DETAILED ACTION
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
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.
Claims 41, 42, 44 – 53, and 61 – 63 are rejected under 35 U.S.C. 103 as being unpatentable over Murphy et al. US 2019/0053657 in view of De Aldecoa Bueno US 10306904 as further evidenced by FAO/INFOODS Databases Density Database Version 2.0 (FAO) and Koch EP 0844195.
Regarding claim 41, Murphy discloses a method of preparing an extract which method comprises loading an extraction material (ground coffee 221) into an extraction cell (100/200) having a bottom portion (103/203) and a top portion (106/206), and introducing a flow of extraction medium (water) through the bottom portion of the extraction cell (103/203) at a first flow rate (paragraph [0025] – [0033]). The extract that has been extracted from the extraction material by the flow of extraction medium into the extraction cell is then withdrawn (retrieved) from a filter (105/205) at the top portion of the extraction cell (106/206) (paragraph [0040]).
Further, since the flow of extraction medium exhibits a constant velocity, i.e., plug flow, through the extraction cell it is seen that the extraction medium continuously flows upwardly through the extraction cell from introduction of the flow of extraction medium through the bottom portion without adjacent fluid layers of the extraction medium substantially mixing to the withdrawal of the extract from the filter at the top portion (constant velocity), such that a flow rate of the flow of extraction medium does not change more than 80% from the first flow rate (paragraph [0015]).
Murphy discloses the flow rate of extraction medium exhibits a substantially continuous flow upwardly through the extraction cell from the bottom portion to the top portion, i.e., a constant velocity, or plug flow (paragraph [0015]). Further it is seen to be obvious that absent strong and compelling evidence to the contrary that the brew time would comprise a time from the introduction of the flow of extraction medium through the bottom portion to the withdrawal of the extract from the filter at the top portion.
Further with respect to the flow of extraction medium does not temporarily stop moving through the extraction material once wetted by the flow of extraction medium and before withdrawing the extract from the filter, in disclosing that the inlet valves to the extraction cell may be closed after a pressure buildup (paragraph [0023]) Murphy is not requiring the valves to be closed during the flow of an extraction medium. In disclosing the extraction slurry can be maintained within the interior of the extraction cell for one minute (paragraph [0037]) Murphy is seen to be allowing the extraction material to be wetted by the extraction before withdrawing the extract from the filter as claimed.
Murphy is not seen to be requiring the extraction slurry to be maintained in the extraction cell, i.e., to temporarily stop moving after the extraction material has been wetted. It is also seen that Murphy specifically discloses that the terms may and can, do not in any way imply that the elements recited therewith are required to be performed in any particular embodiment (paragraph [0060]). Murphy further discloses second and third embodiments, which embodiments do not require the extraction to temporarily stop moving through the extraction material at all (paragraph [0068] – [0069]). Given the above disclosures of Murphy taken as a whole it would have been an obvious matter of choice and/or design to the ordinarily skilled artisan to perform the method of preparing an extract without requiring the extraction medium to temporarily stop moving through the extraction medium once the extraction material has been wetted by extraction medium.
As set forth above it is The Office’s position that given the teachings of Murphy as a whole the ordinarily skilled artisan would have found it obvious to perform a method of extracting an extraction material in an extraction cell without temporarily stopping the flow of the extraction medium through the extraction material once the extraction material has been wetted by extraction medium. In the event that claim 41 can be construed as differing from Murphy in that the flow of extraction medium does temporarily stop moving through the extraction material De Aldecoa Bueno discloses the preparation of an extract which comprises loading an extraction material into an extraction cell having a bottom portion and a top portion where the extraction material comprises ground coffee. A flow of extraction medium is introduced through the bottom portion (bottom inlet) of the extraction cell at a flow rate (between 2 and 5 gallons per minute) and the extract that has been extracted from the extraction material by the flow of extraction medium introduced into the extraction is withdrawn from a filter at the upper end (col. 3, ln 39 – col. 4, ln 64) and the flow of extraction medium does not temporarily stop moving through the extraction material (col.6, ln 5 – 7). De Aldecoa Bueno discloses that by performing the extraction under pressure (100 psig – 200 psig/6.9 bar – 13.9 bar) steeping, i.e., temporarily stopping the movement of the extraction medium through the extraction medium is not required (col. 6, ln 1 – 7, and col. 7, ln 1 – 5). It is further noted that Murphy is also preparing the extract under similar pressures (about 16 bar gauge) as disclosed by De Aldecoa Bueno. De Aldecoa Bueno and Murphy are both preparing an extract under similar pressures. To therefore modify Murphy and prepare the extract such that the flow of extraction medium does not temporarily stop moving through the extraction material as taught by De Aldecoa Bueno would have been an obvious matter of choice and/or design for the ordinarily skilled artisan.
Regarding the ground coffee having a density of between 0.2 g/ml and 0.4 g/ml FAO provides further evidence that ground coffee has a normal density of between 0.2 g/ml and 0.4 g/ml (0.35 – 0.38) (page 7 first entry).
Regarding the ground coffee having a specific particle size between 200 µm to 400 µm, generally, differences in particle size will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such particle size 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (MPEP § 2144.05II.A.). In any event, Murphy discloses that the level of grind, that is particle size, would have an effect on extraction and that extraction would proceed more quickly when fine particle sizes are used (paragraph [0026]) which is to say that the particle size of the ground coffee is a result effective variable which the ordinarily skilled artisan would conventionally and routinely optimize based on the type/style of coffee one would choose to extract and it therefore would have been on obvious matter of choice and/or design to choose a particle size based on the particular type of coffee one would desire to extract as well as the desired extraction time. Nevertheless, Murphy discloses that the mean particle diameter would be about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm Koch provides further evidence that the standard median particle size for finely ground coffee would be between 200 µm to 400 µm (translation page 2, paragraph 4). Further, where Brix =
T
D
S
.
85
(see paragraph [0110] of Applicant’s specification as filed), Murphy discloses the coffee extract would have a TDS of 8% (80g/L) which calculates to a brix of 9.4 (paragraph [0051]).
Regarding claim 42, Murphy discloses that the method would provide a yield of the extract of about 16% (paragraph [0071]). In disclosing the yield would be about 16% Murphy is allowing for a slightly greater yield, that is close to the 17% claimed yield and it is thus seen that a prima facie case of obviousness exists even though the claimed ranges or amounts do not overlap with the prior art but are merely close to Murphy’s disclosed range (MPEP 2144.05I.).
Regarding claim 44, Murphy discloses the extraction medium would not be heated before it is introduced into the extraction cell (at ambient temperature when added to the extraction cell) (paragraph [0025]).
Regarding claim 45, Murphy discloses the extraction medium would have a temperature of between 15º C and 30º C (paragraph [0025]).
Regarding claim 46, Murphy discloses that the introduction of the extraction medium through the bottom portion of the extraction comprises introducing the extraction medium at a flow rate that achieves plug flow (paragraph [0073]), which is to say that it would been obvious to the ordinarily skilled artisan to interpret “introducing the extraction medium at a flow rat that achieves plug flow” as meaning such that the first flow rate achieves plug flow.
Regarding claim 47, Murphy discloses the extraction material would not have been subjected to prior extractions (paragraph 0074]).
Regarding claim 48, Murphy discloses the internal chamber of the extraction cell would have a length and an average width along the length and the ratio of the length to average diameter would be between 0.75 and 2:1 (1:1) (paragraph [0014]).
Regarding claim 49, Murphy discloses the filter at the top portion would have a mean aperture diameter of 50 µm (0.05 mm) (paragraph [0021]).
Regarding claim 50, Murphy discloses the flow of extraction medium is maintained at a constant or substantially constant flow velocity (plug flow) (paragraph [0015]).
Regarding claim 51, Murphy discloses the flow of extraction medium is maintained at a constant or substantially constant flow velocity (plug flow) across a radial axis of the chamber (paragraph [0015]).
Regarding claim 52, Murphy discloses the extract would be extracted in less than 75 seconds (1 minute) of introducing the flow of extraction medium through the bottom portion of the extraction cell (paragraph [0051]).
Regarding claim 53, Murphy discloses the extract is extracted in less than 30 minutes of introducing the flow of extraction medium through the bottom portion of the extraction cell (paragraph [0051]).
Regarding claims 61 – 63, Murphy discloses that the flow rate is a very important consideration in the method of preparing an extract. Murphy teaches that when the flow rate is too high, the extraction solvent can exploit irregularities within the interstitial spaces of the coffee grounds to form channels through the cake leading to over extraction (paragraph [0033]), that by controlling the rate at which the extraction medium is introduced into the interior of the extraction cell the ordinarily skilled artisan can control many aspects of the extraction process (paragraph [0034]), and that the flow rate should be gauged in relation to the volume of the extraction medium residing within the interior of the extraction cell giving examples of flow rates based on the percentage of the volume that would be displaced over time (paragraph [0035]). Murphy also teaches that steeping times, which would be a function of flow rates, would vary broadly depending on the nature of the material to be extracted and the desired characteristics of the extract to be obtained (paragraph [0037]). Further still Murphy discloses that the flow rate would also be gauged in relation to the volume of the aliquot of extraction medium and will depend on the size of the extraction cell, particle size of the material to be extracted, and the diameter and aperture size of the filter (paragraph [0041]). Thus it is seen that Murphy is disclosing that the specific flow of extraction medium would be a result effective variable which the ordinarily skilled artisan would commonly and routinely optimize to obtain predictable results. Generally, differences in the flow rate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such flow rate 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. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages, or in this case flow rates. It is a settled principle of law that a mere carrying forward of an original disclosed conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original disclosed invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (MPEP 2144.05 IIA.).
Response to Arguments
Applicant's arguments and the declaration of Kieran Murphy both filed 24 June 2025 have been fully and carefully considered but they are not found persuasive.
First it is noted that Mr. Murphy indicates that his affidavit is in response to the Office Action dated 05 June 2024 when the most recent Office Action was dated 27 March 2025.
Mr. Murphy urges that the assignee, Starbucks Corporation, has created a method of producing a cold extraction preparation according to the disclosure of the present application and that the method of preparing cold extractions can be limited by a number of variables, such as the temperature, pressure, aspect ratio, extraction time, and that the particle size of ground coffee is critical to the process using substantially continuous flow of a cold extraction medium in producing the desired strength and quality of the extract.
These same variables, and that they would affect the method of preparing cold extractions, are also disclosed in Murphy ‘657 (temperature, pressure) (paragraph [0010]) (aspect ratio, extraction times, strength) (paragraph [0014]) (particle diameter, i.e., size) (paragraph [0026]). In particular Murphy ‘657 discloses that in particular that the level of grind would affect extraction characteristics and specifically Murphy ‘657 discloses that the ground coffee would have a particle size of about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm. Since the end result, that is the characteristics and/or qualities of the produced extract would be dependent on those variables, including the particle size of ground coffee, it is seen that each of these variables are in fact result effective variables and it is not inventive to discover the optimum or workable ranges by routine experimentation which experimentation is what Murphy discloses in his declaration. Further, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP § 2144.05 (I.).
With respect to applicant’s urgings applicant urges that none of the references disclose a particle size of between 200 µm and 400 µm, that in reciting a particle size of 300 µm and 650 µm Koch is different from the claimed particle size. These urgings are not deemed persuasive.
Murphy discloses that in particular that the level of grind would affect extraction characteristics and, specifically, Murphy discloses that the ground coffee would have a particle size of about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP § 2144.05 (I.). With respect to applicant’s urging that Koch is different from the claimed particle size Koch clearly discloses a particle size of between 300 µm and 650 µm therefore applicant should be apprized that the particle size disclosed by Koch clearly falls within applicant’s claimed range, which is to say that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP § 2144.05 (I.). Further, Koch has been brought as further evidence that the median particle size with respect to ground coffee commonly falls within the claimed range and not to teach a process of using a capsule as applicant asserts.
Applicant urges that with respect to the claimed particle size range The Office has relied on hindsight reasoning. This urging is not found persuasive.
As set forth above, Murphy discloses that the ground coffee would have a particle size of about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP § 2144.05 (I.).
Further in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant urges that The Office fails to establish that using a particle size between 200 µm and 400 µm would be within the skill set of the ordinarily skilled artisan. This urging is not deemed persuasive.
Again, Murphy discloses that the ground coffee would have a particle size of about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP § 2144.05 (I.).
Applicant urges that MPEP § 2144.05 II.A. is limited to differences in concentration or temperature. This urging is not found persuasive.
Such a narrow interpretation is not warranted given a full reading of the MPEP section where it states that a change in form, proportions, or degree will not sustain a patent and it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In this instance a change in particle size of the claimed ground coffee is a change in proportion. While the applicant and the declaration of Murphy urge that the particle size of said ground coffee is critical, again Murphy ‘657 discloses that the ground coffee would have a particle size of about 500 µm which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close as set forth in MPEP § 2144.05 (I.).
Applicant urges that further analysis with respect to the matter of routine optimization with respect to claimed particle size of the ground coffee has not been made. This urging is not deemed persuasive.
As clearly set forth in the Office Action, Murphy has unequivocally recited that the method of preparing cold extractions would be limited by a number of variables, such as the temperature, pressure, aspect ratio, extraction time, and that the particle size of ground coffee is critical to the process using substantially continuous flow of a cold extraction medium in producing the desired strength and quality of the extract. That these variables would affect the method of preparing cold extractions is clearly disclosed in Murphy ‘657 (temperature, pressure) (paragraph [0010]) (aspect ratio, extraction times, strength) (paragraph [0014]) (particle diameter, i.e., size) (paragraph [0026]) and in particular Murphy discloses that the level of grind would affect extraction characteristics. Again Murphy discloses that the ground coffee would have a particle size of about 500 µm (0.5 mm) (paragraph [0026]) which would allow for a particle size of slightly smaller than 500 µm which would include a particle size of 400 µm. Since the end result, that is the characteristics and/or qualities of the produced extract would be dependent on those variables, including the particle size of ground coffee, it is seen that each of these variables are in fact result effective variables and a proper analysis has been made contrary to applicant’s urging and the prior art reads on the claim as presently recited.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 17 September 2025
/VIREN A THAKUR/Primary Examiner, Art Unit 1792