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 response to the application filed on August 15, 2022. The earliest effective filing date of the application is February 17, 2020.
Priority
The present application is a 371 National Stage Application of PCT/EP2021/053900 which has a filing date of February 17, 2021.
Status of Application
The amendment filed September 2, 2025 has been entered. The status of the claims upon entry of the present amendment stands as follows:
Pending claims: 1 – 3, 6 – 12, and 14 – 21
Previously cancelled claims: 13
Newly cancelled claims: 4 and 5
Amended claims: 1 and 20
Claims currently under examination: 1 – 3, 6 – 12, and 14 – 21
The previous rejections of claims 4 and 5 have been withdrawn due to the cancellation of claims 4 and 5. The previous 103 rejections of claims 1 – 3, 6 – 12, and 14 – 21 are withdrawn in light of Applicant’s amendments. New 103 rejections of claims 1 – 3, 6 – 12, and 14 – 21 are made over Schaffer-Lequart and Beeson.
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.
Claims 1 – 3, 8 – 12, 14, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer-Lequart (WO 2012076601 A1) in view of Beeson (WO 2010040727 A2) as evidenced by Indiana Sugars (What is the Difference Between Glucose Syrup and Corn Syrup. Indiana Sugars. (September 20, 2023). Retrieved from: https://www.sugars.com/what-is-the-difference-between-glucose-syrup-corn-syrup on May 27, 2025).
Regarding claims 1 and 3, Schaffer-Lequart teaches a powdered instant coffee composition comprising:
5 – 35 wt% Hydrolyzed whole grain powder (i.e., plant-based powder)
5 – 30 wt% Instant coffee powder (i.e., soluble coffee)
0 – 40 wt% Whitener powder
0 – 65 wt% Sugar
0 – 40 wt% Milk or Milk Component
0 – 2 wt% Vitamins and minerals
0 – 2 wt% Flavor (p. 30, Example 5, Coffee mix with hydrolyzed whole grain powder).
The ratio of whitener to plant-based powder ranges from 0:1 to 8:1. Schaffer-Lequart teaches the hydrolyzed whole grain powder (i.e., plant-based powder) is selected from hydrolyzed whole wheat, hydrolyzed whole barley, or hydrolyzed whole oat (p. 24, Example 1, lines 10 – 12; p. 30, Example 5, line 2).
Schaffer-Lequart does not teach the whitener powder is a non-protein creamer.
Beeson teaches a powdered non-protein creamer comprising
1.2 kg Corn syrup solids dissolved in water at 180 °F under high agitation (i.e., corn syrup),
0.3 kg Dipotassium phosphate (i.e., stabilizer),
0.3 kg Sodium citrate (i.e., buffering agent),
0.2 kg Oil (i.e., fat component), and
0.1 kg Succinylated monoglyceride (i.e., emulsifier – p.11, Example 1).
As evidenced by Indiana Sugars, corn syrup is glucose syrup (p. 5, Can You Substitute Glucose Syrup for Corn Syrup?, paragraph 1). Beeson teaches the powdered non-protein creamer may be used as a whitener for a powder beverage such as coffee (p. 7, paragraph 1). Beeson teaches composition was processed through conventional spray drier, and dried creamer in powder form was collected (p. 11, Example 1). Beeson teaches the sensory characteristics of coffee with added coffee creamer was judged by six non-trained panelists, who found the product having good mouth-feel, full body, smooth texture, and a good flavor with no off-taste (p. 11, Example 1).
Schaffer-Lequart and Beeson are combinable because they are concerned with the same field of endeavor, namely, powdered coffee products. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the non-protein coffee creamer as the whitener powder in the composition of Schaffer-Lequart, as taught by Beeson because coffee with the coffee creamer of Beeson has good mouth-feel, full body, smooth texture, and a good flavor with no off-taste.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added the non-protein creamer of Beeson in a ratio of 3:1 – 8:1 to hydrolyzed whole oat (i.e., plant-based powder) with a reasonable expectation of success because the composition of Schaffer-Lequart suggests adding whitener powder within a ratio of 0:1 – 8:1 and the non-protein creamer of Beeson is a whitener powder.
Regarding the limitation “100% of protein present in the composition is from the plant-based powder”, the modified composition of Schaffer-Lequart wherein the whitening powder is the non-protein powder of Beeson encompasses a composition that comprises 0% milk or milk component, thereby leaving hydrolyzed whole oat as the sole protein source of the composition. Therefore, the composition of claim 1 is rendered obvious by Schaffer-Lequart over Beeson.
The range of instant coffee powder (i.e., soluble coffee) weight percentages, 5 – 30 wt%, as disclosed by Schaffer-Lequart, overlaps with the claimed range of 10 – 15 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of sugar weight percentages, 0 – 65 wt%, as disclosed by Schaffer-Lequart, overlaps with the claimed range of 25 – 75 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of hydrolyzed whole oat (i.e., plant-based powder) weight percentages, 5 – 35 wt%, as disclosed by Schaffer-Lequart, overlaps with the claimed range of 1 – 15 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have added the non-protein creamer of Beeson in weight percentage of 10 – 45 wt% with a reasonable expectation of success because the composition of Schaffer-Lequart suggests adding whitener powder within a weight percentage range of 0 – 40 wt% and the non-protein creamer of Beeson is a whitener powder.
Regarding claim 2, Schaffer-Lequart teaches the hydrolyzed whole grain powder (i.e., plant-based powder) is selected from hydrolyzed whole wheat, hydrolyzed whole barley, or hydrolyzed whole oat (p. 24, Example 1, lines 10 – 12; p. 30, Example 5, line 2).
Regarding claim 8, Schaffer-Lequart teaches the powdered instant coffee composition comprises 5 – 30 wt% instant coffee powder (i.e., soluble coffee – p. 30, Example 5, Coffee mix with hydrolyzed whole grain powder).
While Schaffer-Lequart does not teach the instant coffee powder (i.e., soluble coffee) is a spray-dried or freeze-dried coffee powder, this recitation is directed toward a method of production of the product of claim 8. MPEP § 2113.I teaches even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 8 has been considered when assessing the patentability of the product.
The structure implied by claim 8 is interpreted to be an instant coffee powder.
Schaffer-Lequart is silent regarding the components of the instant coffee powder (i.e., soluble coffee).
A powdered instant coffee composition comprising instant coffee powder is encompassed by claim 8. Therefore, the product of claim 8 is rendered obvious by Schaffer-Lequart.
Regarding claim 9, Beeson teaches a powdered non-protein creamer comprising:
1.2 kg Corn syrup solids dissolved in water at 180 °F under high agitation (i.e., corn syrup which is glucose syrup),
0.3 kg Dipotassium phosphate (i.e., stabilizer),
0.3 kg Sodium citrate (i.e., buffering agent),
0.2 kg Oil (i.e., fat component), and
0.1 kg Succinylated monoglyceride (i.e., emulsifier – p.11, Example 1).
Beeson teaches the creamer composition of the invention comprises fat or vegetable oil (p. 4, paragraph 2). Furthermore, Schaffer-Lequart teaches the oil of the Fat components are preferably vegetable fats such as cocoa butter, rapeseed oil, sunflower oil or palm oil, preferably not hydrogenated (p. 20, lines 4 - 6). Both inventors concur the oil component of the whitener powder may be vegetable oil.
Regarding claim 10, Schaffer-Lequart teaches the powdered instant coffee composition comprises 5 – 35 wt% hydrolyzed whole grain powder (i.e., plant-based powder – p. 30, Example 5, Coffee mix with hydrolyzed whole grain powder). Absent evidence to the contrary, it is interpreted the hydrolyzed whole grain powder is fully hydrolyzed.
Regarding claim 11, Schaffer-Lequart teaches the amount of the hydrolyzed whole grain composition in the final product may depend on the type of product (p. 17, lines 6 – 7). Schaffer-Lequart teaches a higher amount of hydrolyzed whole grains may be added (compared to a non-hydrolyzed whole grain composition) without substantially affecting the organoleptic parameters of the product because of the increased amount of soluble fibers in the hydrolyzed whole grain (p. 17, lines 7 – 12). Schaffer-Lequart states the use of hydrolyzed whole grains in instant drink powders provides a smooth texture, minimal flavor impact, and added nutritional health and wellness values (p. 6, lines 6 – 8). Because increasing the amount of hydrolyzed whole grain in the composition relative to non-hydrolyzed whole grain can improve the solubility, texture, and nutritional health and wellness values of the coffee powder, the ratio of hydrolyzed to non-hydrolyzed grain is a result-effective variable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a mixture of hydrolyzed and non-hydrolyzed grain in the powdered instant coffee composition. One of ordinary skill in the art would have been motivated to do so to arrive at a powdered instant coffee composition with the desired solubility, texture, and nutritional health and wellness values. One of ordinary skill in the art would have had a reasonable expectation of success doing so because the adjustment of result-effective variables is routinely practiced in the art.
Regarding claim 12, Schaffer-Lequart teaches the amount of the hydrolyzed whole grain composition in the final product may depend on the type of product (p. 17, lines 6 – 7). Schaffer-Lequart teaches a higher amount of hydrolyzed whole grains may be added (compared to a non-hydrolyzed whole grain composition) without substantially affecting the organoleptic parameters of the product because of the increased amount of soluble fibers in the hydrolyzed whole grain (p. 17, lines 7 – 12). Schaffer-Lequart states the use of hydrolyzed whole grains in instant drink powders provides a smooth texture, minimal flavor impact, and added nutritional health and wellness values (p. 6, lines 6 – 8). Because increasing the amount of hydrolyzed whole grain in the composition relative to non-hydrolyzed whole grain can improve the solubility, texture, and nutritional health and wellness values of the coffee powder, the ratio of hydrolyzed to non-hydrolyzed grain is a result-effective variable.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a mixture of hydrolyzed and non-hydrolyzed grain in a ratio within 5:1 to 3:1 in the powdered instant coffee composition. One of ordinary skill in the art would have been motivated to do so to arrive at a powdered instant coffee composition with the desired solubility, texture, and nutritional health and wellness values. One of ordinary skill in the art would have had a reasonable expectation of success doing so because the adjustment of result-effective variables is routinely practiced in the art.
Regarding claim 14, Schaffer-Lequart teaches the powdered instant coffee composition is prepared by dry mixing (p. 30, Example 5, lines 4 – 5).
Regarding claim 17, Schaffer-Lequart teaches the powdered instant coffee composition is reconstituted in cold or hot water, cold or hot milk, cold or hot milk components, or a combination (i.e., beverage mediums – p. 30, Example 5, lines 9 – 10).
Regarding claim 19, Schaffer-Lequart teaches the hydrolysis substrate for the hydrolyzed whole oat is oat flour (p. 25, Example 1, Hydrolyzed whole oats, row 1).
Regarding claim 20, The claim recites “and/or” to link the series of precisely claimed weight percentages. The claim is interpreted broadly to mean any composition according to claim 5 wherein the composition comprises any of the ranges of weight percentages recited in claim 20.
The range of sugar weight percentages, 0 – 65 wt%, as disclosed by Schaffer-Lequart, overlaps with the claimed range of 40 – 60 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
The range of hydrolyzed whole oat (i.e., plant-based powder) weight percentages, 5 – 35 wt%, as disclosed by Schaffer-Lequart, overlaps with the claimed range of 5 – 12 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer-Lequart (WO 2012076601 A1) in view of Beeson (WO 2010040727 A2) as applied to claim 1 above and further in view of Bisperink (US 6713113 B2) as evidenced by Indiana Sugars (What is the Difference Between Glucose Syrup and Corn Syrup. Indiana Sugars. (September 20, 2023). Retrieved from: https://www.sugars.com/what-is-the-difference-between-glucose-syrup-corn-syrup on May 27, 2025).
Regarding claim 6, Schaffer-Lequart does not teach a foam-boosting ingredient comprising at least 1 ml/g of trapped gas.
Bisperink teaches a powdered soluble foamer ingredient (i.e., foam-boosting ingredient) for use in soluble beverage powders including instant “cappuccino” type beverages (col. 1, lines 12 – 21) which comprises a matrix containing carbohydrate and protein and entrapped gas, the gas being present in an amount to release upon addition of liquid at least about 1 ml of gas ambient conditions per gram of soluble foamer ingredient. (col. 1, lines 60 – 65). Bisperink teaches the soluble foamer ingredient, when included in a soluble foamer powder, is able to generate much greater volumes of foam than conventional foaming powders (col. 1 , line 68-col. 2, line 3).
Schaffer-Lequart and Bisperink are combinable because they are concerned with the same field of endeavor, namely, instant coffee beverages. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize the foamer ingredient, as taught by Bisperink in the modified composition of Schaffer-Lequart for the purpose of producing an instant coffee beverage that foams when reconstituted.
Regarding claim 7, Bisperink does not teach the foam-boosting ingredient is present in an amount of from 1 to 20 wt% by total weight of the ingredients.
Bisperink teaches wherein soluble foamer ingredient (i.e., foam-boosting ingredient) comprises about 15% to about 50% by weight of the soluble creamer powder (col. 5, lines 63 – 65), wherein the soluble creamer powder is mixed with a soluble coffee powder that makes up about 10% to about 30% by weight of the total composition (col. 6, lines 11 – 14). Therefore, the soluble foamer ingredient (i.e., foam-boosting ingredient) is present in an amount of from 10.5wt% to 40wt% by total weight of the ingredients.
The range of soluble foamer ingredient (i.e., foam-boosting ingredient) weight percentages, 10.5 – 40 wt%, as disclosed by Bisperink, overlaps with the claimed range of 1 – 20 wt%. MPEP § 2114.05 teaches that it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness.
Claims 15, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Schaffer-Lequart (WO 2012076601 A1) in view of Beeson (WO 2010040727 A2) as applied to claim 1 above and further in view of Dhanalakshmi et al. (Agglomeration of Food Powder and Applications. Critical Reviews in Food Science and Nutrition. Vol. 51. Pp. 432 – 441. (2011)) as evidenced by Indiana Sugars (What is the Difference Between Glucose Syrup and Corn Syrup. Indiana Sugars. (September 20, 2023). Retrieved from: https://www.sugars.com/what-is-the-difference-between-glucose-syrup-corn-syrup on May 27, 2025).
Regarding claim 15, Schaffer-Lequart teaches an instant drink powder is created by a process wherein: hydrolyzed grain component is prepared, then mixed with agglomerated particles (i.e., powder ingredients – p. 21, lines 4 – 19). While Schaffer-Lequart is silent regarding whether the hydrolyzed grain component is agglomerated with other ingredients after dry mixing, Dhanalakshmi teaches agglomeration improves the dispersability of formed products that are wetted uniformly when put in either cold or hot water (p. 432, Agglomeration).
Schaffer-Lequart and Dhanalakshmi are combinable because they are concerned with the same field of endeavor, namely, agglomerated instant drink powders. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to agglomerate the dry mixed powders, as taught by Dhanalakshmi in the method of Schaffer-Lequart because agglomeration improves the dispersability of formed products that are wetted uniformly when put in either cold or hot water.
Regarding claim 16, While Schaffer-Lequart does not teach the powdered instant coffee composition is agglomerated after dry mixing, this recitation is directed toward a method of production of the product of claim 16. MPEP § 2113.I teaches even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 16 has been considered when assessing the patentability of the product.
The structure implied by claim 16 is interpreted to be an agglomerated composition of claim 1.
Schaffer-Lequart teaches an instant drink powder is created by a process wherein: hydrolyzed grain component is prepared, then mixed with agglomerated particles (i.e., powder ingredients – p. 21, lines 4 – 19). While Schaffer-Lequart is silent regarding whether the hydrolyzed grain component is agglomerated with other ingredients after dry mixing, Dhanalakshmi teaches agglomeration improves the dispersability of formed products that are wetted uniformly when put in either cold or hot water (p. 432, Agglomeration).
Schaffer-Lequart and Dhanalakshmi are combinable because they are concerned with the same field of endeavor, namely, agglomerated instant drink powders. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to agglomerate the dry mixed powders, as taught by Dhanalakshmi in the composition of Schaffer-Lequart because agglomeration improves the dispersability of formed products that are wetted uniformly when put in either cold or hot water.
Regarding claim 18, Schaffer-Lequart teaches the powdered instant coffee composition is reconstituted in cold or hot water, cold or hot milk, cold or hot milk components, or a combination (i.e., beverage mediums – p. 30, Example 5, lines 9 – 10).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Schaffer-Lequart (WO 2012076601 A1) in view of Beeson (WO 2010040727 A2) as applied to claim 1 above and further in view of Robinson et al. (US 20100009039 A1) as evidenced by Indiana Sugars (What is the Difference Between Glucose Syrup and Corn Syrup. Indiana Sugars. (September 20, 2023). Retrieved from: https://www.sugars.com/what-is-the-difference-between-glucose-syrup-corn-syrup on May 27, 2025).
Regarding claim 21, Schaffer-Lequart teaches the powdered instant coffee composition comprises 5 – 30 wt% instant coffee powder (i.e., soluble coffee – p. 30, Example 5, Coffee mix with hydrolyzed whole grain powder).
While Schaffer-Lequart does not teach the instant coffee powder (i.e., soluble coffee) is a spray-dried or freeze-dried coffee powder and contains roast and ground coffee particles, this recitation is directed toward a method of production of the product of claim 8. MPEP § 2113.I teaches even though product-by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. Therefore, the structure implied by the process steps of claim 21 has been considered when assessing the patentability of the product.
The structure implied by claim 21 is interpreted to be a dried coffee extract powder containing roast and ground coffee particles.
Schaffer-Lequart is silent regarding the components of the instant coffee powder (i.e., soluble coffee).
Robinson teaches a soluble coffee comprising coffee extract and pulverized coffee ([0050]). Robinson teaches the combination of pulverized roasted whole bean coffee beans with extracted ground or pulverized whole bean coffee adds complexity, including a more authentic coffee flavor and aroma, to the soluble coffee. Robinson teaches the wet mixture of coffee extract and pulverized coffee is then dried in a drying process (e.g., freeze-dried, hot air dried, or any other drying process – [0051]).
Schaffer-Lequart and Robinson are combinable because they are concerned with the same field of endeavor, namely, soluble coffee. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the soluble coffee of Robinson as the instant coffee powder in the composition of Schaffer-Lequart because the combination of pulverized roasted whole bean coffee beans with extracted ground or pulverized whole bean coffee adds complexity, including a more authentic coffee flavor and aroma, to soluble coffee.
Response to Arguments
Applicant's arguments filed September 2, 2025 have been fully considered but they are not persuasive.
Applicant argues the combination of Schaffer-Lequart, Beeson, and Indiana Sugars as proposed in the Office Action does not render obvious a composition as recited in independent claim 1 as amended (p. 5, paragraph 5).
Applicant’s argument has been carefully considered however the argument is not persuasive. See the rejection of claim 1 above.
Applicant argues Schaffer-Lequart does not provide any teaching or suggestion to one of ordinary skill in the art, armed with the disclosure of Schaffer-Lequart that the object of the invention is to increase the amount of whole grain in the composition, and attempting to determine how much non-protein creamer powder and plant-based protein powder to include in the composition, and being presented with hundreds if not thousands of possibilities given the 5- 35 wt.% range of hydrolyzed whole grain powder and 0-40 wt.% range of the whitener powder disclosed in Schaffer-Lequart, to have any rational reason to specifically select a ratio of the non- protein creamer powder to the whole grain powder of at least 3:1 as claimed by Applicant (p. 6, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. Applicant does not dispute that the range of the ratios of A to B of the prior art reference overlap with the instantly claimed range of ratios. It is unclear what legal standard applicant is applying in asserting it is necessary for the rejection to provide a rationale for precisely selecting the claimed range. The relevant case law is clear 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) As such, the case law cited on pages 6 and 7 of the remarks is not germane as it fails to rebut the clearly established prima facie case of obviousness set forth in the rejection. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). (MPEP 2144.05 III A) Since applicant has failed to demonstrate the criticality of the presently claimed range, the prima facie case of obviousness set forth in the previous rejection has not been persuasively rebutted.
Applicant argues the Office Action has not cited to any evidence in the record that justifies configuring the coffee mix of Schaffer-Lequart such that the non-protein creamer powder and the plant-based powder are present in the coffee mix of Schaffer-Lequart in such amounts that the weight ratio of the non-protein creamer powder to the plant-based powder is at least 3:1 (p. 7, paragraph 4).
Applicant’s argument has been carefully considered however the argument is not persuasive. See the rejection of claim 1 above.
Applicant argues nothing in Schaffer-Lequart or Beeson provides a disclosure or suggestion that including non-protein creamer powder and the plant-based powder in the composition in relative amounts such that the ratio of the non-protein creamer powder to the plant-based powder is at least 3:1 improves the manufacturability, flavor, caloric content, mouthfeel, or any other attribute of the resulting coffee beverage (p. 8, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. 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., improved manufacturability, flavor, caloric content, mouthfeel, or any other attribute of the resulting coffee beverage) 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).
Applicant argues the Office Action has not established that specific non-protein creamer powder and plant-based powder ratios are recognized by those of ordinary skill in the art to be a result-effective variable for improving the attributes of beverage-forming compositions (p. 8, paragraph 1).
Applicant’s argument has been carefully considered however the argument is not persuasive. The Office has not relied upon an argument that specific non-protein creamer powder and plant-based powder ratios are recognized by those of ordinary skill in the art to be a result-effective variable for improving the attributes of beverage-forming compositions to establish a prima facie case of obviousness.
Applicant argues the Office Action has improperly used Appellant's claims as a road map to find Schaffer-Lequart and Beeson and, aside from the improper hindsight provided by Appellant's claims, the Office Action has identified no objective reason that is based on the disclosure of Schaffer-Lequart and Beeson for one of ordinary skill in the art to modify the coffee mix of Schaffer-Lequart such that the non-protein creamer powder and the plant-based powder are present in the coffee mix of Schaffer-Lequart in such amounts that the weight ratio of the non-protein creamer powder to the plant-based powder is at least 3:1 (p. 8, paragraph 3).
Applicant’s argument has been carefully considered however the argument is not persuasive. 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 argues against the Office’s position that the examples presented in the instant specification are not commensurate with the scope of the claims and therefore do not show unexpected results by asserting that one of ordinary skill in the art would reasonably understand that the benefits of Applicant's claimed composition would extend to coconut, soy, and almond powder as alternative plant-based powders (p. 9, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. With respect to the interchangeability of one type of plant powder with another, while one of ordinary skill in the art would reasonably expect to successfully substitute one powder for another when making coffee in a generic sense, in the context of ascertaining the criticality of the ratio by weight of the non-protein creamer powder to a given plant-based powder, experimental scenarios utilizing each claimed plant powder are necessary to establish non-obviousness. Furthermore, Applicant has not addressed the breadth of the recitation “non-protein creamer” which is only represented by one exemplary composition in the Examples.
Applicant argues the portions of Bisperink, Robinson, and Dhanalakshmi cited in the Office Action to reject claims 6-7, 15, 16, 18, and 21 do not provide any disclosure or suggestion that, in combination with Schaffer-Lequart, Beeson, and Indiana Sugars would render independent claim 1 obvious (p. 10, paragraph 2).
Applicant’s argument has been carefully considered however the argument is not persuasive. See the rejections of claims 6-7, 15, 16, 18, and 21 above.
Conclusion
No claims are allowed.
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 LARK JULIA MORENO whose telephone number is (571)272-2337. The examiner can normally be reached 6:30 - 4:30 M - F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/L.J.M./Examiner, Art Unit 1793
/EMILY M LE/Supervisory Patent Examiner, Art Unit 1793