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 .
Response to Amendment
Applicant’s amendment to the claims have overcome the 35 U.S.C. 112(b) rejection previously set forth in the last Office Action mailed 11/18/25. Claims 1-3, 8-9 and 11-23 are pending, with claims 1-3, 8-9 and 22-23 being examined. Claim 1 has been amended to include “and wherein said cooled fluid flushing step uses a cooled fluid having a temperature of less than 8 °C”, and claims 4-7 and 10 were previously canceled. Claims 11-21 are withdrawn from consideration.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brussa et al. [US 20190039821 A], hereinafter Brussa in view of Mathias et al. [US 20170001794 A1], hereinafter Mathias, and Zheng et al. [US 7060315 B2], hereinafter Zheng, evidenced by Koenck et al. [US 20040126466 A1], hereinafter Koenck.
Regarding claim 1, Brussa teach a method of treating a roasted beverage ingredient comprising roasted whole coffee beans [Abstract], the method comprising the steps of: step b) reducing the amount of oxygen surrounding the ingredient [0049] down to less than 5% [0130], wherein step b) comprises a fluid flushing of the ingredient [0126-0127, 0254], as required by claimed step b), and wherein the method comprises packing the ingredient for at least 1 week (90 days/13 weeks or more) before first opening [0025], as required by claimed step a).
Brussa does not explicitly teach the claimed incubating step, wherein the incubating step comprise incubating the ingredient at between -10°C and 8°C for 30 to 300 minutes, performing the step of reducing oxygen using a cooled fluid (claimed step b)) before the incubating step (claimed step a)), and wherein said cooled fluid flushing step (claimed step b)) uses a cooled fluid having a temperature of less than 8 °C.
Mathias teach a method of treating a roasted beverage ingredient [Abstract, 0002] comprising roasted whole coffee beans [Mathias, 0053-0054, 0058]. The method teaches a step of tempering which can also include cooling using liquid nitrogen (cooled fluid), because on paragraphs 0085-0086, Mathias teach that cooling using liquid nitrogen as part of any and/or all of the recited steps and because Mathias teaches that the tempering occurs in a saturated nitrogen atmosphere [Mathias, 0072]. Further, Mathias teach that the above described step can be performed before a subsequent step cooling (i.e., incubating) step [Mathias, 0073], which said cooling step can incubate the whole coffee beans at -50 to 10°C for one hour to 5 hours (60-300 minutes) [Mathias, 0062]. Mathias further teach the method may comprise a step (step (a)= cooling step, after a step (a)’= roasting step ) of cooling the coffee ingredient which can be whole coffee beans [Mathias, 0020, 0058] to a temperature of less than 8°C (-50°C to 8°C) [Mathias, 0058] immediately after a roasting step (i.e., prior to any processing step after roasting step (a)’), using liquid nitrogen as part of all of the recited steps, since the cooling means is not limited and includes the use of cold substances such as liquid nitrogen (cooled fluid) [Mathias, 0086].
Further, the evidence of Koenck teaches that liquid nitrogen is suitable for modified/controlled atmosphere packaging because the cooled nitrogen gas that is produced by the liquid nitrogen when this evaporates, displace/replace all oxygen and provides for a high nitrogen atmosphere having virtually no oxygen [Koenck, Abstract, 0044], which is a concept already taught by Mathias where the cooled nitrogen gas produced by the liquid nitrogen during evaporation used for cooling may be kept inside the closed system or removed by fan if desired [Mathias, 0086].
Therefore, because Brussa already teach reducing the amount of oxygen surrounding the ingredient [0049] down to less than 5% [0130], by using a fluid flushing of the ingredient (coffee beans) [0126-0127, 0254], and Mathias teach cooling using liquid nitrogen as part of all of the recited steps, particularly a non-limiting example where whole coffee beans are cooled fluid flushed with nitrogen at a temperature of less than 8°C [Mathias, 0020, 0058, 0086], it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Brussa’s fluid flushing step and substitute (or combine since liquid nitrogen produces cold nitrogen gas upon evaporation) the nitrogen gas of Brussa with the cooled fluid such as liquid nitrogen of Mathias, wherein said cooled fluid flushing step a) of Mathias may be performed prior to a cooling step a) (claimed incubating step), and include an incubating step wherein said incubating step of the ingredient is performed at between -10°C and 8°C for 30 to 300 minutes, and wherein the incubating step occurs after the cooled fluid flushing step at a temperature of less than 8°C as taught by Mathias, because Mathias teach that by cooling the roasted beverage ingredient during any or all processing steps help reduce the loss of aroma volatiles of the roasted ingredient [Mathias, 0047, 0085, 0089], which would provide additional advantages to the process besides advantages relating to the quality of the obtained product [Mathias, 0089], and since Brussa already teach using the same flushing fluid of nitrogen as Mathias, but simply did not explicitly mention the nitrogen was cooled.
Brussa does not explicitly recites the method comprises a packing step specifically occurring during or after an incubating step, and storing specifically at a temperature of between 2°C and 35°C.
Mathias teach the method of treating a roasted beverage ingredient discussed above, and further teach that the method further include a step of packing (filled into 1st capsule [Mathias, 0066], and sealed with a 2nd capsule [Mathias, 0067]) the ingredient during incubating cooling temperatures (cooled during (packing) filling and sealing [Mathias, Abstract, 0020]) of between -10°C and 8°C (at -50°C to 10°C) [Mathias, 0066, 0068], and wherein the method further comprises, after the step of packing the ingredient, the step of storing the ingredient comprising roasted coffee beans at a temperature of between 2°C and 35°C (-30°C to 50°C or 0°C to 20°C) [Mathias, 0149], which packing and storage obviously occur after the incubating, and as previously discussed wherein the ingredient being packed and stored may be a roasted beverage ingredient in any suitable form, such as in the form of roasted coffee beans [Mathias, 0053-0054].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Brussa and include a step of packing the ingredient during and/or after incubating (packing while cooling at claimed incubating temperatures) step, because Mathias teach that cooling the roasted beverage ingredient at temperature ranges of from -50°C to 10°C for certain amount of times [Mathias, 0062] during any and/or all processing steps helps in reducing the loss of aroma volatiles of the roasted ingredient [Mathias, 0047, 0089], and also allow the roasted ingredient to be cooled to the right temperature at the moment of further processes [Mathias, 0062], and because coffee ingredients loses volatile substances during processing and storage, which is known to be caused by heat [Mathias, 0003], therefore by cooling the coffee ingredients during processing and storage, the loss of volatile substances and oxidation can be reduced or avoided [Mathias, 0048-0049], which are concepts that Brussa already express interest in.
Regarding the explicit recitation of packing and storing specifically roasted whole coffee beans at claimed temperatures:
While Mathias express interest mostly in packing roasted ground coffee ingredient, Mathias does not limit the packed roasted ingredient to only an ingredient in ground form [0044], and as mentioned above, Mathias further disclose that the packed roasted ingredient may be in any suitable form including roasted coffee beans [0053-0054].
Zheng teach aroma improving agents in aroma containing components such as coffee [Abstract]. The preferred aroma containing component is coffee beans [col.2, l.56-67 and col.3, l.1-11]. The disclosure teach that while aroma containing components (coffee beans) generally conserves aroma for about six months when stored at ambient temperatures, the storage of the same aroma containing components (coffee beans) at colder temperatures of 0-10°C can improve the aroma retention and maintain aromas in the product for longer times. Also person of ordinary skill in the art can determine by routine testing the optimum storage temperature for retaining the effective aroma characteristics for the desired time periods depending upon the specific aroma-containing component, and desired aroma properties after storage [col.11, l.1-19].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Brussa and include the packing and storing whole coffee beans using the claimed storage temperatures of 2 to 35°C as taught by Zheng, because Zheng teach that storing coffee beans at colder temperatures will improve the retention of aroma substances for longer times compared to coffee beans that are stored at ambient temperatures [Zheng, col.11, l.2-10]. Moreover, based on the teachings of Zheng, one of ordinary skill in the art would modify Brussa to include the claimed storage temperatures or any desired temperatures, thus providing methods of whole coffee bean storage where a person of ordinary skill in the art can determine by routine experimentation the optimum storage temperature for retaining the effective aroma characteristics for the desired time periods depending upon the specific aroma-containing component, and desired aroma properties after storage as taught by Zheng [Zheng, col.11, l.1-19].
Regarding claims 2-3, modified Brussa in view of Mathias teach incubating the ingredient at between -10°C and 8°C for 30 to 300 minutes (claimed step a) as discussed above in claim 1 rejection, wherein the incubating step a) comprises contacting the ingredient with one or more cooling agents such as liquid nitrogen or solid carbon dioxide [Mathias, 0086], as disclosed on p.8, l.11-18 of the instant Specification, and/or wherein the incubating step a) is performed in a refrigerated vessel such as blast freezers, spiral freezers, tunnel freezers or cryogenic equipment [Mathias, 0087, 0155], equivalent to blast chiller, refrigerated conveying screw, cooling tunnel, cryo-screw, as disclosed on p.3, l.25-27 of the instant Specification.
Regarding claim 8, modified Brussa teach the method of treating a roasted beverage ingredient according to claim 1 above, wherein the step of storing the ingredient lasts up to 90 days (13 weeks) and beyond [0025], which encompass the step of storing the ingredient lasts between 2 to 52 weeks before first opening of the packaged ingredient.
Regarding claim 9, modified Brussa teach the method of treating a roasted beverage ingredient according to claim 1 above, and modified Brussa in view of Mathias teach the coffee ingredient can be stored at a wide range of temperatures, such as from -30°C. to 50°C, or 0°C to 20°C [0149], which encompass the claimed storing temperature of between 8°C to 25°C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Brussa and store the roasted beverage ingredient at a temperature of between 8 to 25°C as taught by Mathias, because Mathias teach that by cooling the roasted beverage ingredient during some or all further processing steps including storage steps help reducing the loss of aroma volatiles and oxidation of the roasted ingredient [Mathias, 0047-0048, 0089] caused by heat [Mathias, 0003], and since Brussa already teach storing the roasted beverage ingredient but simply did not explicitly mention the storage temperature, and further express interest in transporting large amounts of packaged roasted coffee beans for storing in warehouses for further processing, and one of ordinary skill in the art would recognize that cooling the roasted beverage ingredient during all the process steps including storage would aid in preventing the loss of VOCs and avoid deterioration of the coffee product as taught by Mathias [Mathias, 0006-0007].
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brussa in view of Mathias, and Zheng as applied to claim 1 above, and further in view of Fasullo-Nachtrieb [US 20130189417 A1].
Regarding claims 22-23, modified Brussa teach the method of treating a roasted beverage ingredient according to claim 1 above, but is silent regarding the ingredient being a blend of Arabica and Robusta whole coffee beans, in an Arabica to Robusta whole coffee beans blend ratio in the range of 50:50 to 90:10.
Fasullo-Nachtrieb teach roasted coffee compositions [Abstract], where in some embodiments the roasted coffee ingredient comprises a blend of Arabica and Robusta whole coffee beans, in an Arabica to Robusta whole coffee bean ratio in the range of 50:50 to 90:10 [0020, 0029, 0046]. Since the composition may be 99% or more unbrewed coffee [0047], and unbrewed coffee includes whole bean coffee [0020], and Robusta whole coffee beans may be present in the Arabica and Robusta blend composition in amounts of 10% to 50% [0020], then the composition comprises Arabica whole coffee beans in amounts of 50% to 90%, which would be a composition of Arabica and Robusta whole coffee beans blend with a blend ratio in the range of 50:50 to 90:10 of Arabica : Robusta.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Brussa and include coffee compositions of Arabica to Robusta whole coffee beans blend ratio in the range of 50:50 to 90:10 as taught by Fasullo-Nachtrieb, because Fasullo-Nachtrieb teach that Robusta coffee beans may be added to Arabica coffee bean blends to reduce production costs since Robusta beans are significantly cheaper than Arabica beans [Fasullo-Nachtrieb, 0005-0006], as well as because both Arabica and Robusta coffee beans have different flavor profiles, with Arabica beans being characterized by having a sweeter, softer taste, with tones of sugar, fruit, and berries, and Robusta being characterized by having a harsh taste [Fasullo-Nachtrieb, 0006]. Particularly, since modified Brussa in view of Zheng also already teach that it is known that Arabica beans provide higher quality, so that coffee products that contain greater amounts of Arabica beans are considered to have higher quality and are more desirable [Zheng, col.7, l.20-23], and Robusta beans have a harsh taste [Zheng, col.3, l.6-8], which are problems (i.e., flavor and productions costs) that are addressed by Zheng’s method [Zheng, col.7, l.23-37], as well as by Fasullo-Nachtrieb [Fasullo-Nachtrieb, 0006, 0012, 0025].
Response to Arguments
Applicant's arguments filed 2/17/26 have been fully considered but they are not persuasive.
On page 8, paragraph 2, Applicant argues that the tempering step (a)” and cooling step (a) of Mathias differs from the claimed oxygen reduction step and incubation step respectively because Mathias does not recognize or explicitly recites that the tempering step is for reducing the amount of oxygen surrounding the ingredient down to less than 5%, or that a cooled flushing step comprise using a cooled fluid below 8°C.
These arguments are not persuasive because as noted by Applicant, Brussa is particularly interested in preventing oxidation (contact with oxygen) of substances in roasted coffee beans, therefore because Brussa is already interested in reducing oxygen levels that is in contact with the roasted coffee beans by flushing with nitrogen, and Mathias teach also flushing with a cooled fluid (nitrogen) which can be performed during the entire process or during all the steps, it would be obvious to one of ordinary skill in the art to look into Mathias to modify Brussa and perform the cooled fluid flushing prior to the incubation step and packaging of the whole roasted coffee beans in order to limit the amount of oxygen that comes in contact with the roasted coffee beans, thus preventing oxidation of the desired coffee substances. Moreover, because both Brussa and Mathias recognize the volatile substances along with the oils present in coffee beans are desired components because these comprise the aromas and flavors of coffee ingredients and it is important to safeguard these components during processing and storage [Brussa, 0025], [Mathias, 0004], it would be obvious to one of ordinary skill in the art to perform all the steps in a cooled fluid flushing state immediately after roasting the coffee beans in order to reduce the roasting temperature and stop the further roasting of the coffee beans to undesired degrees, as well as to preserve the coffee oils and aroma/flavor components present in the roasted coffee beans. That is, Brussa explicitly teach the reduction of oxygen surrounding the roasted beverage ingredient in the form of roasted beans down to less than 5% by flushing with a fluid (i.e., nitrogen), and packing the ingredient for at least 1 week prior to opening, but simply did not mention the fluid used for the flushing was cooled. Mathias also teach the flushing of roasted beverage ingredients comprising roasted whole coffee beans in a cooling step [Mathias, 0053-0054, 0058], where said cooling may be performed in all the steps of Mathias process [Mathias, 0085], using liquid nitrogen which a skilled person recognize as a cooled fluid [Mathias, 0086]. Additionally to Mathias teaching of cooling during the entire process and steps in non-limiting embodiments, Mathias teach the tempering step may be followed by cooling of the roasted whole coffee beans by flushing with liquid nitrogen (cooled fluid flushing) in some embodiments [Mathias, 0114-0115], and another embodiment where tempering includes flushing with nitrogen (which may be liquid nitrogen (cooled fluid) as discussed above) and the beans may be cooled to -20°C to provide pre-cooled beans, where the steps of packing (filling and sealing) may be performed under nitrogen flushing, where said nitrogen flushing is considered or analogous to cooling conditions [Mathias, 0015]. Therefore, one of ordinary skill in the art would be motivated to include the cooled fluid flushing using liquid nitrogen as taught by Mathias in the fluid flushing using nitrogen of Brussa before the claimed incubation step also taught by Mathias because Mathias teach that heat negatively affects coffee beans during storage by causing them to lose flavor, volatile or aroma components, and it is also desired to avoid oxidation of the roasted coffee ingredients caused by exposure to oxygen [Mathias, 0003-0004], which are concepts that Brussa express interest in, particularly so that the roasted coffee ingredients are preserved when transported and/or stored over long periods of times [Brussa, 0002-0005].
On page 8, paragraph 2-3, Applicant also argues that Mathias does not describe reducing the amount of oxygen surrounding the ingredient down to less than 5% by flushing with a cooling fluid. It is noted that while Mathias does not explicitly recites reducing oxygen amounts to less than 5% of less (which is already taught by Brussa by flushing with a fluid such as nitrogen), Mathias does teach flushing the roasted ingredient with a cooled fluid such as liquid nitrogen or cooled nitrogen when flushed in cold environment through all the process steps, which would saturate the space with nitrogen and reduce the level of oxygen. It is also further noted that Mathias already teaches flushing to remove oxygen prior to packaging and Mathias as well as Brussa teach avoiding exposure to oxygen.
On page 8, paragraphs 4-5, Applicant argues that paragraphs [0072-0073] of Mathias are directed to a tempering process performed under ambient temperature and that Mathias suggests that a cooled fluid should not be used.
These arguments are not persuasive because as explained above Brussa explicitly teach the reduction of oxygen surrounding the roasted beverage ingredient in the form of roasted beans down to less than 5% by flushing with a fluid (i.e., nitrogen), and packing the ingredient for at least 1 week prior to opening, but simply did not mention the fluid used for the flushing was cooled. Mathias also teach the flushing of roasted beverage ingredients comprising roasted whole coffee beans in a cooling step [Mathias, 0053-0054, 0058], where said cooling may be performed in all the steps of Mathias process [Mathias, 0085], using liquid nitrogen which a skilled person recognize as a cooled fluid [Mathias, 0086]. Additionally to Mathias teaching of cooling during the entire process and steps in non-limiting embodiments, Mathias also teach the tempering step “generally under ambient temperature and modified atmosphere with nitrogen gas” and does not teach away or recites that said step cannot be performed or that will not work when performed under cooled conditions, particularly because Mathias already disclose that all the recited steps may be performed under cooling as explained above. Moreover, Mathias teaches that the tempering step may be followed by cooling of the roasted whole coffee beans by flushing with liquid nitrogen (cooled fluid flushing) in some embodiments [Mathias, 0114], and another embodiment where the beans are transferred for tempering under nitrogen flushing (which may be liquid nitrogen (cooled fluid) as discussed above), where said nitrogen flushing is considered or analogous to cooling conditions [Mathias, 0115] (nitrogen flushing is considered analogous to cooling conditions because Mathias teaches that in a grinding step which is performed under cooled conditions such as under nitrogen flushing), or the beans may be cooled to -20°C (a temperature of less than 8°C) and while this particular example mentions that the beans may be cooled to -20°C under ambient temperature [Mathias, 0115], nonetheless Mathias teaches that means for cooling in the method are not limited and may be achieved by cooling with cold inert substances, such as liquid nitrogen or solid carbon dioxide [Mathias, 0086], to provide pre-cooled beans, where the steps of packing (filling and sealing) may be performed under nitrogen flushing, where said nitrogen flushing is considered or analogous to cooling conditions [Mathias, 0115] (nitrogen flushing is considered analogous to cooling conditions because Mathias teaches that in a grinding step which is performed under cooled conditions such as under nitrogen flushing). Therefore, one of ordinary skill in the art would be motivated to include the cooled fluid flushing using liquid nitrogen as taught by Mathias in the fluid flushing using nitrogen of Brussa before the claimed incubation step also taught by Mathias because Mathias teach that heat negatively affects coffee beans during storage by causing them to lose flavor, volatile or aroma components, and it is also desired to avoid oxidation of the roasted coffee ingredients caused by exposure to oxygen [Mathias, 0003-0004], which are concepts that Brussa express interest in, particularly so that the roasted coffee ingredients are preserved when transported and/or stored over long periods of times [Brussa, 0002-0005].
On page 9, Applicant argues that Mathias teach cooling only during cooling step (a), grinding step (b), filling step (c) and sealing step (d) and do not teach cooling during tempering step (a)”, that Mathias use of liquid nitrogen is only for thermal management purposes and not for oxygen reduction, that a skilled artisan would not be motivated to modify Mathias tempering step which is performed at ambient temperature, and that the Office action fails to establish any motivation to use the cooled fluid flushing of Mathias in the method of Brussa for oxygen reduction.
In regards to applicant's argument on page 9, paragraph 1, that Mathias teach cooling only during cooling step (a), grinding step (b), filling step (c) and sealing step (d) and do not teach cooling during tempering step (a)” (i.e., prior to incubating step as instantly claimed), Mathias teach cooling using liquid nitrogen as part of all of the steps, particularly a non-limiting example where the beans are transferred for tempering under nitrogen flushing (which may be liquid nitrogen (cooled fluid) as discussed above), where said nitrogen flushing is considered or analogous to cooling conditions [Mathias, 0115] (nitrogen flushing is considered analogous to cooling conditions because Mathias teaches that in a grinding step which is performed under cooled conditions such as under nitrogen flushing), or the beans may be cooled to a temperature of less than 8°C (-20°C) and while this particular example mentions that the beans may be cooled to -20°C under ambient temperature [Mathias, 0115], Mathias nonetheless teaches that means for cooling in the method are not limited and may be achieved by cooling with cold inert substances, such as liquid nitrogen or solid carbon dioxide [Mathias, 0086]. Therefore, there is reasonable basis to conclude that the coffee beans in Mathias are cooled flushed by nitrogen fluid during the entire process after roasting all the way through packaging, reducing the amount of oxygen that is in contact with the coffee beans.
In response to applicant's argument on page 9, paragraph 2, that Mathias use of liquid nitrogen is only for thermal management purposes and not for oxygen reduction, the argument is not persuasive because the use of liquid nitrogen for the purpose of thermal management would have also contributed to the reduction of oxygen.
In regards to applicant's argument that a skilled artisan would not be motivated to modify Mathias tempering step which is performed at ambient temperature, and that the Office action fails to establish any motivation to use the cooled fluid flushing of Mathias in the method of Brussa for oxygen reduction, it is noted that the rejection is an obviousness rejection over Brussa in view of Mathias. That is, one of ordinary skill in the art would look into the teachings of Mathias and modify Brussa in order to provide for a method that uses cooled nitrogen flushing for both oxygen reduction as taught by Brussa and for additional advantageous effects provided by the cooling temperatures during the process such as minimizing oxidation as well as preservation of volatile organic compounds (VOCs) which are desired substances in coffee as taught by Mathias [Mathias, 0081].
In regards to applicant's argument that the Office action fails to establish any motivation to use the cooled fluid flushing of Mathias in the method of Brussa for oxygen reduction, in last Office action (page 5), motivation was provided as to why a person skilled in the art would modify Brussa with the teachings of Mathias and include a cooled fluid flushing or “tempering comprising cooled fluid flushing as recited by Mathias” before a cooling step in order to reduce the amount of oxygen to less than 5%, because Mathias teach that oils and aromatic volatiles of the roasted coffee ingredients are prone to degradation when exposed to oxygen in the surrounding air [Mathias, 0004], and flushing the roasted ingredient with a cooled fluid such as nitrogen as taught by Mathias would further reduce oxygen levels in the method of Brussa, which already teach reducing oxygen levels by fluid flushing but simply did not mention the flushing fluid was cooled or an incubation step comprising cooling after the cooled fluid flushing which are concepts taught and performed by Mathias for preserving aromas and oils of the roasted coffee ingredients, which are the same concepts or problems that Brussa express interest in.
On page 9, last paragraph, and page 10, Applicant argues that the Office Action fails to establish any motivation to move Brussa's oxygen-reduction step to a point prior to packaging as claimed, that a person of ordinary skill in the art would not be motivated to modify Brussa's process to have both the claimed oxygen reduction step and the incubation step prior to packaging, because Brussa already teaches that oxygen is removed during the packaging step [Brussa, 0254], and that Applicant notes that "[w]hen one of the references cited by the Examiner by itself satisfies the Examiner's articulated reason for the combination, it tends to 'indicate that the rejection is not based [on] some rational underpinning, but rather, on impermissible hindsight."
In response to applicant’s argument on page 9, last paragraph, and page 10, paragraph 1, that there is no teaching, suggestion, or motivation to combine the references and to move Brussa's oxygen-reduction step to a point prior to packaging, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Brussa teaches reduction of oxygen to less than 5% by fluid flushing, and storing the ingredient for at least 1 week before first opening, and Mathias teaches using a cooled fluid in all steps disclosed by Mathias, wherein the cooling means is not limited and may be achieved by using cold inert substances, such as liquid nitrogen [Mathias, 0086], and/or nitrogen flushing which is considered or analogous to cooling conditions [Mathias, 0115] (nitrogen flushing is considered analogous to cooling conditions because Mathias teaches that in a grinding step which is performed under cooled conditions such as under nitrogen flushing), to provide pre-cooled beans for further processing steps including packing (filling and sealing), also performed under nitrogen flushing [Mathias, 0115], (where said nitrogen flushing is considered or analogous to cooling conditions as explained above). Therefore, because Brussa teach that flushing coffee ingredients with nitrogen reduces oxygen, and Mathias teaches coffee beans which are being flushed with nitrogen through the entire process after roasting, including prior and during packaging, would motivate one of ordinary skill in the art to cool flush the coffee ingredient (which would reduce the amount of oxygen surrounding the coffee ingredient down to less than 5%) not only prior to a packaging step but also during the packaging step (which would reduce the amount of oxygen surrounding the coffee ingredient even more because the coffee ingredient is being flushed with nitrogen until the package is sealed, displacing oxygen completely away from around the coffee ingredient and away from inside the packaging), which in turn would also help in reducing the loss of aroma volatiles of the roasted ingredient [Mathias, 0047, 0089], and also allow the roasted ingredient to be cooled to the right temperature at the moment of further processes [Mathias, 0062]. Moreover, it would have been obvious to one of ordinary skill in the art because Mathias teaches that coffee ingredients loses volatile substances during processing and storage, which is known to be caused by heat [Mathias, 0003], therefore by cooling the coffee ingredients during processing and storage, the loss of volatile substances and oxidation can be reduced or avoided [Mathias, 0048-0049], which are concepts that Brussa already express interest in.
Moreover, the examiner notes that Brussa’s oxygen reduction step does not teach a lower limit for a level of oxygen, in fact Brussa is interested in oxygen levels to be less than 5%, since lower oxygen levels in a roasted coffee during processing and storage is desired to prevent oxidation of oils present in the roasted coffee ingredient, preserve aromas, volatiles and flavors [Brussa, 0004], and would allow for longer storage times of the roasted coffee ingredient [Brussa, 0025], which are also concepts known and taught by Mathias [Mathias, 0004]. Therefore, while Brussa teach the oxygen reduction step during packaging, it is the examiners position that a skilled artisan would immediately envisage processing roasted coffee ingredients in a cold environment during all steps of the process by flushing with nitrogen (which is analogous to cooling conditions, thus analogous to cooling fluid [Mathias, 0115]) as taught by Mathias [Mathias, 0085, 0089], which would help preserving the aroma of roasted coffee ingredients, and also performing cooled fluid flushing using liquid nitrogen or cooled gaseous nitrogen would further help reduce oxidation to even lower levels in the method of modified Brussa in view of Mathias [Mathias, 0048, 0086].
In response to applicant's argument on page 10, paragraph 2, 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). Because Brussa teaches reducing oxygen to less than 5% by flushing with nitrogen, and Mathias teaches flushing with cooled nitrogen immediately after roasting the coffee beans as well as cooling through all subsequent steps of the process including cooling at the last step of storage where the finished packaged product is stored at cooled conditions [Mathias, 0149], it would be obvious to one of ordinary skill in the art to modify Brussa with the teachings of Mathias in order to reduce the amount of oxygen to less than 5%, because Mathias teach that oils and aromatic volatiles of the roasted coffee ingredients are prone to degradation when exposed to oxygen in the surrounding air [Mathias, 0004], and flushing the roasted ingredient with a cooled fluid such as nitrogen as taught by Mathias would further reduce oxygen levels in the method of Brussa, which already teach reducing oxygen levels by fluid flushing but simply did not mention the flushing fluid was cooled or an incubation step comprising cooling after the cooled fluid flushing which are concepts taught and performed by Mathias for preserving aromas and oils of the roasted coffee ingredients, which are the same concepts or problems that Brussa express interest in.
In response to applicant's argument on page 10, paragraph 3, that the cited references fail to recognize the benefits of the claimed specific combination of performing oxygen reduction via cooled fluid flushing prior to incubation and packaging, which represents a specific combination that is neither taught nor suggested by the cited references, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On page 11, paragraph 2, Applicant argues that the claimed method has the surprising effect that after first opening the coffee beans, a low Freshness Index is maintained without the need to store the roasted whole coffee beans at a low temperature during their shelf-life as disclosed on page 2, lines 14-15 of the application as filed, and that the cited references fail to disclose or suggest the claimed combination of steps nor recognize the benefits of the claimed combination.
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., Freshness Index) 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).
In response to applicant's argument that the cited references fail to recognize the benefits of the claimed combination, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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.
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/L.E.D./Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792