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
The amendment filed on 10/8/25 has been entered. Claims 1-11 are pending and being examined on their merits in this U.S. Patent Application. Applicant’s amendment to the specification and the claims have overcome the objections, as well as the 35 U.S.C. 102 rejection previously set forth in the Office Action mailed on 7/9/25.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/24/25 was filed after the mailing date of the last Office action on 7/9/25. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claim 1 has been amended to include “extraction of roast and ground coffee having a mean particle size of less than 600 microns”, and to add “the method does not have any step of adding coffee oil to the aqueous coffee extract”. Claims 3 and 6 have been amended to correct the term “dearomatised” and overcome the objections previously set forth in the Office Action mailed on 7/9/25. Claims 12-17 are canceled.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 10, are rejected under 35 U.S.C. 103 as being unpatentable over Birch et al. [US 20180206514 A1], hereinafter Birch, in view of Bunke et al. [US 20060035000 A1], hereinafter Bunke.
Regarding claim 1, Birch teach providing an aqueous coffee extract by extraction of roast and ground coffee having a mean particle size of less than 600 microns (< 150 microns) [Birch, 0020, 0028-0029], the aqueous coffee extract comprising from 30 to 55wt% soluble coffee solids [Birch, 0017], and from 1 to 10wt% oil [Birch, Table 1, Samples 1, 3-7], wherein the aqueous coffee extract consists of water and coffee-derived components [Birch, 0029], spray drying the coffee extract [Birch, 0037], wherein the method does not have any step of adding coffee oil to the aqueous coffee extract.
Birch does not teach subjecting the aqueous coffee extract to a two stage homogenisation process, wherein the first stage is conducted at 200 to 1000 Bar and the second stage is conducted at 10 to 100 Bar, to provide a homogenised coffee extract.
Bunke teach a method of producing a soluble coffee (coffee powder) [Abstract, 0032, 0056, 0072]. Bunke disclose the soluble coffee is formed from extracting roasted and ground coffee with water to form an aqueous coffee extract [Bunke, 0033], and the method includes subjecting the coffee extract to a two-stage homogenization process where the coffee extract is then pumped into a two-stage homogenizer, and homogenized at pressures from about 2500-5000 psig (about 172-345 Bar) in the first stage, with the second stage conducted at 10% of the total pressure (172-345 Bar x 10%, about 17-34 Bar), to provide a homogenized coffee extract [0049, 0051].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed two stage homogenisation process into the invention of Birch, in view of Bunke, since both are directed to methods of making coffee concentrates from coffee extracts. Doing so would provide a method to produce coffee extract concentrates that uses two stage homogenization, where the second stage provides controlled back pressure ensuring the maximum efficiency of the first stage, and at the same time it minimizes the possibility of clumping and coalescence of the oil droplets in the coffee extract emulsion [Bunke, 0051].
Regarding claim 2, Birch teach the aqueous coffee extract comprises from 1.12 to 3.32wt% coffee oil [Birch, Table 1, Samples 1, 3-7].
Regarding claim 10, modified Birch teach the method of making a coffee extract product discussed above in claim 1, but is silent regarding the method further comprising packaging the coffee extract product.
Bunke teach the method of making a soluble coffee powder extract or coffee concentrate product [Bunke, 0023, 0032, 0056, 0072] wherein the method further comprises packaging the soluble coffee or coffee extract concentrate product [Bunke, 0066].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed packaging the coffee extract product into the invention of Birch, in view of Bunke, since both are directed to methods of making coffee concentrates from coffee extracts. Doing so would aid in keeping the coffee extract product fresh for consumers [Bunke, 0066].
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birch et al. [US 20180206514 A1], hereinafter Birch, in view of Bunke et al. [US 20060035000 A1], hereinafter Bunke as applied to claim 1 above, and further in view of Goto et al. [US 20070231443 A1], hereinafter Goto.
Regarding claim 3, Birch teach: (i) providing roast and ground coffee [Birch, 0028], (ii) contacting the roast and ground coffee with water to form a coffee composition [Birch, 0029], (iii) subjecting the coffee composition to an aroma-separation step to recover a coffee aroma fraction and to form a dearomatised roast and ground coffee, (v) adding the coffee aroma fraction to the coffee extract (coffee extract after concentration is equivalent to intermediate coffee extract since the final extract is the aromatized coffee extract after adding the coffee aroma fraction) to form an aromatized coffee extract, which are well known methods in the art [Birch, 0003]. And Birch in view of Bunke teach subjecting the roast and ground coffee to one or more aqueous extraction steps (one or more aqueous extraction(s) of claimed step (iv), since it disclose a plurality of extraction columns filled with roast and ground coffee, where spent coffee grounds are extracted) [Bunke, 0045-0047], to provide an intermediate coffee extract [Bunke, 0025], having from about 50 to 65% coffee solids for example 52wt% soluble coffee solids [Bunke, 0048-0049], (encompass step (iv) claimed range of 35-70wt% coffee solids).
Modified Birch does not explicitly teach: (iii) wherein the aroma separation step recovers from 1 to 15wt% of the coffee composition as the coffee aroma fraction.
Goto teach a method for preparing coffee concentrate [Abstract]. The process for producing the coffee concentrate extract includes an aroma stripping step [Goto, 0015], where the aroma component condensate recovered by the stripping treatment is in the range of 1-10wt% based on the total weight of the slurry and may be adjusted by adjusting parameters of the aroma stripping process [Goto, 0022, 0061]. Example 1 of Goto shows a water and ground coffee slurry subjected to a water vapor aroma stripping treatment and recovering 4wt% of coffee aroma fraction with respect to the water/ground coffee slurry [Goto, 0127].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the recovery of 1-15wt% of aroma of step (iii), into the invention of modified Birch, in view of Goto, since both are directed to methods of making coffee concentrates from coffee extracts and since Birch already teach subjecting the coffee composition to an aroma-separation step to recover a coffee aroma fraction which would form a dearomatised roast and ground coffee, but simply did not mention the recovery wt% for the aroma fraction. Doing so would provide a method to produce coffee extract concentrates that are rich in aroma components that are suitable for various products [Goto, 0001].
Regarding claim 4, modified Birch in view of Goto teach the aromatized coffee extract comprised of the coffee aroma fraction mixed with the intermediate coffee extract as discussed above in claim 3 rejection, and Goto further teach Example 1, wherein the aromatised coffee extract contains the coffee aroma fraction and the intermediate coffee extract in a weight ratio of coffee aroma fraction to intermediate coffee extract of 1:4 by weight [Goto, 0128], (encompass the claimed ratio of 2:5 to 1:20).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed weight ratio of coffee aroma fraction to intermediate coffee extract into the invention of modified Birch, in view of Goto, since Goto already teach the recovered aroma fraction may be added in part or entirely to the intermediate coffee extract [Goto, 0020], and since the claimed weight ratio of components would have been used during the course of normal experimentation and optimization in the method of modified Birch, in view of Goto due to factors such as the recovery rate, concentration or strength of the recovered aroma component [Goto, 0061], and/or the desired final taste/aroma characteristics of the final product. Doing so would provide coffee extract concentrates that are rich in aroma components that are mixed or added back to an intermediate coffee extract in its final form after all processing has been performed and reducing and/or avoiding loss or deterioration of the aroma components [Goto, 0010].
Regarding claim 5, modified Birch teach the method of making an aromatized coffee extract as discussed above in claim 3 rejection, wherein the roast and ground coffee provided in step (i) has a mean particle size of from 100 to 600 microns (< 150 microns) [Birch, 0020, 0028-0029], step (ii) comprises mixing the roast and ground coffee with water to form a first slurry containing 15 to 30wt% coffee solids [Birch, 0016], and modified Birch in view of Goto teach wherein the dearomatized roast and ground coffee is a dearomatized slurry [Goto, 0015, 0016].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed dearomatized slurry into the invention of Birch, in view of Goto, since Birch already teach performing an aroma separation step on roast and ground coffee (which would produce an aroma fraction and dearomatized roast and ground coffee) but simply did not mention that the dearomatized roast and ground coffee produced by the aroma separation step is a dearomatized slurry. Doing so would provide coffee extracts obtained from a slurry after the aroma separation treatment that is usable [Goto, 0053].
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birch et al. [US 20180206514 A1], hereinafter Birch, in view of Bunke et al. [US 20060035000 A1], hereinafter Bunke and Goto et al. [US 20070231443 A1], hereinafter Goto as applied to claim 5 above, and further in view of Hair et al. [US 3529968 A], hereinafter Hair.
Regarding claim 6, steps (A, and E), modified Birch teach the methods and concepts discussed above in claim 5, further modified Birch in view of Goto teach filtrating the aroma stripped slurry [Goto, 0016] with a filtration/separation device, to separate a liquid phase (1st coffee extract) and a solid phase (1st filter cake) [Goto, 0064], (equivalent to passing the dearomatized slurry to a first filtration device), to form a first coffee extract and a sludge [Goto, 0017, 0064-0067], (equivalent to form a 1st coffee extract and 1st filter cake), wherein the step of obtaining the coffee extract from the slurry after the aroma stripping (dearomatized slurry) may be performed at a temperature of from 70 to 130°C [Goto, 0062], (encompass the claimed temperature range during filtration to obtain the 1st coffee extract and 1st filter cake of claimed step (A)). Goto further teach combining a 1st coffee extract and a 2nd coffee extract to form a 3rd concentrated coffee extract (claimed step (E)), step (g) of Goto [Goto, 0020].
Regarding claim 6, steps (B, C, D and F), modified Birch teach the methods and concepts discussed above but is silent regarding adding water to the 1st filter cake to form a reconstituted slurry having at least 12wt% coffee solids (step B), thermally treating the reconstituted slurry at 150-205°C (step C), filtering the thermally treated slurry to obtain a 2nd coffee extract and a 2nd filter cake (step D), and concentrating a 3rd coffee extract (step F).
Hair teach a countercurrent coffee slurry extraction process [Hair, Abstract], which comprises the following steps:
combining partially extracted coffee solids with water to form a slurry (reconstituted slurry) containing from about 3% to about 20% coffee solids [Hair, col.2, l.37-39], (equivalent to claimed step (B)).
extracting the slurry of step (a) at hydrolysis conditions (thermally treating reconstituted slurry) at a temperature of from about 300 to 375°F (149°C to 191°C, claimed step (C)) to form a hydrolysate [Hair, col.2, l.40-43].
separating the hydrolysate (2nd coffee extract) of step (b) from the coffee solids (2nd filter cake, claimed step (D)) [Hair, col.2, l.48-49].
combining the hydrolysate of step (c) with fresh coffee solids comprising coffee expeller cake to form a slurry containing from about 5% to about 20% coffee solids [Hair, col.2, l.50-53].
extracting the slurry of step (d) at extraction temperatures of from 180-230°F (82 to 110°C) to form an extract containing from about 3% to about 20% coffee soluble [Hair, col.2, l.54-61].
separating the extract of step (e) from the coffee solids [Hair, col.2, l.62-63].
Hair teach that the extract as well as combined extracts obtained from the slurry extraction process of the invention may be concentrated (claimed step (F)) and/or dried according to methods well known in the coffee art [Hair, col.2, l.23-26, Example 1, col.10, l.9-12, Example 2, col.11, l.10-16, and col.12, l.20-25].
Birch and Hair are both considered to be analogous to the claimed invention because they are in the same field of methods for producing coffee extracts. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Birch to incorporate the teachings of Hair and provide a method where water is added to a 1st filter cake to form a reconstituted slurry having the claimed coffee solids concentration, then thermally treating the reconstituted slurry at the claimed temperatures, filtering the thermally-treated reconstituted slurry to obtain a 2nd coffee extract and a 2nd filter cake, and concentrating the 3rd coffee extract, since Birch already teach claimed step (iii) subjecting the coffee composition to an aroma separation step to recover a coffee aroma fraction which would form a dearomatised roast and ground coffee, and concentrating coffee extracts, which are well known methods in the art [Birch, 0003]. Doing so would provide a countercurrent slurry extraction process that provides high and economical recovery of flavorful, water soluble components from coffee expeller cake [Hair, Col.1, lines 69-72], and can be combined with a conventional extraction process to produce instant coffee products [Hair, Abstract], and where the slurry extraction process may comprise two distinct extraction stages comprising different raw materials (i.e., fresh water or extract hydrolysate as extraction liquids, and/or spent coffee grounds or fresh coffee grounds, etc.) [Hair, Col.2, lines 1-12], to obtain extracts with the desired concentration of coffee solids [Hair, Col.3, lines 65-68], wherein said process may be carried out in a batch or continuous manner to produce a coffee powder [Hair, Col.2, lines 13-26].
Regarding claim 7, Birch teach claimed step (ii) contacting the roast and ground coffee with water to form a coffee composition [Birch, 0029], but is silent regarding the temperature of the water being from 80 to 100°C as claimed.
Hair teach an extraction step of a slurry comprised of a liquid and coffee solid, wherein the extracting liquid may be at temperatures of from 180-230°F (82 to 110°C) [Hair, col.2, l.54-57].
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed extraction temperature into the invention of modified Birch in view of Hair, since modified Birch in view of Bunke already teach that any desired extraction temperature may be used [Bunke, 0046], since the claimed extraction temperature would have been used during the course of normal experimentation and optimization in the method of modified Birch in view of Bunke and Hair, due to factors such as the exhaustion degree of the spent coffee grinds (i.e., most exhausted coffee would use higher temperatures than fresh or less exhausted coffee, [Bunke, 0067]), if the extraction require hydrolysis temperature (higher temperatures) conditions if using spent ground coffee as taught by Bunke [Bunke, 0046] and Hair [Hair, col.2, l.40-43], and/or if the extraction requires lower temperatures if using fresh ground coffee as taught by Hair [Hair, col.2, l.54-57]. Doing so would provide suitable extraction temperatures according to the extraction stage (i.e., hydrolysis stage or fresh stage) to obtain a coffee extract with a desired soluble coffee solids concentration according to the extraction stage [Hair, Col.4, lines 6-12].
Regarding claim 8, see claim 6 rejection above, where modified Birch in view of Hair teach forming a slurry (reconstituted slurry) containing from about 3% to about 20% coffee solids [Hair, col.2, l.37-39].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birch et al. [US 20180206514 A1], hereinafter Birch, in view of Bunke et al. [US 20060035000 A1], hereinafter Bunke, Goto et al. [US 20070231443 A1], hereinafter Goto, and Hair et al. [US 3529968 A], hereinafter Hair, as applied to claim 6 above, and further in view of Heeb et al. [US 6165536 A], hereinafter Heeb.
Regarding claim 9, see claim 6 rejection above, where modified Birch in view of Hair teach obtaining a 2nd filter cake (step (c) of Hair) [Hair, col.2, l.48-49], wherein previously extracted coffee solids (spent ground coffee) are further subjected to high temperature (hydrolysis temperatures) extraction process [Hair, col.2, l.40-43], and modified Birch in view of Goto further teach combining a 1st coffee extract and a 2nd coffee extract to form a 3rd concentrated coffee extract, see claim 6, step (E) rejection above, step (g) of Goto [Goto, 0020].
However, modified Birch do not explicitly teach a 2nd filter cake being subjected to a further higher temperature extraction process to obtain a further coffee extract to be combined in step (E) with the 1st and 2nd coffee extracts to form a 3rd coffee extract.
Heeb teach a continuous counter-current process for the extraction of water soluble substances from solids such as coffee [Heeb, col.1 lines 7-12]. Heeb teach the system/process can be arranged so that a coffee extract 120 (second extract) obtained from a second extraction reactor 102 is combined with the product extract 136 (first extract), [Heeb, col.7 lines 16-25, Fig.3], and further teach that in order to increase yields to commercially acceptable levels, the extraction is usually carried out in two or more steps [Heeb, col.1 lines 19-20]. Heeb also disclose a third extraction reactor in which the spent grounds from the second extraction are sent to be thermally treated at a higher temperature for providing solubilized solids to provide a final third extract [Heeb, col. 3 lines 44-59].
As discussed in the rejection of claim 6 above, modified Birch in view of Goto teach combining a 1st and 2nd extract and modified Birch in view of Hair teach extraction of spent coffee solids to form a 2nd filter cake. Since Heeb disclose repetition of the extraction may be performed in two or more steps (multiple subsequent extractions of the filter cakes or spent coffee), and does not teach an upper limit of the amount of extractions that can be performed on spent coffee solids (i.e., 1st, 2nd, 3rd….filter cakes) it would have been obvious to one skilled in the art to perform as many extractions as desired to obtain further coffee extracts to be combined with previous extracts.
It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the claimed subjecting the 2nd filter cake to a further high extraction temperature to obtain a further coffee extract to be combined with a 1st and 2nd coffee extracts, into the invention of modified Birch in view of Heeb, since modified Birch in view of Bunke already teach a plurality of extraction columns filled with roast and ground coffee [Bunke, 0045], and extracted with water to obtain coffee extracts [Bunke, 0046], wherein any desired extraction temperature may be used [Bunke, 0046], particularly where the most exhausted the coffee material (spent coffee) the higher the temperatures being used [Bunke, 0067], since Bunke extraction methods also provides for extraction that may require hydrolysis temperatures (higher temperatures) conditions if using spent ground coffee as taught by Bunke [Bunke, 0045-0046] and also taught by Hair [Hair, col.2, l.40-43]. Doing so would provide processes for the continuous extraction of water soluble substances from solids (coffee), and provide beverage products of good flavor prepared with the extracts obtained [Heeb, col.2, l.27-30], and extraction methods comprising two or more (multiple) extraction steps in order to increase yields to commercially acceptable levels [Heeb, col.1 lines 19-20].
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Birch et al. [US 20180206514 A1], hereinafter Birch, in view of Bunke et al. [US 20060035000 A1], hereinafter Bunke as applied to claim 1 above, and further in view of Hair et al. [US 3529968 A], hereinafter Hair.
Regarding claim 11, modified Birch teach the method of making a soluble coffee powder extract or coffee concentrate product as discussed above in claim 1 rejection.
Bunke is silent regarding the method being a continuous process.
Hair teach a countercurrent coffee slurry extraction process for production of an instant coffee powder [Hair, Abstract, col.2, l.23-26]. Hair further teach the method may be a continuous process [Hair, col.2, l.20-21].
Birch and Hair are both considered to be analogous to the claimed invention because they are in the same field of methods for making soluble coffee extracts from ground coffee. Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Birch to incorporate the teachings of Hair and provide a method that can be carried out in a continuous manner. Doing so would provide a skilled artisan with a countercurrent slurry extraction process that is continuous where the order of steps is not material, does not need a start-up step [Hair, Col.5, lines 36-39], and also provides a high and economical recovery of flavorful, water-soluble components from the extracted coffee material [Hair, col.1, l.68-72].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The new ground of rejection is over Birch in view of Bunker, and while Bunker is still being used in this rejection, Bunker is solely relied upon for the two-stage homogenization process.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DE KOK et al. [US 20160302437 A1], hereinafter DE KOK.
DE KOK teach a method of producing a coffee powder [Abstract], having from 0.8 to 4.5wt% oil [0012], and explicitly teach wherein the method does not have any step of adding coffee oil to the aqueous coffee extract [0008].
Sørensen et al. [US 20170202237 A1], hereinafter Sørensen.
Sørensen teach a method for making a coffee powder [0024] comprising the steps of: providing a mixture of roasted coffee beans and water, milling the mixture of roast coffee beans and water in a pressurised chamber, and separating the milled mixture in a liquid coffee extract and spent coffee grounds. The coffee extract maintains many of the flavour components of the roasted beans [Abstract]. The method may include aroma separation steps, spray drying steps, steps for adding the separated aroma in previous steps, and mixing of various extracts produced during the process [0024]. The method may include a primary extraction to obtain a first extract [0018], a secondary extraction where spent coffee grounds may be used to obtain a second extract, and the first extract may be combined with the second extract to produce a third extract [0029]. The method does not have any step of adding coffee oil to the coffee extract since the coffee oil present/used in the invention is the oil inherently present in the ground coffee beans [0038].
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 LUIS EUGENIO DIOU BERDECIA whose telephone number is (571)270-0963. The examiner can normally be reached Monday-Friday 7:30-4:30.
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/LUIS EUGENIO DIOU BERDECIA/Examiner, Art Unit 1792
/ERIK KASHNIKOW/ Supervisory Patent Examiner, Art Unit 1792