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 .
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 5-7 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mori WO 2012/052855 in view of Bianchi WO 2020/089297.
Regarding claim 5, Mori discloses a method for the controlled extraction of at least one organic molecule of coffee during the preparation of a coffee in a machine for the preparation and dispensing of coffee (coffee is obviously prepared by controlled extraction of at least one organic molecule of coffee during the preparation of a coffee using the coffee machine) (Pg. 6, lines 6-7, claim 10), the method comprising the steps of:
a) demineralizing water (step b, claim 1);
b) adding at least one inorganic salt (calcium carbonate) to said demineralized water (RO filtered water) (step c, claim 1, Pg. 5, lines 8-15). It is noted that Mori discloses that the RO filter filters calcium carbonate and discloses adding the discharge water, which would necessarily contain calcium carbonate, to the demineralized water to adjust the salinity of the demineralized water (RO filtered water) (Pg. 4, lines 33-34, Pg. 5, lines 1-20). Therefore, Mori obviously teaches adding at least one inorganic salt to said demineralized water.
Mori teaches c) using the water thus obtained for the preparation of coffee, as it is noted that Mori teaches that the water obtained from the filtering method is utilized in a coffee machine, and the purpose of a coffee machine is for the preparation of coffee, therefore Mori obviously teaches using the water thus obtained for the preparation of coffee.
Claim 5 differs from Mori in the recitation that the coffee is specifically espresso coffee. It is however noted that Mori does not limit the particular type of coffee.
Bianchi discloses that it was known to utilize filtered and remineralized water in the preparation of espresso coffee (Pg. 6, lines 18-21, claims 1, 3, 6, 10, Fig. 3.2). It would have been obvious to one of ordinary skill in the art to modify the coffee of Mori to specifically be espresso coffee as taught by Bianchi in order to suitably prepare an espresso coffee with treated water of a desired salt concentration, it has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
Modified Mori discloses that the addition step is carried out proportionally to the flow of the water and the flow of water is supplied to a coffee machine (claim 3, Pg. 8, lines 10-16, Pg. 3, lines 1-21, Pg. 1, lines 30-34, Pg. 6, lines 6-7), and therefore obviously suggests that the addition step of b) is carried out proportionally to the water flow rate required by the coffee machine.
Regarding claim 6, Modified Mori discloses that the at least one inorganic salt is added in step b) in the form of an aqueous saline solution prepared from demineralized water, since the discharge water is in the form of an aqueous saline solution which is necessarily prepared from demineralized water because it is removed from the demineralized water (‘855, Fig. 1, Claim 1, Pg. 4, lines 33-34, Pg. 5, lines 1-20).
Regarding claim 7, Modified Mori discloses that the method further comprises a filtration step (30) (‘855, Fig. 1, Pg. 7, lines 17-20).
Regarding claim 10, Modified Mori obviously discloses that the demineralization step is partial since the filtered water has a first concentration of salts, lower than the initial (‘855, claim 1).
Regarding claim 11, Modified Mori is rejected for the same reasons given above as for claim 5.
Regarding claim 12, Modified Mori discloses that the inorganic salt is chosen from calcium salts. It is noted that Mori discloses that the RO filter filters calcium carbonate and discloses adding the discharge water which would necessarily contain calcium carbonate to the demineralized water to adjust the salinity of the demineralized water (RO filtered water) (Pg. 4, lines 33-34, Pg. 5, lines 1-20). Therefore, Mori obviously teaches that the inorganic salt is chosen from calcium salts.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mori WO 2012/052855 in view of Bianchi WO 2020/089297 in view of Wadhwa EP 2791066B1.
Regarding claim 8, Modified Mori discloses that the addition step b) is carried out by mixing (using mixing device 20) (Pg. 7, lines 15-17). Claim 8 differs from Mori in the recitation that the mixing is specifically homogenously mixing.
Wadhwa discloses adding minerals to demineralized water (reverse osmosis filtered water) and discloses that in adding minerals to water it was desirable to use mechanical mixing for providing a homogenous solution of mineralized water ([0095]-[0097]). It would have been obvious to one of ordinary skill in the art to modify Mori such that the mixing is additionally specifically homogenously mixing in order to ensure that a desirable homogenous solution is obtained. It has been held that “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.D).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Mori WO 2012/052855 in view of Bianchi WO 2020/089297 in view of Minor US 2018/0110242.
Regarding claim 13, claim 13 differs from Modified Mori in the recitation that the inorganic salt is selected from the group claimed.
Minor discloses adding magnesium sulfate to demineralized water was desirable for water used to make espresso ([0007], [0073], [0074], [0011]). Minor discloses that the obtained brewed coffee is flavorful ([0011]). It would have been obvious to one of ordinary skill in the art to modify the method of Modified Mori to include adding magnesium sulphate in step b) in order to enhance the flavor of the coffee, it has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Mori WO 2012/052855 in view of Bianchi WO 2020/089297 in view of Bissen US 2020/0297156.
Regarding claim 17, claim 17 differs from Mori in the recitation that the demineralized water from step a) is divided into a first portion and a second portion, wherein step b) is only formed on the first portion and further comprising the step of combining said first portion with said second portion to form the water used in step c), wherein said second portion has not been subjected to the addition of said least one organic and/or inorganic salt.
However, absent evidence of criticality, since the addition of a second portion to the first portion after the first portion has been subjected to step b) would result in a dilution of the portion obtained from step b, such a modification is seen to be a change in sequence of adding ingredients (MPEP 2144.04.IV.C) “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” “Selection of any order of mixing ingredients is prima facie obvious”.
In any case, Bissen teaches that multiple portions of mineralized and demineralized water can be combined to obtain a final desired mineral concentration for water that is supplied to a coffee brewing machine ([0062]).
It would have been obvious to one of ordinary skill in the art to modify Mori such that the demineralized water from step a) is divided into a first portion and a second portion, wherein step b) is only formed on the first portion and further comprising the step of combining said first portion with said second portion to form the water used in step c), wherein said second portion has not been subjected to the addition of said least one organic and/or inorganic salt as suggested by Bissen in order to obtain final water supplied to the coffee machine with a desired mineral content.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
On Pg. 6 of the remarks Applicant argues that Mori and Bianchi do not suggest a system integrated within the coffee machine that dynamically doses salts proportionally to the water flow rate required by the machine.
This argument has not been found convincing, Modified Mori discloses that the addition step is carried out proportionally to the flow of the water and the flow of water is supplied to a coffee machine see Mori claim 3, Pg. 8, lines 10-16, Pg. 3, lines 1-21, Pg. 1, lines 30-34, Pg. 6, lines 6-7, and therefore obviously suggests that the addition step of b) is carried out proportionally to the water flow rate required by the coffee machine.
On pg. 8 of the remarks Applicant argues that there is no motivation to combine with Wadhwa.
This argument has not been found persuasive. As discussed in the office action Wadhwa discloses adding minerals to demineralized water (reverse osmosis filtered water) and discloses that in adding minerals to water it was desirable to use mechanical mixing for providing a homogenous solution of mineralized water ([0095]-[0097]). It would have been obvious to one of ordinary skill in the art to modify Mori such that the mixing is additionally specifically homogenously mixing in order to ensure that a desirable homogenous solution is obtained. It has been held that “Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.D).
On pg.8 of the remarks Applicant argues that Applicant disagrees with the rejection of claim 13, Applicant argues that there is no teaching or suggestion in Minor or elsewhere in the record to integrate the static Minor method into a dynamic system that doses salts proportionally to the machine’s water flow rate.
In response to applicant’s argument above, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In this case Modified Mori already discloses that the addition step is carried out proportionally to the flow of the water and the flow of water is supplied to a coffee machine see Mori claim 3, Pg. 8, lines 10-16, Pg. 3, lines 1-21, Pg. 1, lines 30-34, Pg. 6, lines 6-7, and therefore obviously suggests that the addition step of b) is carried out proportionally to the water flow rate required by the coffee machine. Minor discloses adding magnesium sulfate to demineralized water was desirable for water used to make espresso ([0007], [0073], [0074], [0011]). Minor discloses that the obtained brewed coffee is flavorful ([0011]). It would have been obvious to one of ordinary skill in the art to modify the method of Modified Mori to include adding magnesium sulphate in step b) in order to enhance the flavor of the coffee, it has been held that “Combining prior art elements according to known methods to yield predictable results” supports a conclusion of obviousness (MPEP 2143.I.A).
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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/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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