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 9/15/25 has been entered. Applicant’s amendments to the claims have overcome the claim objections previously set forth in the Office Action mailed on 6/13/25.
Claim Status
Claims 1-15 and 30-40 are pending and being examined on their merits. Claims 16-29 which were previously withdrawn due to being directed to a non-elected invention have been canceled. Claims 1, 7, 9-10, and 13-14 have been amended to add the limitation of “adaptogenic” ingredient, claims 1, 4, and 6 have been amended to delete the limitation of “and organic compounds”, claim 7 has been amended to delete the limitation of “Pleurotus”, and claim 10 has been amended to delete the limitations of “adaptogens” and “plants”. Claims 6 and 12 were amended to overcome the objection previously set forth in the last Office Action. Claims 30-40 are newly added.
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.
Claim(s) 1-2, 9, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider et al. [DE 102019101926 A1], hereinafter Roider, in view of Jamroz [US 20180125088 A1] and Jung et al. [KR 20170017025 A], hereinafter Jung.
Regarding claim 1, Roider teach a method for treating coffee beans comprising: providing a water and ethanol solution; mixing at least one adaptogenic ingredient or functional ingredient (ginseng [Roider, 0015-0016], as disclosed on paragraph [0051] of the instant Specification "adaptogenic ingredient" may also be used to refer to a "functional ingredient" and as disclosed on paragraph [0021] of the instant Specification “a functional and/or adaptogenic ingredient include ginseng”), which contains active ingredients (i.e., micronutrients, as disclosed on paragraph [0003] of the instant Specification "Adaptogens are active ingredients (e.g., micronutrients")) with the solution; extracting, based at least in part on the mixing, one or more of micronutrients (adaptogens or active ingredients, i.e., ginsenosides from ginseng [0015-0016]) from the at least one ingredient into the solution to create an extract [0009-0011]; roasting coffee beans and cooling (i.e., placed in a storage container) after roasting [0033 and 0038]; and applying said liquid extract on an exterior surface of the roasted coffee beans [Abstract], while said roasted coffee beans are in a temperature range of between 20-55°C [0025] to form coated coffee beans; and wherein the applying comprises simultaneously applying the extract on the roasted coffee beans and stirring (extract is mixed by a mixing device during spraying/applying said extract into the roasted coffee beans) the roasted coffee beans [0035]. Roider disclose that the extract may be applied to the roasted coffee beans in amount ranges from 2mL to 50mL per 1kg (1000g) of roasted coffee beans [0026, claim 11], therefore, since the density of a water/ethanol extract mixture is approximately 1g/mL, then 2mL=2g and 50mL=50g of extract, per 1000g of roasted coffee beans would have a weight ratio of extract to coffee bean of 2g extract/1000g beans x (100)= 0.2% for the lower limit of 2mL of extract per 1000g of coffee beans, and 50g extract/1000g total x (100)= 5% for the upper limit of 50mL of extract per 1000g of coffee beans.
Moreover, regarding the claimed weight ratio of the extract to the coffee beans ranges from about 0.1% to about 40%, MPEP 2144.05 II. A. states: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Roider does not explicitly teach at least 20% of the solution by volume is ethanol; roasting coffee beans at a temperature that is in a range from about 120 degrees Celsius to about 375 degrees Celsius.
Jamroz teach infusing roasted coffee beans with a solution comprising 80% alcohol (20% water) [0014-0015, 0020, Abstract], wherein the alcohol may be ethanol [Abstract], and at least one ingredient to produce an extract [0019-0020].
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 solution of at least 20% by volume of ethanol into the invention of Roider in view of Jamroz, since both are directed to methods of coating roasted coffee beans, since Roider already teach using an ethanol/water for the aqueous extract but simply did not mention the ethanol/water specific ratios. Doing so would provide an extract solution that is water and ethanol based, so that when applied to roasted coffee beans for infusion it evaporates quickly compared to an only water based solution, which would prevent food contamination by pathogenic microbes and prevent shelf life reduction of the infused coffee beans [Jamroz, 0011, 0013].
Jung teach a method for manufacturing a coated coffee bean [Title, Abstract], wherein the surface of the coffee beans are coated with an extract solution comprising one or more micronutrient (polyphenol(s)) from the at least one ingredient (green tea leaves or pine bark) after roasting said coffee beans [Abstract, claim 5]. The disclosure teach roasting coffee beans at 220°C [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 roasting temperature into the invention of modified Roider in view of Jung, since both are directed to methods of coating roasted coffee beans, since Roider already teach using roasted coffee beans but simply did not mention the temperature at which the coffee beans were roasted, since the coffee aromas gradually evaporates and disappears immediately after roasting and it is desirable to apply the coating solution to the coffee beans as soon as possible after roasting [Jung, 0047], since a skilled artisan would recognize that roasting temperatures may be adjusted based on the amount of coffee beans being roasted, the time duration of the roasting recipe and/or the desired roast degree (i.e., light, medium, dark roast). Doing so would provide roasted coffee beans that can be coated with extracts containing at least one ingredient that offers improved storability, flavor and nutrition profile of the coffee beans, and provides components from the extract used for coating that are useful to the human body, as well as production of high-quality brewed coffee [Jung, Abstract].
Regarding claim 2, Roider teach the amount of extract used for coating the coffee beans is sufficient to evenly spread/wet the exterior surface of the roasted coffee beans [0026], and further teach that the extract solution is sprayed on the coffee beans while stirring/mixing [0035], therefore, the extract is evenly or substantially evenly spread on the exterior surface of the roasted coffee beans, based at least in part on the stirring as claimed under the broadest reasonable interpretation (BRI).
Regarding claim 9, Roider teach mixing the at least one adaptogenic ingredient or functional ingredient (i.e., powdered chlorophyll and/or powdered caffeine) comprises mixing the powder into the solution [Roider, 0023, 0039, 0043], but does not explicitly recites pulverizing the at least one ingredient into a powder prior to mixing the at least one ingredient with the solution.
Jung teach a method for manufacturing a coated coffee bean [Title, Abstract], wherein the surface of the coffee beans are coated with an extract solution comprising one or more micronutrient (polyphenol(s)) from the at least one ingredient (green tea leaves or pine bark) after roasting said coffee beans [Abstract, claim 5] as discussed above in claim 1 rejection, and further teach pulverizing (turning into powder) the at least one ingredient (green tea leaves or pine bark) into a powder prior to mixing the at least one ingredient with the solution [Jung, 0023].
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 pulverizing the at least one ingredient into a powder prior to mixing the at least one ingredient with the solution into the invention of Roider in view of Jung, since Roider already teach mixing the at least one adaptogenic ingredient or functional ingredient (powdered chlorophyll and/or powdered caffeine) comprises mixing the powder into the solution but simply did not mention the pulverizing step of the ingredients to turn into powders (i.e., caffeine/chlorophyll). Doing so would provide roasted coffee beans that can be coated with extracts containing at least one ingredient with a large polyphenol amount [Jung, 0023], that are rich in antioxidants, adds human benefiting components of polyphenol to coffee beans [Jung, 0021], offers improved storability, flavor and nutrition profile of the coffee beans, and provides components from the extract used for coating that are useful to the human body, as well as production of high-quality brewed coffee [Jung, Abstract].
Regarding claim 12, see claim 1 rejection above, where modified Roider in view of Jamroz provide an extract solution comprising one or more adaptogenic ingredient or functional ingredient (i.e., cannabidiol (CBD)) that is water and ethanol based, so that when applying the extract on an exterior surface of the roasted coffee beans for infusion, it evaporates quickly compared to an only water based solution, which would inhibit microbial activity on the exterior surface of the coffee bean [Jamroz, Abstract, 0011, 0013, 0021 and claims 2, 8], and inhibit microbial activity within the roasted coffee beans [Jamroz, 0025].
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 applying is configured to inhibit microbial activity within the coated coffee beans, on the exterior surface of the coated coffee beans into the invention of Roider in view of Jamroz. Doing so would prevent shelf life reduction of the infused coffee beans, prevent food contamination by pathogenic microbes [Jamroz, Abstract, 0011, 0022, 0024], and provides coated coffee beans with at least or exceeding 10% improved shelf life [Jamroz, Abstract, 0040], while providing nutrients to the consumers without risks associated with microbial activity [Jamroz, 0013] and stabilize the coffee beans flavor [Jamroz, 0025].
Claim(s) 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz and Jung as applied to claim 1 above, and further in view of Toshikawa [GB 2166336 A].
Regarding claim 3, Roider teach drying the coated coffee beans in an environment having a temperature that is at or below 120 degrees Celsius (50-60°C) [0044] or (20-55°C if drying is performed during incubation step ) [0025, 0029, 0036], to allow at least a portion of the extract to evaporate from the exterior surface of the coated coffee beans. Regarding the coated coffee beans drying time between 20 seconds and 60 days, Roider teach that depending on the incubation temperature and the incubation time, the treated coffee beans dry during the incubation step (incubation step may be a drying step or drying step may be an integral step to the incubation step or drying can take place during incubation) [0029, 0036], and wherein the incubation/drying time may be in a range of 10-90 minutes (equivalent to wherein the coated coffee beans are dried for between 20 seconds and 60 days as claimed) [0027].
Roider does not explicitly teach the coated coffee beans being dried in an environment having a relative humidity that is at or below 99%.
Toshikawa teach a method of treating roasted coffee beans comprising coating the surface of whole roasted coffee beans [Toshikawa, Abstract], where in some embodiments may include keeping the coated roasted coffee beans at a relative humidity below 99% (80% relative humidity) [Toshikawa, p.3, l.15-19].
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 coffee beans being dried in an environment having a relative humidity that is at or below 99% into the invention of Roider in view of Toshikawa, since both are directed to methods of coating roasted coffee beans, since Roider already teach drying during incubation step and/or additional drying step [Roider, 0029, 0036] but simply did not mention the relative humidity during the drying process, which would be obvious to a skilled artisan to process and/or store the coated coffee beans under controlled conditions to prevent moisture increase of the coated dried coffee beans. Doing so would provide a method for coating roasted coffee beans that includes a drying step with reduced relative humidity conditions (relative humidity below 99%) after the roasted coffee beans are coated [Toshikawa, p.2, l.26-27] in order to keep the coated coffee beans fresh for a long time by storing them in a dry place [Toshikawa, p.2, l.37-38].
Regarding claim 4, Roider teach coating roasted coffee beans with a water and ethanol solution extract [Abstract, 0010], wherein the coated coffee beans may be dried (coating water-ethanol solution is evaporated) during incubation step and/or additional drying step [Roider, 0029, 0036].
Roider in view of Jamroz teach coating/infusing roasted coffee beans with a water and ethanol extract as discussed above in claim 1 rejection, and further teach evaporating (drying) the coating solution (water-ethanol extract) from the roasted coffee beans, which enables lipophilic attraction (intermolecular forces) between micronutrients and organic compounds (coffee oil(s) and cannabinoids (micronutrients and organic compounds) [Jamroz, Abstract, claim 8], as disclosed on page 4, paragraph [0007] and pages 21-22, paragraph [0065] of the instant Specification, “coffee oils/lipids mix with alcohols, i.e., water-ethanol mixture, bind to the extracted micronutrients and organic compounds to the exterior surface of the coated coffee beans via intermolecular forces”), as well as provide an extract solution that is water and ethanol based, so that when applied to roasted coffee beans for infusion it evaporates quickly compared to an only water based solution, which would prevent food contamination by pathogenic microbes [Jamroz, 0011], as disclosed on page 4, paragraph [0007] of the instant Specification, “all or a majority of the water-ethanol solution evaporates from the exterior surface of the coated coffee beans leaving the micronutrients and/or organic compounds bound as precipitates to the exterior surface via intermolecular forces. In this way, the moisture content of the coated coffee beans following drying can be kept at a level (e.g., <5%, in a range from about 2% to about 3%, etc.) that minimizes or inhibits microbial growth in the coffee beans, on the surface of the coffee beans, or a combination thereof.”
Roider in view of Jung teach the method for coating the surface of a coffee bean [Title, Abstract] as discussed above in claim 1 rejection, and further teach the coating solution comprising ethanol is volatilized (evaporated) after coating, allowing the components in the coating solution to adhere (bound) well to the exterior surface of the coated coffee beans [Jung, 0045].
However, modified Roider is silent regarding the moisture content of the coated coffee beans following the drying is less than 5%.
Toshikawa teach a method of coating the surface of whole roasted coffee beans [Abstract] as discussed above in claim 3 rejection, and further teach various examples wherein the moisture content of the coated coffee beans following the drying is less than 5% [Toshikawa, p.4, Table 1, Examples 2-4] shows coated roasted coffee beans with a moisture content of 3.8 to 4.3%.
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 moisture content of less than 5% for the coated coffee beans into the invention of Roider in view of Toshikawa, since both are directed to methods of coating roasted coffee beans, since Roider already teach drying during incubation step and/or additional drying step [Roider, 0029, 0036] and does not limit the moisture content of the coated coffee beans after the incubation/drying process(es), which would depend on the incubation temperature and time [Roider, 0029, 0036]; since Roider in view of Jamroz teach evaporating the coating solution (water-ethanol extract) from the roasted coffee beans, which enables lipophilic attraction (intermolecular forces) between micronutrients and organic compounds (coffee oil(s) and cannabinoids (micronutrients and organic compounds) [Jamroz, Abstract, claim 8], as disclosed on page 4, paragraph [0007] and pages 21-22, paragraph [0065] of the instant Specification, “coffee oils/lipids mix with alcohols, i.e., water-ethanol mixture, bind to the extracted micronutrients and organic compounds to the exterior surface of the coated coffee beans via intermolecular forces”), as well as the use of a coating solution that is water and ethanol based that evaporates quickly, which would prevent food contamination by pathogenic microbes [Jamroz, 0011], as disclosed on page 4, paragraph [0007] of the instant Specification; since Roider in view of Jung also teach the coating solution comprising ethanol is volatilized (evaporated) after coating, allowing the components in the coating solution to adhere (bound) well to the exterior surface of the coated coffee beans [Jung, 0045], as disclosed on page 4, paragraph [0007] of the instant Specification. Doing so would provide a method for producing coated roasted coffee beans where moisture can be reduced or avoided (cut off) and cannot affect the coated coffee beans [Toshikawa, p.1, l.60-61] in order to keep said coated coffee beans fresh for a long time by storing them in a dry place [Toshikawa, p.2, l.37-38].
Regarding claim 5, Roider teach drying the coated coffee beans in an environment having a temperature that is at or below 120 degrees Celsius (50-60°C) [0044] or (20-50°C if drying is performed during incubation step ) [0025, 0029, 0036], (drying the coated coffee beans in an environment at or below 120 degrees Celsius as claimed). Roider further teach that the coating step of the roasted coffee beans may be performed at a temperature range of 20-55°C and the drying/incubation step may be performed at a temperature range of 20-55°C [0025], wherein said drying/incubation of the coated coffee beans may be performed by heat (equivalent to a temperature that is equal to or greater than a temperature of the coated coffee beans) or by air stream (equivalent to a temperature that is less than the temperature of the coated coffee beans) [0029, 0036, claim 8]. Therefore, a roasted coffee bean in the method of Roider that has been coated at 55°C and dried/incubated at 20°C would satisfy element (2) of claim 5 of “a temperature that is less than the temperature of the coated coffee beans”. Regarding the relative humidity that is between 60% and 99%, see claim 3 rejection above, Roider in view of Toshikawa, where Toshikawa teach keeping the coated roasted coffee beans at a relative humidity below 99% (80% relative humidity) [Toshikawa, p.3, l.15-19].
Regarding claim 6, Roider teach that the extract may be applied to roasted coffee beans that are at a temperature of 55°C or more than 55°C [0025], therefore, it is implied that at least a portion of the extract applied on the exterior surface of the roasted coffee beans evaporates since the disclosure teach these temperatures provides for the drying of the extract solution [0044]. Regarding the one or more of the micronutrients binding to the exterior surface of the roasted coffee beans via intermolecular forces, see claim 4 rejection above, Roider in view of Jamroz and Jung.
Claim(s) 7-8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz and Jung as applied to claim 1 above, and further in view of Kim et al. [KR 20170094630 A], hereinafter Kim, evidenced by NIH [shiitake mushroom Taxonomy, PubChem, 2021].
Regarding claim 7, Roider teach the coating of roasted coffee beans with a water-ethanol based extract comprising at least one ingredient as discussed above, but does not teach the at least one ingredient comprises one or more of mushrooms and fungi, the one or more of mushrooms and fungi selected from a group consisting of Hydnoid fungi, Inonotus, Ganoderma, Cordycipitaceae, Trametes, Phellinus, Grifola, Lentinula, Agaricus, Wolfiporia, Schizophyllum, Pleurotus, Fomes, Hericium, Flammulina, Morchella, Auricularia, Tremella, and Lentinus.
Kim teaches a method for producing a coffee product comprising one or more adaptogenic ingredients (i.e., mushrooms), wherein the method comprises forming an extract solution from mushrooms containing trace minerals and spraying said mushroom/mineral extract solution into coffee beans [Abstract]. The method provides for the use of various edible mushrooms including shiitake mushrooms [0055], (also known as Lentinula and/or Lentinus as claimed and disclosed on page 20, paragraph [0064] of the instant Specification. Furthermore, see evidence of NIH, shiitake mushroom Taxonomy Summary, pages 1-3, disclosing shiitake mushroom as Lentinula and/or Lentinus under synonyms on page 2).
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 mushroom ingredient to coat coffee beans into the invention of Roider in view of Kim, since both are directed to methods of coating coffee beans; since Roider already teach spraying/coating roasted coffee beans [Roider, 0035] and Kim disclose that the useful ingredients used for coating the coffee beans are suitable for surviving the roasting process [Kim, 0061-0062]. Doing so would provide a method for coating coffee beans that includes beneficial ingredients to the consumer when drinking the coffee, promotes consumer health [Kim, Abstract], prevents growth of harmful bacteria such as mold by useful microorganisms, thereby preventing spoilage during storage and extending the shelf life [Kim, 0001].
Regarding claim 8, modified Roider in view of Kim teach the method and concepts discussed above in claim 7 rejection, and Kim further teach the micronutrients present in the mushroom extract include trace minerals such as selenium [Kim, 0055-0058].
Regarding claim 10, modified Roider teach coating the roasted coffee bean with an extract comprising at least one adaptogenic ingredient or functional/active ingredient as discussed above in claim 1 rejection, and modified Roider in view of Kim teach coating the roasted coffee bean with a mushroom extract as discussed in claim 7 above, wherein said mushroom extract comprise an active ingredient (i.e., selenium) present in one or more mushroom as discussed in claim 8 rejection above.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz and Jung as applied to claim 1 above, and further in view of r/roasting [Bourbon aged coffee without barrel?, 2020], evidenced by Lemonick [Yes, You should put water in your whiskey, 2017], Duffy’s Nappa Valley Treatment [What does proof mean in alcoholic beverages?, 2012], hereinafter Duffy’s, and Fortune [US 20020009533 A1].
Regarding claim 11, Roider teach a method for treating coffee beans comprising: providing a water and ethanol solution to prepare a coating extract for coating roasted coffee beans as discussed above in claim 1 rejection, but is silent regarding the solution being less than 50% by volume of ethanol.
r/roasting teach quenching/cooling coffee beans after the roasting process by spraying whiskey on the roasted coffee beans [r/roasting, p.2, trickeypat comment]. The evidence of Lemonick disclose that whiskey is a water-ethanol solution with 40% ethanol or 80 proof ethanol (less than 50% ethanol as claimed) [Lemonick, p.2, par.2], the evidence of Duffy’s disclose that proof is defined as twice the ethanol content by volume [Duffy’s, p.1], and the evidence of Fortune disclose a preparation method of a roasted coffee bean coated with an organic compound (spraying a nicotine coating solution) [Fortune, Abstract, 0013, 0030], wherein the coating solution is a water-alcohol based mixture, were the water and alcohol ratios are easily selected by a skilled artisan [Fortune, 0030].
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 less than 50% by volume of ethanol solution for coating the roasted coffee beans into the invention of Roider in view of R/roasting, since both are directed to methods of coating roasted coffee beans with water-ethanol based solutions; since Roider already teach using an ethanol/water for the aqueous extract but simply did not mention the ethanol/water specific ratios. Doing so would provide a method for coating coffee beans by spraying a water-ethanol mixture (whiskey) which would help cooling the coffee beans after the roasting process [r/roasting, p.5, trickeypat comment], while the heat of the roasted coffee beans helps with the evaporation of the coating solution from the exterior surface of the coffee beans without adding any moisture to the beans [r/roasting, p.6, MinerJason comment], thereby infusing coffee beans with whiskey flavor components. Since the claimed ethanol concentration would have been used during the course of normal experimentation and optimization in the method of Roider in view of R/roasting, due to factors such as the type and/or amount of ingredients used for preparing the extract solution for coating the roasted coffee beans, the solubility of the various ingredients in water and alcohol (ethanol) which depends largely on their chemical structure and polarity, and/or the desired evaporation rate of the coating solution (i.e., a solution with higher water content would evaporate slower than a solution with a higher ethanol content) based on drying step parameters (i.e., drying temperature, air stream flow rate).
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz and Jung as applied to claim 1 above, and further in view of Lilly [US 20210392933 A1], evidenced by Meyler's Side Effects of Drugs [Psilocybin, Elsevier, 2016], hereinafter Meyler, and NIH [Psilocybin, PubChem, 2005].
Regarding claims 13-15, modified Roider teach the method of making coated roasted coffee beans, by applying/coating a roasted coffee bean with an extract comprising at least one adaptogenic ingredient or functional/active ingredient comprising micronutrient (i.e., ginseng [Roider, 0015-0016], or cannabinoids (CBD) [Jamroz, Abstract, 0011, 0013, 0021, 0025 and claims 2, 8]) as discussed above in claim 1 rejection, but does not teach the at least one ingredient comprises one or more of mushrooms and fungi, the one or more of mushrooms and fungi selected from a group consisting of Conocybe, Galerina, Gymnopilus, Onocybe, Panaeolus, Pholiotina, Pluteus, and Psilocybe (claim 13), wherein the at least one ingredient comprises one or more mushrooms, the one or more mushrooms selected from a group consisting of Psilocybe cubensis, Psilocybe semilanceata, Psilocybe azurescens, Psilocybe tampanensis, Psilocybe zapotecorum, Psilocybe cyanescens, Panaeolus cyanescens, Psilocybe caerulescens, Psilocybe mexicana, Psilocybe caerulipes, Psilocybe stuntzii, and Psilocybe baeocystis (claim 14), or wherein the micronutrients include one or more of Psilocybin and psilocin (claim 15).
Lilly teach a method of making a food product that includes mixing a non-medicinal food base liquid such as milk, juice, stock, jelly, or other such items with a medicinal product such as cannabinoid and/or Psilocybin (instant claim 15) [Lilly, Abstract and 0021] to prepare a medicinal-infused food-based carrier [Lilly, Abstract and 0022]. Once the medicinal-infused food-based carrier is prepared, it is added to a second food item to prepare a medicinal-infused food item, wherein the second food item that the medicinal-infused food-based carrier is applied to may be a solid (i.e., fruits, vegetables, etc.) [Lilly, Abstract and 0022]. The evidence of Meyler teach Psilocybin is present in Psilocybe cubensis mushrooms (instant claim 14) [Meyler, p.1, General Information], and the evidence of NIH disclose that Psilocybin is isolated from Psilocybe mushrooms (instant claim 13) [NIH, p.1-2, Description].
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 mushroom and fungi ingredient Psilocybe and the micronutrient Psilocybin for coating/infusing coffee beans into the invention of Roider in view of Jamroz and Lilly, since all are directed to methods of coating/infusing foodstuffs with ingredients comprising micronutrients in order to provide/promote health benefits through medicinal compounds and/or active ingredients [Roider, 0005, 0008-0009, 0023], [Jamroz, 0006-0007] and [Lilly, Abstract]; since Roider already teach spraying/coating roasted coffee beans with extracts or liquid solutions [Roider, 0035] and Jamroz disclose applying/coating a roasted coffee bean with at least one ingredient/micronutrient such as cannabinoids (CBD) [Jamroz, Abstract, 0011, 0013, 0021, 0025 and claims 2, 8]; since the substitution of one known element (i.e., ginseng of Roider or cannabinoid (CBD) of Jamroz and Lilly) for another (i.e. Psilocybin of Lilly) would have yielded predictable results to one of ordinary skill in the art, since Lilly teaches that cannabinoids and/or Psilocybin are suitable for infusion of solid foodstuffs [Lilly, Abstract, 0022]. Doing so would provide a method for making infused solid foods (i.e., coated coffee beans) with Psilocybin that are accurately and evenly dosed at the time of production, resulting in individual products that have more precise levels of Psilocybin compound that will also remain in such a precisely dosed state for an extended period of time so that users will know the level and effect of the Psilocybin compound he or she is consuming [Lilly, 0005].
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider et al. [DE 102019101926 A1], hereinafter Roider, in view of Jamroz [US 20180125088 A1], Jung et al. [KR 20170017025 A], hereinafter Jung, and Kim et al. [KR 20170094630 A], hereinafter Kim, evidenced by NIH [shiitake mushroom Taxonomy, PubChem, 2021], and Eden Foods [Maitake & Shiitake Mushrooms, 2020], hereinafter Eden.
Regarding claim 30, see Roider in view of Jamroz and Jung for all the claim limitations of claim 30 that are similarly recited in claim 1 discussion above. Regarding the claimed mixing at least one adaptogenic ingredient from one or more mushrooms into the solution, see modified Roider in view of Kim in claim 7 rejection above, where Kim teaches forming an extract solution from mushrooms containing micronutrients (i.e., minerals), and spraying said mushroom/mineral extract solution into coffee beans [Abstract].
Regarding claim 31, modified Roider in view of Kim teaches forming an extract solution from mushrooms (i.e., shiitake mushroom [Kim, 0055]) containing micronutrients (i.e., minerals), and spraying said mushroom extract solution into coffee beans as discussed above in claim 30 rejection. While Kim does not explicitly recites the extracting of micronutrients comprises extracting polysaccharides from the one or more mushrooms, the evidence of Eden disclose that shiitake mushrooms (used in Kim’s invention) are high in polysaccharides [Eden, p.1, par.4]. Therefore, there is a reasonable basis to conclude that the extracting of mushroom material of Kim comprises extracting polysaccharides from the shiitake mushrooms as evidenced by Eden.
Claim(s) 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz, Jung, and Kim as applied to claim 30 above, and further in view of Lilly [US 20210392933 A1], evidenced by Meyler's Side Effects of Drugs [Psilocybin, Elsevier, 2016], hereinafter Meyler, and Gotvaldová et al. [Stability of psilocybin and its four analogs in the biomass of the psychotropic mushroom Psilocybe cubensis, Wiley, 2020], hereinafter Gotvaldová.
Regarding claims 32-33, modified Roider in view of Kim the method of making coated roasted coffee beans comprise extracting one or more of micronutrients from the one or more mushrooms as discussed above in claim 30 rejection, but does not teach the micronutrients comprises extracting psilocybin and/or psilocin.
Lilly teach a method of making a food product that includes mixing a non-medicinal food base liquid (i.e., milk, juice, stock) with a medicinal product such as cannabinoid and/or Psilocybin [Lilly, Abstract and 0021] to prepare a medicinal-infused food-based carrier (i.e., psilocybin liquid solution/extract) [Lilly, Abstract and 0022]. Once the medicinal-infused food-based carrier is prepared (i.e., psilocybin liquid solution/extract), it is added to a second food item to prepare a medicinal-infused food item, wherein the second food item that the medicinal-infused food-based carrier is applied to may be a solid (i.e., fruits, vegetables, etc.) [Lilly, Abstract and 0022]. One embodiment shows extracting one or more micronutrients by extracting psilocybin from one or more mushrooms containing psilocybin [Lilly, 0008]. While Lilly does not explicitly recites extracting psilocin, Lilly does teach extracting mushrooms containing psilocybin, the evidence of Meyler teach psilocybin is present in Psilocybe cubensis mushrooms [Meyler, p.1, General Information], and the evidence of Gotvaldová disclose that psilocin is present in Psilocybe cubensis mushrooms [Gotvaldová, p.445, conclusion]. Therefore, there is a reasonable basis to conclude that the extracting of mushrooms containing psilocybin of Lilly comprises extracting psilocin from the one or more mushrooms used in Lilly’s invention as evidenced by Gotvaldová, since Lilly does not limit the type of psilocybin containing mushroom to be used and a skilled artisan would recognize the use of Psilocybe cubensis for extracting psilocybin as taught by Lilly, which would also extract psilocin during the extraction process since this analyte is also present in Psilocybe cubensis as evidenced by Gotvaldová.
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 micronutrient(s) psilocybin and/or psilocin for coating/infusing coffee beans into the invention of modified Roider in view of Lilly, since all are directed to methods of coating/infusing foodstuffs with ingredients comprising micronutrients in order to provide/promote health benefits through medicinal compounds and/or active ingredients [Roider, 0005, 0008-0009, 0023], [Jamroz, 0006-0007] and [Lilly, Abstract]; since Roider already teach spraying/coating roasted coffee beans with extracts or liquid solutions [Roider, 0035], since Jamroz disclose applying/coating a roasted coffee bean with at least one ingredient/micronutrient such as cannabinoids (CBD) [Jamroz, Abstract, 0011, 0013, 0021, 0025 and claims 2, 8], and since Kim already disclose using a mushroom extract for coating coffee beans [Kim, Abstract, 0055]; since the substitution of one known element (i.e. cannabinoid (CBD) of Jamroz and Lilly or shiitake mushroom of Kim) for another (i.e. psilocybin/psilocin of Lilly) would have yielded predictable results to one of ordinary skill in the art, since Lilly teaches that cannabinoids and/or psilocybin are suitable for infusion of solid foodstuffs [Lilly, Abstract, 0022]. Doing so would provide a method for making infused solid foods (i.e., coated coffee beans) with psilocybin that are accurately and evenly dosed at the time of production, resulting in individual products that have more precise levels of Psilocybin compound that will also remain in such a precisely dosed state for an extended period of time so that users will know the level and effect of the psilocybin compound he or she is consuming [Lilly, 0005].
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz, Jung, and Kim as applied to claim 30 above, and further in view of r/roasting [Bourbon aged coffee without barrel?, 2020], evidenced by Lemonick [Yes, You should put water in your whiskey, 2017], Duffy’s Nappa Valley Treatment [What does proof mean in alcoholic beverages?, 2012], hereinafter Duffy’s, and Fortune [US 20020009533 A1].
Regarding claim 34, Roider teach a method for treating coffee beans comprising: providing a water and ethanol solution to prepare a coating extract for coating roasted coffee beans as discussed above in claims 1 and 30 rejection. Regarding the solution being less than 50% by volume of ethanol, see claim 11 rejection above over modified Roider in view of r/roasting, evidenced by Lemonick, Duffy’s and Fortune.
Claim(s) 35-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roider, in view of Jamroz, Jung, and Kim as applied to claim 30 above, and further in view of Kelly [US 20140302560 A1], evidenced by Van Der Hoeven [Bio Based Press, Mycelium as a construction material, 2020], and Lu et al. [Inonotus obliquus (chaga mushroom), Polymers, 2021, p.1-21], hereinafter Lu.
Regarding claims 35-40, modified Roider in view of Kim teach mixing at least one adaptogenic ingredient from one or more mushrooms into a solution, forming an extract solution from mushrooms, and spraying said mushroom/mineral extract solution into coffee beans [Kim, Abstract]. However, modified Roider does not teach using the specific type of mushrooms of chaga, lion's mane, reishi, cordyceps, turkey tail, Hydnoid fungi, Inonotus, Ganoderma, Cordycipitaceae, and Trametes psilocybin mushrooms.
Kelly teach a method of making an extract of myceliated (mycelium is the invisible part of mushrooms “roots” [Van Der Hoeven, p.2]) agricultural product (such as coffee beans [Kelly, 0048]) for human consumption [Kelly, Abstract]. The invention disclose suitable mushroom strains include Inonotus obliquus [Kelly, 0040], (known as chaga mushroom [Lu, Abstract, p.1]), cordyceps mushrooms [Kelly, 0032], Ganoderma [Kelly, 0034], Trametes [Kelly, 0042]. The invention provides for various foodstuffs infused with mushroom extracts such as, reishi coffee (reishi mushroom infused coffee), turkey tail honey (turkey tail mushroom infused honey), and lion’s mane honey (lion’s mane mushroom infused honey) [Kelly, 0067].
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 variety of mushrooms for coating/infusing coffee beans into the invention of modified Roider in view of Kelly, since all are directed to methods of coating/infusing foodstuffs with ingredients comprising adaptogenic, functional, or active ingredients comprising micronutrients in order to provide/promote health benefits through medicinal compounds and/or active ingredients; since Roider already teach spraying/coating roasted coffee beans with extracts or liquid solutions [Roider, 0035], and since Kim already disclose using a mushroom extract for coating coffee beans [Kim, Abstract, 0055]; since the substitution of one known element (i.e., shiitake mushroom of Kim) for another (i.e., mushroom materials of Kelly) would have yielded predictable results to one of ordinary skill in the art. Doing so would provide a method for making infused solid foods (i.e., coated coffee beans) with mushroom and mycelium extracts which are known to contain a variety of pharmacologically important compounds [Kelly, 0046], provide functional foods and nutraceutical formulations that can be used directly, stored for later use, packaged, and/or shipped [Kelly, 0003]. It would also provide functional foods with fungi strains that can provide health benefits to the consumer such as anti-aging and aphrodisiacal properties, inhibit the proliferation of numerous cancer cell lines, anti-tumor activity and many other health benefits [Kelly, 0032, 0034, 0040, 0042, 0044].
Response to Arguments
Applicant's arguments filed 9/15/25 have been fully considered but they are not persuasive.
On pages 7-8 of the Remarks, Applicant arguments are directed to the new limitation of the term “adaptogenic” ingredient. As discussed above in claim 1 rejection, Roider teach mixing at least one adaptogenic ingredient or functional ingredient (ginseng [Roider, 0015-0016], as disclosed on paragraph [0051] of the instant Specification "adaptogenic ingredient" may also be used to refer to a "functional ingredient" and as disclosed on paragraph [0021] of the instant Specification “a functional and/or adaptogenic ingredient include ginseng”), which contains active ingredients (i.e., micronutrients, as disclosed on paragraph [0003] of the instant Specification "Adaptogens are active ingredients (e.g., micronutrients")) with the solution; extracting, based at least in part on the mixing, one or more of micronutrients (adaptogens or active ingredients, i.e., ginsenosides from ginseng [0015-0016]) from the at least one ingredient into the solution to create an extract [0009-0011]. Therefore, based on Roider’s teachings and on the definition of adaptogenic ingredient and functional ingredient provided by Applicant on paragraph [0051] of the instant Specification, as well as the disclosure of adaptogenic and/or functional ingredients (i.e., ginseng) on paragraph [0021] of the instant Specification, the rejection of claim 1 over Roider in view of Jamroz and Jung is maintained.
On page 8, paragraph 3 of the Remarks, Applicant argues that coating the coffee beans with the claimed extract is different than coating coffee beans with other ingredients because certain micronutrients found in adaptogenic ingredients such as mushrooms are temperature sensitive and prone to degradation if exposed to temperatures higher than 120°C.
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., adaptogenic ingredients such as mushrooms) 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). In this case, claim 1 does not require the adaptogenic ingredient to be specifically or only from mushrooms, and claim 1 only requires the extract to be made from at least one (any) adaptogenic ingredient (i.e., ginseng) which is taught by Roider.
On page 10, paragraphs 1-3 of the Remarks, Applicant argues the use of too many references to address claim 11.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Moreover, as explained above in claim 11 rejection, Roider already teach providing a water and ethanol solution, r/roasting teach quenching/cooling coffee beans by spraying whiskey on the roasted coffee beans [r/roasting, p.2, trickeypat comment], and (whiskey is a water-ethanol solution with 40% ethanol as evidenced by Lemonick, p.2, par.2, or 80 proof ethanol as evidenced by Duffy’s, p.1).
Furthermore, Fortune disclose a preparation method of a roasted coffee bean coated with an organic compound (spraying a nicotine coating solution), wherein the coating solution is a water-alcohol based mixture, were the it is known in the art that water and alcohol ratios are easily selected by a skilled artisan [Fortune, Abstract, 0013, 0030]. Therefore, the selection of any concentration of ethanol in a water/ethanol solution, including the claimed less than 50% of the solution, by volume, being ethanol for coating coffee beans would have been used during the course of routine experimentation and optimization in the method of Roider in view of r/roasting due to various factors in the process as explained above in claim 11 rejection. Therefore, the rejection of claim 11 over modified Roider in view of r/roasting is maintained.
On page 11 of the Remarks, Applicant argues that it would not be obvious to combine the teachings of Lilly into the invention of Roider because the instant claims are directed to coating coffee beans with ingredients, wherein the coffee beans are brewed to extract a coffee flavor and that the reference of Lilly is directed to infusing food products with ingredients, wherein said food products are eaten.
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., the coffee beans are brewed to extract a coffee flavor) 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).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the food products infused in Lilly’s invention are meant to be eaten and that the claimed coffee beans are meant to be brewed to extract a coffee flavor, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As explained above, the rejection of claims 13-15 is based over Roider, in view of Jamroz and Jung, and further in view of Lilly. Modified Roider already explicitly teach coating coffee beans with an adaptogenic ingredient from an extract solution that is water/ethanol based, and Lilly is cited for showing the selection of the psylocibin material ingredient to be used for the coating/infusing of foods. It would have been obvious to used the claimed adaptogenic ingredients of instant claims 13-15 as shown by Lilly, particularly since modified Roider in view of Kim already teach using adaptogenic ingredients from mushrooms for spraying/coating into coffee beans, but simply did not mentioned the specific claimed genus or type of mushroom of instant claims 13-14, comprising the micronutrients of instant claim 15, which Lilly teach.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bang [KR 20200144923 A].
Bang teach a method for processing coffee [Title]. The method includes treating coffee beans with an alcohol solution [p.3, par.9], wherein the alcohol may be any kind of alcohol including ethanol [p.3, par.2], and further adding ingredients including mushrooms [p.3, par.9], wherein said mushrooms include cordyceps mushrooms and reishi mushrooms [p.5, par.2].
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) wi