DETAILED ACTION
Background
The preliminary amendment dated April 24, 2023 (amendment) amending claims 2-3 and 5-11 and adding new claims 12-15 has been entered. Claims 1-8 and 13-15 as filed with the amendment have been examined. Claims 9-12 have been withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election of the invention of Group I, claims 1-8 and 12-15 drawn to a method for producing a coffee extract in the reply filed on May 11, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 and 13-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, at line 2 the recited “glucoamylase having a glucoamylase activity” is indefinite in scope. All glucoamylases have some activity. Do Applicants intend to claim a method of using an amount of glucoamylase that has a given activity or using a glucoamylase that itself has a very low activity level or one that is inactivated?
The Office interprets the claim as reciting a method of using an amount of glucoamylase that has a given activity.
In each of claim 2, at line 2 and claim 5, at line 2 the recited “extracting the coffee extract” is indefinite. How can the recited coffee extract exist before it is extracted?
The Office interprets the claim as reciting a method comprising forming a coffee extract from a slurry of ground coffee beans.
In each of claims 3-4, 6-7 and 14, the term “glucoamylase is used at a glucoamylase activity of” is indefinite. Does Applicant intend to claim that the amount of the glucoamylase used in the claimed method has or provides a given activity or that in the method the glucoamylase has the recited activity level?
The Office interprets the claim as reciting a method wherein the amount of glucoamylase used provides a given activity.
Claims 8, 13 and 15 are rejected as depending from a rejected base claim.
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 1-7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP2009278957 A to Chin et al. (Chin), of record, as evidenced by US8765416 B2 to Shibuya et al. (Shibuya).
References to Chin refer to the Clarivate Machine Translation, a copy of which is provided with this Office action.
The Office interprets the claims as reciting a method of using an amount of glucoamylase that has a given activity or that provides a given activity.
Regarding instant claims 1 and 13, Chin at Abstract on page 1 discloses a method for producing a coffee extract including treating a ground coffee bean slurry, including during extraction with enzymes to derive a sweeter tasting coffee extract. At Example 1 on pages 8-9, Chin discloses comprises forming a coffee extract of 360 kg of water and 40 kg of coffee and then discloses (at the 1st full paragraph of page 9) contacting the coffee extract with enzymes using equal amounts of a galactomannanase (claim 13) and a glucoamylase (SumiteamTM enzyme, see page 7, 3rd full para.) at 2 wt%, based on the weight of coffee beans initially used. Further, Shibuya at col. 41, lines 29-31 discloses that the GLUCZYME AF6 glucoamylase disclosed in the instant specification at Tables 1, 2, 3, 4 and 5 has an activity of 6,000 units/g. Accordingly, Example 1 of Chin discloses use of an amount of glucoamylase that provides an activity of about 120 U per 1 g of coffee beans
Further and regarding instant claims 4, 6 and 14, the Office considers the galactomannanase and the glucoamylase disclosed in Chin as having equivalent activity levels. Accordingly, the glucoamylase in Example 1 of Chin is used in an amount that gives a glucoamylase activity of 1 U per 1 U of galactomannanase activity (claims 4, 6 and 14).
Still further and regarding instant claims 3 and 7, Chin does not provide an example wherein the amount of glucoamylase has an activity of 32 U or less per 1 g of coffee beans as in claim 1; Chin does not provide an example wherein the amount of glucoamylase used has an activity of 32 U or less and more than 0.5 U or more per 1 g of coffee beans as in claim 3; and, Chin does not disclose using an amount of glucoamylase that has an activity of 20 U or less per 1 g of coffee beans as in claim 7. However, at the paragraph bridging pages 7-8, Chin discloses using glucoamylase enzyme in an amount of 0.1 to 10 wt% of the mass of coffee beans, at in an amount that has an activity of 6 U to 600 U/ per 1 g coffee bean, which the claimed 32 U or less per 1 g of coffee beans in claim 1 overlaps, the claimed 32 U or less and 0.5 U or more per 1 g of coffee beans in claim 3 overlaps, and the claimed 20 U or less per 1 g coffee beans in claim 7 overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Chin would have found it obvious to use glucoamylase in an amount of 32 U or less or 20 U or less per 1 g of coffee beans and more than 0.5 U per 1 g of coffee beans because Chin discloses that use of the claimed amount of glucoamylase in the claimed method provides a desirable coffee extract.
Regarding instant claims 2 and 5, the ordinary skilled artisan would have found the method of extracting coffee from a slurry containing ground coffee beans, water and the glucoamylase in claim 2 and the method of extracting coffee from a slurry containing ground coffee beans, water, the glucoamylase and the galactomannanase in claim 5 obvious over Chin because the Abstract of Chin discloses that adding each of the glucoamylase and galactomannanase during extraction provides a desirable coffee extract.
Claims 1-3, 5, 7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over KR20160088771 A to Jeon et al (Jeon) in view of JP2009278957 A to Chin et al. (Chin), as evidenced by US8765416 B2 to Shibuya et al. (Shibuya).
References to Jeon and Chin refer to the Clarivate Machine Translation, a copy of which is provided with this Office action.
The Office interprets the claims as reciting a method of using an amount of glucoamylase that has a given activity or that provides a given activity.
Regarding instant claim 1, Jeon at Abstract on page 1 discloses a method for producing a coffee extract including treating coffee beans, with enzymes that mimic the digestive enzymes used in making Luwak coffee. In the claims, on page 8, Jeon discloses comprises forming a coffee extract in a method comprising contacting the coffee extract with natural enzymes including glucosidase (“glucoamylase”) and other intestinal microflora.
Further and regarding instant claims 3, 7 and 13, Jeon does not provide an example wherein the amount of glucoamylase has an activity of 32 U or less per 1 g of coffee beans as in claim 1; Jeon does not provide an example wherein the amount of glucoamylase used has an activity of 32 U or less and more than 0.5 U or more per 1 g of coffee beans as in claim 3; Jeon does not disclose using an amount of glucoamylase that has an activity of 20 U or less per 1 g of coffee beans as in claim 7; and Jeon does not disclose a method comprising bringing the coffee extract into contact with galactomannanase as in claim 13.
Chin at Abstract on page 1 discloses a method for producing a coffee extract including treating a ground coffee bean slurry, including during extraction with enzymes to derive a sweeter tasting coffee extract. At Example 1 on pages 8-9, Chin discloses comprises forming a coffee extract of 360 kg of water and 40 kg of coffee and then discloses (at the 1st full paragraph of page 9) contacting the coffee extract with enzymes using equal amounts of a galactomannanase and a glucoamylase. Further, at the paragraph bridging pages 7-8, Chin discloses using glucoamylase enzyme in an amount of 0.1 to 10 wt% of the mass of coffee beans, at in an amount that has an activity of 6 U to 600 U/ per 1 g coffee bean, which the claimed 32 U or less per 1 g of coffee beans in claim 1 overlaps, the claimed 32 U or less and 0.5 U or more per 1 g of coffee beans in claim 3 overlaps, and the claimed 20 U or less per 1 g coffee beans in claim 7 overlaps. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", the Office considers that a prima facie case of obviousness exists. See MPEP 2144.05.I. The ordinary skilled artisan in Chin would have found it obvious to use glucoamylase in an amount of 32 U or less or 20 U or less per 1 g of coffee beans and more than 0.5 U per 1 g of coffee beans because Chin discloses that use of the claimed amount of glucoamylase in the claimed method provides a desirable coffee extract.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Chin for Jeon to use an of amount glucoamylase that has an activity of 32 U or less per 1 g of coffee beans as in claim 1, to use an amount that has an activity of 20 U or less per 1 g coffee beans as in claim 7, to use an amount of glucoamylase that has an activity of 0.5 U or more per 1 g of coffee beans as in claim 3 and to contact its coffee extract with galactomannanase as in claim 13. Both references disclose a method for producing a coffee extract comprising contacting the coffee extract with a glucoamylase. The ordinary skilled artisan in Jeon would have desired to include in its microflora an amount of a species sufficient to generate the claimed amount of each of glucoamylase and galactomannanase as in Chin to improve the flavor or sweetness of its coffee extract.
Regarding instant claims 2 and 5, the Office considers the method of extracting coffee from a slurry containing ground coffee beans, water and the glucoamylase in claim 2 to include the method for producing a coffee extract from a slurry containing coffee beans, water and the glucoamylase to include the method disclosed in the Abstract and the first claim of Jeon. Further, the Office considers the method of extracting coffee from a slurry containing ground coffee beans, water, the glucoamylase and the galactomannanase in claim 5 as including the method disclosed in the Abstract and the first claim of Jeon in view of Chin at the paragraph bridging pages 7-8.
Claims 8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over JP2009278957 A to Chin et al. (Chin), as evidenced by US8765416 B2 to Shibuya et al. (Shibuya) as applied to claims 1 and 4 above, and further in view of US5084385 to Ashikari et al. (Ashikari).
As applied to claims 1 and 4, Chin at Abstract and Example 1 discloses a method for producing a coffee extract comprising bringing a coffee extract into contact with an amount of glucoamylase that has an activity of 32 U or less per 1 g of coffee beans and an amount of galactomannanase such that the glucoamylase activity is 0.24 U or more per 1 U of the galactomannanase activity.
Regarding instant claims 8 and 15, Chin does not disclose that its glucoamylase is derived from Rhizopus oryzae. However, Shibuya at col. 16., lines 51-66 discloses that glucoamylases are derived from fungi of the genus Rhizopus.
Ashikari at col. 1, lines 21-25 discloses that glucoamylases derived from the genus Rhizopus are produced in a high productivity amount and have a high activity level. At col. 2, lines 43-45, Ashikari discloses a microbial glucoamylase produced by Rhizopus oryzae.
Before the effective filing date of the present invention, the ordinary skilled artisan would have found it obvious in view of Ashikari for Chin to obtain its glucoamylase from Rhizopus oryzae or obtain a glucoamylase derived from Rhizopus oryzae. Both references disclose use of high activity glucoamylases. The ordinary skilled artisan in Chin would have desired to source its glucoamylase from Rhizopus oryzae or one who derived the glucoamylase from Rhizopus oryzae as an economical and reliable source of the glucoamylase.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW E MERRIAM whose telephone number is (571)272-0082. The examiner can normally be reached M-H 8:00A-5:30P and alternate Fridays 8:30A-5P.
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, Nikki H 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.
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.
/ANDREW E MERRIAM/Examiner, Art Unit 1791
Prosecution Insights