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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/18/26 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/17/25 was filed after the mailing date of the Office action mailed on 7/30/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 7/7/25 (in application 17/597,370) disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 17597370 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The amendment filed on 2/18/26 has been entered. Claims 1-19 are pending in this U.S. Patent Application with claims 1-2 and 11-19 being examined on their merits. Claim 1 was amended to include the new limitations of lyophilizing “directly without a prior cooling step” in step d) after cryogenizing in step c), and “with a release of the dissolved gas which allows the formation of small, very” porous particles in step d), and “wherein spherical particles represent at least 25% of the powder” in step e).+
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.
Claims 1-2 and 11-19 are 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.
The terms “small” and “very” in claim 1, step d), line 2, are relative terms which renders the claim indefinite. The terms “small” and “very” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The claim is indefinite because it is unclear what particle size/diameter is considered “small”, and what level or degree of porosity is considered a “very” porous particle.
Claims 2 and 11-19 are rejected by virtue of their dependance on a base rejected claim.
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.
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.
Claim(s) 1-2, 12, 14, 16 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desjardins-Lavisse et al. [US 20100055285 A1], hereinafter Desjardins-Lavisse, in view of Hudak et al. [EP 0037810 B1], hereinafter Hudak.
Regarding claim 1, Desjardins-Lavisse teach a method for obtaining a product in the form of deep-frozen granules, particles or beads having a high dissolved gas content from a liquid, semi-liquid or paste-like matrix which may be from a coffee product [0014, 0033] (equivalent to providing a coffee preparation in the form of a liquid, semi-liquid, or pasty matrix as claimed), that comprises two subsequent steps: a matrix gasification step that comprises the incorporation of gas at a pressure higher than 2 bars (equivalent to dissolving an inert gas in the matrix by passing the matrix through a zone dense in gas molecules obtained by an elevation of the pressure as claimed) [0013, 0015]; and cryogenizing the gas-rich matrix to obtain frozen granules, particles, or beads as claimed [0016, 0017, 0022]. The gas is added under elevated pressure enabling substantial quantities of gas to be dissolved and trapped in the matrix on deep-freezing (cryogenic step) [0003-0004] (as disclosed on par.0030 of the instant specification, “Cryogenics under pressure makes it possible to obtain frozen non-porous products containing a large quantity of dissolved gas.”). The method according to the invention can be applied to food products, notably beverages such as coffee [0032].
In regards to the formation of a non-porous intermediate products of step c), Desjardins-Lavisse teach the gasification of the liquid at elevated pressure (pressure higher than 2 bars) and rapid freezing the gasified liquid using a cryogenic fluid [Abstract and 0013-0016]. Desjardins-Lavisse teach the invention does not consist of an expansion, but in the simple creation of an equilibrium of a food-grade matrix and a pressurized gas (as disclosed on par.0045 and Fig.8, step c, “The arrows represent the gas that is applied to the surface of the product in step b., which remains in equilibrium in step c. and which escapes in step e.”). Desjardins-Lavisse further teach that the release of the gas occurs at the moment when the temperature is restored and not in the installation during deep- freezing. The method carries out the gasification of a matrix and its rapid deep-freezing in series, such that particles, granules or beads are produced which contain the dissolved gas. These particles, granules or beads are stable during storage in the frozen state and enable foams or bubbles to be produced from the final product as it is returned to a positive temperature [Desjardins-Lavisse, 0018]. Therefore, Desjardins-Lavisse teach producing a frozen non-porous intermediate product with dissolved gas that is maintained as claimed.
Desjardins-Lavisse differs from instant claim 1 in specifically reciting, directly without a prior cooling step, lyophilizing the frozen non-porous granules, particles, or beads with a release of the dissolved gas which allows the formation of small, very porous particles of coffee; and obtaining the lyophilized coffee in powder form, wherein spherical particles represent at least 25% of the powder.
Hudak teaches a method of preparing a lyophilized coffee [Hudak, col.14, l.10], wherein said coffee is directly lyophilized (freeze-dried under vacuum [Hudak, col.6, l.20-21]) immediately after a cryogenization step [Hudak, col.4, l.14-45], where the moisture content of the cryogenized or shock frozen particles of concentrated coffee extract which is in the form of minute ice crystals is sublimed from the particles to yield solid coffee granules with the microporous structure of the invention, and where moisture removal is accomplished completely by sublimation (no liquid water present) to produce the desirable pore structure [Hudak, col.4, l.46-54], (“lyophilization under partial vacuum, resulting in the sublimation of the water contained in the product and the release of the gas trapped therein, causing the creation of a microporous structure in the solid product beads”, as disclosed on page 11, lines 31-34 of the instant Specification). In other words, Hudak teaches cryogenizing the coffee and then immediately sublimation of the water (in ice form) present in the coffee by lyophilization (freeze-drying under vacuum) causing the creation of a microporous structure in the solid coffee beads.
In regards to the limitation of step e) “spherical particles represent at least 25% of the powder”, the examiner notes that given that the claims are directed to a method of preparing a lyophilized coffee, and the process of preparing a lyophilized coffee based on the disclosure in Desjardins-Lavisse combined with the teachings in Hudak is the same to that in the instant claims, it is the examiner's position that the cryogenized under pressure and directly lyophilized coffee particles made by the method of Desjardins-Lavisse in view of Hudak is expected that the method would provide spherical coffee particles, wherein said spherical particles represent at least 25% of the powder.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a step of directly lyophilize a cryogenized coffee product as taught by Hudak, in the method of Desjardins-Lavisse, because Hudak teaches that this would produce coffee granules with a desirable pore structure [Hudak, col.4, l.54], having a unique porosity which provides these granules with the capability of sorbing and retaining roasted and ground coffee aromatics and controllably releasing these aromatic volatiles [Hudak, col.1, l.5-10].
Regarding claim 2, Desjardins-Lavisse teach the gas incorporated (dissolved) into the matrix may be nitrogen [Desjardins-Lavisse, 0004, 0021 and claim 2].
Regarding claim 12, Desjardins-Lavisse teach the incorporation of gas at a pressure higher than 2 bars (equivalent to dissolving an inert gas in the matrix by passing the matrix through a zone dense in gas molecules obtained by an elevation of the pressure as claimed) [Desjardins-Lavisse, Abstract, 0013 and 0015].
Regarding claim 14, Desjardins-Lavisse disclose the gasified and cryogenized particles may be spheres [Desjardins-Lavisse, 0017].
Regarding claim 16, Desjardins-Lavisse teach the resulting beads or particles are compacted particles so that the release of the gas occurs at the moment when the temperature is restored and not in the installation during deep-freezing [Desjardins-Lavisse, 0018].
Regarding claim 19, Desjardins-Lavisse teach the method of the invention may be used for the preparation of foods [Desjardins-Lavisse, 0032-0038] but does not explicitly recites using the lyophilized coffee for the preparation of drinks, food, or cosmetic preparations.
Hudak teaches a step of using the lyophilized porous coffee for the preparation of drinks [Hudak, col.5, l.46-51].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a step of using the lyophilized porous coffee for the preparation of drinks as taught by Hudak, in the method of Desjardins-Lavisse, because Hudak teaches that this would produce coffee beverages with desired flavor effects upon reconstitution with water [Hudak, col.5, l.46-51].
Claim(s) 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desjardins-Lavisse in view of Hudak as applied to claim 1 above, and further in view of Spencer et al. [US 6337098 B1], hereinafter Spencer.
Regarding claims 11, modified Desjardins-Lavisse teaches the methods and concepts discussed above in claim 1 rejection, but does not explicitly recite the dissolution of a gas in the matrix by passing the matrix through a zone dense in gas molecules, wherein the density of the gas in the zone is obtained by the gas flow generated by the evaporation of a cryogenic fluid.
Spencer teach a method of improving the aroma and/or the flavor of coffee which includes a step of injecting a gas or a gas mixture into coffee in a closed space and/or into the closed space (injecting a gas in a closed space is equivalent to dissolving a gas by an elevation of the pressure as claimed) [Spencer, col.3, lines 17-21]. Spencer teach that a gas or a gas mixture may be introduced into a substrate by vaporization of a cryogenic liquid (equivalent to dissolution of a gas in the matrix generated by the evaporation of a cryogenic fluid as claimed) [Spencer, col.4, lines 57-59].
Regarding the method used for dissolving gas in a substrate, the MPEP states:
MPEP 2143 I. B. Simple substitution of one known element for another to obtain predictable results. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
MPEP 2143 I. D. Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results. The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art.
MPEP 2144.06 II. Substituting equivalents known for the same purpose.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have substituted the method of gasification by the evaporation of a cryogenic fluid of Spencer with the method of gasification by an elevation of the pressure of modified Desjardins-Lavisse, because the substitution of art recognized equivalents as shown by Spencer is within the level of ordinary skill in the art. In addition, the substitution of one method of dissolving gas for another is likely to be obvious when it does no more than yield predictable results.
Regarding claim 13, modified Desjardins-Lavisse already teach gasifying a matrix by elevation of the pressure, and Spencer teach that a gas or a gas mixture may be introduced into a substrate by evaporation of a cryogenic liquid as explained in claim 11 above, but do not explicitly recite combining different gasification techniques or methods.
It would have been obvious to one of ordinary skill in the art to combine the gasification methods as claimed into the invention of Desjardins-Lavisse, since Desjardins-Lavisse already disclose gasification by an increase in pressure and Spencer disclose both gasification by elevation of the pressure (injecting a gas into a closed space) and gasification by evaporation of a cryogenic fluid, and since the claimed combination of methods for dissolving gases in a substrate would have been used during the course of normal experimentation and optimization procedures due to factors such as the type of substrate being gasified, ratios of the various ingredients and/or the desired amount of gas introduced in the intermediate and/or final compositions.
Furthermore, MPEP 2144.06 I. states:
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
It would have been obvious to a person having ordinary skill in the art at the time of the invention to dissolve a gas in a substrate by the method of evaporation of cryogenic fluid as taught by Spencer in combination with a method of dissolving a gas in a substrate by an elevation of pressure as taught by Desjardins-Lavisse, since Spencer teaches that both methods of adding gas to a liquid substrate are known alternatives to the gasification method taught by Desjardins-Lavisse. Further, one would have a reasonable expectation of success by combining both gasification methods as Spencer teaches that both methods are known and equivalent methods for dissolving gas in liquids. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) and MPEP 2143 I. A. and 2144.06 I.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desjardins-Lavisse in view of Hudak as applied to claim 1 above, and further in view of Robinson [US 20150175716 A1] and evidenced by Welsh et al. [WO 2017186876 A1], hereinafter Welsh.
Regarding claim 15, modified Desjardins-Lavisse teach the gasified, cryogenized and lyophilized coffee product discussed in claim 1 above, and further disclose that the resulting particles, granules and/or beads can have a varied size range but do not explicitly recites the particles having a particle size less than 30 microns when measured by optical microscopy.
Robinson teach compositions and methods for atmospheric spray freeze drying [Title]. The Atmospheric Spray Freeze Drying (ASFD) process is a process in which a liquid solution or suspension of a powder forming ingredient is sprayed as mist of fine droplets. This method can produce a spray freeze-dried powder having particles with a desired size range and characteristics [0051]. The method may produce dry porous particles often approximately the same size and shape as the original frozen droplets with median diameter of about 1 micron or less. However, there can be considerable variation based on the nature, type, and size of the nozzle that is used [0105].
Regarding the size being measured by optical microscopy, Robinson disclose using scanning electron microscope photos (SEM images) of the powder to determine physical properties such as shape (spherical) of the powder produced by the invention [0125]. And the evidentiary reference of Welsh disclose that observation of SEM images may be used to measure size [Welsh, p.18, lines 31-35].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Desjardins-Lavisse to incorporate the teachings of Robinson and provide a method that produces a dry powder where particles are as small as 1 micron or less as taught by Spencer, because Spencer teach that this would provide a spray freeze dried powder with a desired size range and characteristics [Robinson, 0051] that does not require additional grinding [Robinson, 0008].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desjardins-Lavisse in view of Hudak as applied to claim 1 above, and further in view of Einstman [GB 2074007 A].
Regarding claim 17, modified Desjardins-Lavisse teach the methods and concepts explained in the rejection of claim 1 above, but does not explicitly teach mixing different types of lyophilized coffees.
Einstman teach dry soluble coffee product having added thereto aromatized particles or granules of a microporous structured soluble coffee product having a small nominal pore radius and one or more fractions of a microporous structured soluble coffee product having a larger nominal pore radius and/or a conventional soluble coffee powder [Einstman, Abstract]. The disclosure teach combining, adding or mixing an aromatized and unaromatized coffee material having different pore diameters, where the coffee material may be a freeze-dried or spray-dried soluble coffee product [Einstman, p.1, lines 48-54].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Desjardins-Lavisse to incorporate the teachings of Einstman and provide a method that combines different types of lyophilized coffee materials as taught by Einstman, because Einstman teach that combining different types of lyophilized coffees would provide a spray freeze dried coffee product having better initial jar aroma quality/intensity than any single aromatized microporous structured soluble coffee and better in-use aroma stability [Einstman, p.1, lines 54-56].
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desjardins-Lavisse in view of Hudak as applied to claim 1 above, and further in view of Bisperink et al. [US 20040096562 A1], hereinafter Bisperink.
Regarding claim 18, modified Desjardins-Lavisse teach the methods and concepts explained in the rejection of claim 1 above, but does not explicitly teach mixing the lyophilized coffee with at least one other ingredient, chosen from among milk, chocolate, chicory, flavors, and carrier molecules.
Bisperink teach a powdered soluble foaming ingredient comprising an entrapped gas [Bisperink, 0007]. One aspect of the invention provides a soluble beverage powder, the soluble beverage powder comprising a soluble coffee powder and a soluble creamer ingredient or creamer powder [0017]. The invention also provides a soluble freeze-dried coffee powder mixed with a soluble creamer powder (mixing lyophilized coffee with at least one other ingredient/flavor as claimed), and if desired may be also combined with chicory [0040].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Desjardins-Lavisse to incorporate the teachings of Bisperink and provide a method that combines lyophilized coffee with different flavors as taught by Bisperink, because Bisperink disclose that combining lyophilized coffee with different flavors would provide a variety of flavors and applications in which the freeze dried composition may be used as desired [Bisperink, 0040]. Furthermore, MPEP 2144.06 I. states: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 and 11-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The arguments are directed to the prior rejection over Desjardins-Lavisse in view of Dumez, and the present rejection necessitated by the amendment and new limitations of independent claim 1 is over Desjardins-Lavisse in view of Hudak.
Applicant's arguments filed 2/18/26, on pages 7-8 have been fully considered but they are not persuasive.
On page 7, last paragraph of the Remarks, Applicant urges that the organoleptic properties and the color of the powder prepared by the claimed method are surprisingly improved.
This argument is not persuasive because the examiner notes that the method of Desjardins-Lavisse already provides for coffee products [Desjardins-Lavisse, 0032] having an optimum quality [Desjardins-Lavisse, 0041] and organoleptic properties [Desjardins-Lavisse, 0030, 0040] that are advantageously ready for use, do not require any processing or handling by the consumer and without the production of any type of waste [Desjardins-Lavisse, 0038]. Moreover, the argument is not persuasive because Desjardins-Lavisse disclose that these compositions or preparations are available by simply attaining room temperature or by reheating by any known method, wherein after thawing, the dissolved gas escapes from the matrix structure, thereby forming a foam or micro bubbles [Desjardins-Lavisse, 0039], thus teaching gas escaping from the spherical particles which would create pores on the particles. Further, the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 716.01(c).
On page 8, paragraph 6 of the Remarks, Applicant urges that the claimed method provides for preparing a lyophilized coffee in a shorter time than conventional deep-freezing-lyophilization methods because the product is lyophilized directly after the cryogenic step without a prior cooling step.
However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., preparing a lyophilized coffee in a shorter time) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, Desjardins-Lavisse in view of Hudak teach this new limitation of directly without a prior cooling step, lyophilizing the frozen non-porous granules, particles, or beads, therefore it is reasonable to expect that the method of preparing a lyophilized coffee of Desjardins-Lavisse in view of Hudak would also produce a lyophilized coffee in a shorter time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Erik Kashnikow can be reached at (571) 270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.E.D./Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792