0057]-[0058]). Mulye et al. discloses the filler being water insoluble and inert and made of cellulose (‘786, Column 7, lines 3-19). However, Young modified with Coleman, Walker et al., Mulye et al., Ball, and Nickel is silent regarding the filler containing an inert material of calcium carbonate.
Stock et al. discloses a beverage capsule comprising a comestible composition (‘406, Paragraph [0016]) wherein the composition is a powdered tablet (‘406, Paragraph [0066]) of coffee (‘406, Paragraph [0015]) wherein the tablets contain a filler of an inert diluent of calcium carbonate (‘406, Paragraphs [0066]-[0067]).
Both modified Young and Stock et al. are directed towards the same field of endeavor of coffee powder mixtures and other filler ingredients. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the coffee powder composition of modified Young and incorporate an inert material of calcium carbonate as a filler as taught by Stock et al. since the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Stock et al. teaches that there was known utility in the coffee capsule are to utilize an inert material of calcium carbonate as another ingredient filler.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Young US 2012/0015094 in view of Coleman US 4,528,200, Walker et al. US 2005/0163904, Mulye et al. US 6,416,786, Ball US 2015/0328275, and Nickel DE 10 2014 000 187 (cited on Information Disclosure Statement filed October 16, 2020) as applied to claim 1 above in further view of Campanile et al. US 2009/0317521.
It is noted that a formal human translation of Nickel DE 10 2014 000 187 was previously furnished with the Office Action mailed June 22, 2023. All citations to Nickel DE 10 2014 000 187 are with respect to the formal human translation.
Regarding Claim 17, Young discloses the ground coffee composition having an external coating (‘094, Paragraph [0085]). Walker et al. discloses applying multiple coatings to multiple particles (‘904, Paragraph [0040]) wherein a double coating provides both a delayed reaction and an increased surface to mass ratio (‘904, Paragraph [0044]) wherein the coating is insoluble (‘904, Paragraph [0041]). The disclosure of multiple coatings reads on a first coating layer and a second coating layer. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the composition of modified Young and apply a plurality of insoluble coating layers onto the coffee powder pellet as taught by Walker et al. in order to increase the surface to mass ratio and the provide a delayed reaction during brewing as desired (‘904, Paragraph [0044]).
Further regarding Claim 17, Young modified with Coleman, Walker et al., Mulye et al., Ball and Nickel is silent regarding the first coating layer having a layer of thickness of between 100-300 µm and at least one further coating layer having at least one further coating layer thickness of between 50-200 µm.
Campanile discloses a flavored particulate food or beverage composition of ground or powder coffee (‘521, Paragraph [0056]) comprising an outer coating comprising an extract of the particulate food or beverage material (‘521, Paragraph [0058]) wherein the thickness of the outer layer is varied as desired (‘521, Paragraph [0041]) and has a high solubility of soluble solids (‘521, Paragraph [0043]) and the thickness of the inner coating layer is varied as desired (‘521, Paragraph [0035]). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the capsule of modified Young and adjust the first coating layer thickness and adjust the second coating layer thickness since differences in the coating layer thicknesses of the various coating layers will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such coating layer thicknesses are critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). Campanile discloses a food composition comprising multiple coating layers whose coating layer thickness is varied as desired. One of ordinary skill in the art would adjust the thickness of the various layers of modified Young based upon the desired rate of dissolution in water when brewed as taught by Campanile.
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pages 7-8 of the Remarks that Young discloses a binder in the meaning of a material which improves the strength of the ground roast coffee tables (‘094, Paragraph [0029]) and that an external coating can enhance the tablet strength, allowing tableting at a reduced compaction force (‘094, Paragraph [0085]) but is silent regarding the solubility of the coating layer. Applicant contends that Young lacks the disclosure of a water insoluble coating layer, a water insoluble coffee powder pellet containing a second component in the form of a water insoluble inert filler, a ratio of at least 50% of the coffee powder to 1 to 40% of at least one of the second components. Applicant continues that Young focuses on providing a readily disintegrating tablet and teaches away from using a water insoluble coffee powder encapsulated by a water insoluble coating layer.
Examiner argues the obviousness rejection of Claim 1 under 35 USC 103(a) is based on a combination of the primary reference of Young modified with the secondary references of Coleman, Walker et al., Mulye et al., Ball, and Nickel. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, this argument is not found persuasive.
Applicant argues on Page 8 of the Remarks that the modified starch of Coleman is not an inert filler. Applicant points to Column 3, lines 5-6 as disclosing the modified starch is water insoluble but swells in the presence of hot water to form a matrix on top of the filter and retarding the flow rate of the brewed beverage through the filter which indicates that the modified starch plays an active role in the brewing process by influencing the flow characteristics and reacting with other substances during its intended use and is not inert.
Examiner argues Coleman explicitly uses the term “inert” in the passage of Column 3, lines 5-6 of Coleman cited by applicant. Additionally, Coleman discloses using inert fillers in the form of insoluble particulate cellulosic or starch materials (‘200, Column 5, lines 36-54). Therefore, this argument is not found persuasive. Furthermore, Mulye et al. also discloses incorporating an inert filler in an orally ingestible tablet (‘786, Column 7, lines 3-18). Additionally, Stock et al. US 2008/0213406 discloses inert excipients include binders (‘406, Paragraph [0065]). Heusinkveld US 3,640,727 discloses a chemically inert and essentially taste free water insoluble binder (‘727, Column 7, lines 29-36). Cartiller et al. US 5,989,589 discloses inert binders having flowing properties such as microcrystalline cellulose, modified starches, gums, and the like are used for tableting which binders also increase the strength of the compressed tablet and decrease its friability (‘589, Column 1, lines 28-41). Therefore, the modified starch particulate binders disclosed by Young (‘094, Paragraph [0058]) are types of inert fillers as evidenced by Cartiller et al. (‘589, Column 1, lines 28-41).
Applicant argues on Page 8 of the Remarks that Walker relates to an instant product (‘904, Paragraph [0009]) wherein “instant” relates to a product that is prepared quickly without the need for special steaming equipment and the like such as instant coffee products (‘904, Paragraph [0011]). Applicant argues that providing a solution to adjust the solubility in order to delay the dissolution reaction does not result in a water insoluble product according to the present invention.
Examiner argues the rejection of Claim 1 under 35 USC 103(a) is an obviousness based rejection of the primary reference of Young modified with the secondary references of Coleman, Walker et al., Mulye et al., Ball, and Nickel. The primary reference of Young already discloses incorporating solid particulate binders in the form of modified starches (‘094, Paragraph [0058]) into the mixture of different roast coffees and/or different excipients (‘094, Paragraph [0061]). The secondary reference of Coleman teaches incorporating water insoluble modified starches into a mineral source blend that is added to ground coffee (‘200, Column 3, lines 3-8) and incorporating insoluble inert filler materials (‘200, Column 5, lines 36-54), which ground coffee powder solubility can be adjusted based upon the amount of insoluble inert filler material added to the mixture of different roast coffees. The secondary reference of Walker et al. is being relied upon to render obvious the solubility levels of the at least one insoluble coating layer. Walker et al. is not being relied upon for its coffee powder mixture to be “instant” coffee. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Therefore, this argument is not found persuasive.
Examiner notes that applicant’s comments on Pages 8-9 of the Remarks with respect to Mulye et al., Ball, and Black does not specifically and distinctly point out the supposed errors of the Office Action. Applicant merely points to specific passages pertaining to the term “inert filler.” However, applicant provides no arguments with respect to the “inert filler” term disclosed by these references. With respect to Mulye, applicant underlines the phrase “sustained release.” However, it is unclear what applicant’s arguments are pertaining to an inert filler. With respect to Ball, applicant points to Paragraph [0039] of Ball as disclosing the inert filler may contain flavours or nutrients. Examiner notes that this passage includes the phrase “may contain,” which indicates that the presence of flavors or nutrients is optional. Disclosed examples an preferred embodiments do not constitute a teaching away from a broader disclosure (e.g. inert filler without flavors or nutrients) or nonpreferred embodiments in view of In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971) (MPEP § 2123.II.). It is noted that Black et al. is being relied upon only in the rejections of Claims 8-9 to teach powdered particles having the form of flakes or spheroidal ellipses, which renders obvious the limitations regarding the elongated shape.
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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/ERICSON M LACHICA/Examiner, Art Unit 1792