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 .
This office action is in regard to the application filed on June 20, 2022 and in response to Applicant’s Amendments and Arguments/Remarks filed April 13, 2026.
Status of Application
The amendment filed April 13, 2026 has been entered. Claims 1-28 are currently pending in the application; claims 22-27 are withdrawn; claims 1 and 28 have been amended. Claims 1-21 and 28 are hereby examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites a size exclusion cut off value that has been recited in amended claim 1, upon which claim depends. Thus, claim 8 does not further limit claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-12 and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Heijman et al. (WO 2014/123412) in view of Gretsch et al. (EP 1632135), herein after referred to as Heijman and Gretsch, respectively. Both references are listed on the IDS dated June 20, 2022.
Regarding claims 1 and 20, Heijman discloses a method of treating a coffee extract (i.e., a beverage ingredient extract) comprising the steps of:
a. subjecting the extract to separation by aroma recovery resulting in a high aromatic coffee extract (i.e., permeate) and a low aromatic coffee extract (i.e., retentate);
b. raising the pH of the retentate to provide a treated beverage ingredient extract retentate;
c. combining the treated retentate with the permeate to generate a recombined ingredient extract (claim 1; Example 1).
Heijman is silent as to explicitly filtering the beverage extract; however, as stated above, Heijman discloses separating the extract via aroma recovery (claim 1). Heijman is also silent as to that the method further comprises an aroma recovery step before step a) in which aroma volatile compounds are removed from the beverage ingredient extract.
Gretsch, in the same field of invention, teaches an aroma recovery method for coffee extracts via ultrafiltration [0039]. Gretsch teaches that the retentate is later used as a matrix for the entrapment of coffee aroma [0048], and therefore, the retentate is considered to be a low aromatic coffee extract and the permeate is considered to be a high aromatic coffee extract. Gretsch also teaches that aroma compounds from the coffee extract are removed prior to filtration via stripping [0052] (i.e., an aroma recovery step before step a) in which aroma volatile compounds are removed from the beverage ingredient extract).
Therefore, where it was known in the art that ultrafiltration was a suitable method for separation via aroma recovery, it would have been obvious to one of ordinary skill in the art to employ the ultrafiltration of Gretsch as the aroma recovery method of Heijman, with the reasonable expectation that the method would have yielded predictable results. Additionally, as it was known in the art to treat a beverage ingredient extract, it would have been obvious to have produced the extract as claimed, by modifying the method of Heijman, as Gretsch teaches that it is known in the art to employ an aroma recovery step to a beverage extract prior to filtering the beverage extract.
Modified Heijman teaches that the filtering is carried out by a membrane (Gretsch: [0047]) and that the membrane comprises a size exclusion cut off of 3-100 kDa (Gretsch: [0048]), which overlaps the claimed range of at least 10 kDa. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Regarding claim 2, modified Heijman teaches filtering the extract prior to ultrafiltration in order to remove coarse sediments (i.e., further purifying an extract) (Gretsch: [0050]).
Modified Heijman does not teach that this filtering step is completed after step b), however, the selection of any order of performing process steps is prima facie obvious in the absence of new of unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04.IV.C.
Regarding claims 3 and 4, modified Heijman teaches that the volatile aroma compounds from the coffee extract are removed prior to filtration via stripping (Gretsch: [0052]) and are encapsulated in the final product with the permeate (i.e., added after step c) (Gretsch: [0053]; [0055]).
Regarding claims 5 and 6, modified Heijman is silent as to the filtration being done at a certain temperature and pressure. However, modified Heijman does teach that the initial extract is at room temperature (~25ºC), then frozen until ready to use (Gretsch: [0059]), as well as that the transmembrane pressure during ultrafiltration may vary depending on the clogging of pores, and the feed is only circulated (Gretsch: [0049]). Therefore, it can be considered that the filtration takes place at ambient temperature and pressure, ~25°C and ~1 bar, which falls within the claimed ranges of 20-100°C and 1-3 bar.
Regarding claim 7, modified Heijman teaches that the filtration is carried out by a membrane (Gretsch: [0047]).
Regarding claim 8, modified Heijman teaches that the membrane comprises a size exclusion cut off of 3-100 kDa (Gretsch: [0048]), which encompasses the claimed range of at least 10 kDa. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP 2144.05.I.
Regarding claim 9, modified Heijman teaches raising the pH of the retentate to a value of 6-8 (Heijman: claim 9), which overlaps with the claimed range of between 7 and 14, and where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 10, modified Heijman teaches that the pH is raised by treating the retentate with a resin (Heijman: p. 8 lines 15-16).
Regarding claims 11 and 12, modified Heijman is silent as to treating the retentate with a pH-raising means for a period of time in the range of 10 to 180 minutes, modified Heijman teaches that the temperature of the retentate is raised to 150°C (Heijman: claim 1), and modified Heijman is silent as to that the temperature is raised at the same time that the pH is raised.
Heijman does teach that the retentate is treated until the desired pH is reached (Heijman: p. 9) and that the heat treatment is held for 15 minutes (Heijman: claim 1). One of ordinary skill in the art would have recognized that pH change depends on the temperature and duration of the treatment. One of ordinary skill, through no more than routine experimentation would have been able to have arrived at the claimed temperature and duration for treating the retentate. 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.II.A.
Additionally, the selection of any order of performing process steps is prima facie obvious in the absence of new of unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See MPEP 2144.04.IV.C.
Regarding claim 15, modified Heijman teaches that multiple filtration operations can be employed (Gretsch: [0050]).
Regarding claim 16, modified Heijman teaches that the beverage ingredient extract comprises a primary extract (PE2) from a primary extraction process of a roast and ground coffee powder (Heijman: Example 1).
Regarding claim 17, modified Heijman teaches that the beverage ingredient extract comprises between 2-10 wt.% soluble solids (Gretsch: [0040]), which encompasses the claimed range of 2-5 wt.%. Where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 18, modified Heijman teaches that the beverage ingredient extract comprises 15 wt.% soluble solids (Heijman: Example 1).
Regarding claims 19 and 21, modified Heijman teaches that the recombined extract is dried to generate a soluble beverage ingredient powder (Gretsch: [0055]).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Heijman et al. (WO 2014/123412) in view of Gretsch et al. (EP 1632135) (both listed on the IDS dated June 20, 2022) as applied to claim 1 above, and further in view of Silver et al. (WO 2007/011531; cited on PTO-892 dated Dec. 17, 2024), herein after referred to as Silver.
Modified Heijman teaches the method as set forth above with regard to claim 1.
Regarding claims 13 and 14, modified Heijman teaches that the ultrafiltration may be carried out multiple times (Gretsch: [0050]) wherein the repeat filters have differing size exclusion cut offs (Gretsch: [0061]-[0063]).
Modified Heijman is silent as to further filtering the permeate at least once after step a) to produce another extract retentate and then combining.
Silver, in the same field of invention, teaches a process for producing a soluble coffee extract comprising subjecting an initial extract to membrane filtration and separation wherein the permeate produced thereof is further processed through another filtration and is then combined with the other extracts (claims 31 and 35). Silver offers the motivation that subjecting the permeate to a second filtration further purifies the extract (p. 10 lines 1-11). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have incorporated the second permeate filtration of Silver into the method of modified Heijman, thereby arriving at the claimed invention. One would have been motivated to make this modification for the benefit of producing a purer extract and final product.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Heijman et al. (WO 2014/123412; listed on the IDS dated June 20, 2022) in view of Scoville et al. (US PG Pub. 2001/0026821), herein after referred to as Scoville.
Heijman discloses a method of treating a coffee extract (i.e., a beverage ingredient extract) comprising the steps of:
a. subjecting the extract to separation by fractionation resulting in a high aromatic coffee extract (i.e., permeate) and a low aromatic coffee extract (i.e., retentate);
b. raising the pH of the retentate to provide a treated beverage ingredient extract retentate;
c. combining the treated retentate with the permeate to generate a recombined ingredient extract,
wherein the method does not include an aroma recovery step (claim 1; Example 1).
Heijman is silent as to explicitly filtering the beverage extract; however, as stated above, Heijman discloses separating the extract via fractionation (claim 1).
Scoville, in the same field of invention, teaches a method of obtaining a coffee concentrate wherein in the process, a coffee extract is fractionated via ultrafiltration using a membrane (i.e., filtering a coffee extract), wherein the filtering is based on size exclusion with the size exclusion having a cut off value of 3.5 kDa, which means any compounds 3.5 kDa or larger are retained on the membrane, including compounds 10 kDa or larger (i.e., a cut off value of at least 10 kDa). (Examples 1 and 2: [0077], [0078], [0085]).
Therefore, where it was known in the art that membrane ultrafiltration was a suitable method of fractionation, it would have been obvious to one of ordinary skill in the art to employ the membrane ultrafiltration of Scoville as the fractionation method of Heijman, with the reasonable expectation that the method would have yielded predictable results.
Response to Arguments
Applicant's arguments filed April 13, 2026, have been fully considered but they are not persuasive.
The prior art rejection has been amended in light of applicant’s amendments to the claims; however, the overall essential prior art rejection has been maintained by the examiner for the following reasons.
Applicant argues that there is no reason or motivation to modify Heijman and Gretsch because the aroma stripping step and filtration cannot both be used in an aroma recovery process (Remarks, p. 9-11).
This argument is not persuasive. The steps of both aroma stripping and ultrafiltration as taught by the prior art are both used in the overall aroma recovery process, so they can both be used in one process and Heijman can be modified by Gretsch.
Applicant argues that Heijman and Gretsch do not use a size-exclusion filtration step (Remarks, p. 11-12).
This argument is not persuasive. Gretsch, which modifies Heijman, does teach a size-exclusion filtration step, as set forth above in the rejection.
Applicant argues that raising the pH as in the instant claim has a technical effect on the process and product and that Heijman raises the pH for a different reason (Remarks, p. 11-12).
This argument is not persuasive. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144.IV. Thus, even though the instant invention and the prior art raise the pH for different reasons, that does not make the step nonobvious.
Applicant argues that claim 28 requires that there is no aroma recovery step in the process and that Scoville does indeed teach an aroma recovery step (Remarks, p. 13-14).
This argument is not persuasive. Scoville is only relied upon to teach the ultrafiltration step, not the entire process. It is Heijman that is relied on as the primary reference for the majority of the process steps, which does not have an aroma recovery step. Thus, whether Scoville has an aroma recovery step or not is moot where the reference is only relied upon for the specific ultrafiltration step.
Applicant argues that the size cut off taught by Scoville is different than that of the claimed invention (Remarks, p. 13).
This argument is not persuasive. Both Scoville and the instant invention are further processing the retentate. Where Scoville uses a membrane with a 3.5 kDa cutoff and processes the retentate [0085], all compounds 3.5 kDa and larger, including “at least 10 kDa” are included in the retentate as part of this further processing. Therefore, the teachings of Scoville continue to be considered to meet the claim.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURA E SWEENEY whose telephone number is (571)272-0244. The examiner can normally be reached M-F 9:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571)-270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.E.S./Examiner, Art Unit 1791
/Nikki H. Dees/Supervisory Patent Examiner, Art Unit 1791
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