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 12/09/25 has been entered. Applicant amendments have overcome the objections to the Abstract, Specification and Claims 6-7, 9-10 and 14-15, as well as the rejections of Claims 9 and 13-15 under 35 U.S.C. 112(b) as set forth in the last Office Action mailed on 09/26/25. Claims 1-3, and 5-18 are pending. Claim 1 has been amended to require the “reverse osmosis following by forward osmosis”, and claim 13 now requires the options of “the amounts in mg/kg being all relative to a total mass of soluble coffee solids of the coffee composition“. Claim 4 has been deleted and claims 16-18 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) 1-3, 5, 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kiefl et al. [US 20210378275 A1], hereinafter Kiefl, in view of Borland et al. [US 20170000153 A1], hereinafter Borland, evidenced by Hashimoto et al. [WO 2021054406 A1], hereinafter Hashimoto.
Regarding claim 1, Kiefl teaches a process for producing a coffee composition, the process comprising concentrating a coffee extract [Kiefl, 0029-0031] via reverse osmosis [Kiefl, 0037-0038; 0068, 0071] following by forward osmosis [Kiefl, 0072], (since the aqueous starting solution provided in the first step of the process can be concentrated in an upstream (the beginning of the process) step by reverse osmosis, and then the obtained concentrate by the osmosis (reverse osmosis) can be further concentrated in a downstream (the end or final stages of the process) step by forward osmosis, [Kiefl, 0071-0072]) to produce a liquid concentrate [Kiefl, 0073]. Wherein the process further comprises drying (freeze-drying) the liquid concentrate to produce a soluble powder [Kiefl, 0063], (as disclosed in [0031] of the instant Specification, “Suitable processes for drying the concentrate to produce a soluble powder are known in the art, includes freeze-drying”).
Kiefl teach the extract concentration process by osmosis can retain small flavor molecules such as simple sugars (i.e., monosaccharides) in organic material liquid extracts such as tea extracts [Kiefl, 0075], however Kiefl is silent regarding specifically a coffee extract comprising one or more monosaccharides in an amount greater than or equal to 18 wt% based on the dry weight of the coffee extract.
Borland teach a liquid coffee with improved aroma [Borland, Abstract], wherein the liquid coffee may be a liquid coffee concentrate [Borland, 0005], comprising monosaccharides (i.e., galactose, glucose, and fructose, as disclosed on paragraph [0010], pages 3-4, of the instant Specification), in amounts of from 1wt% to 20wt% [Borland, 0013, claim 8]. Wherein the process further comprises drying the liquid concentrate to produce a soluble powder [Borland, 0022].
Moreover, Hashimoto disclose methods of concentrating raw material solutions [Hashimoto, Abstract], wherein raw material liquids include food solutions or dispersions [Hashimoto, p.14, par.5], wherein known methods for concentration known includes reverse osmosis [Hashimoto, p.2, par.5], and forward osmosis [Hashimoto, p.2, par.6], and wherein useful substances that can be obtained in the concentrated raw material liquid includes sugars [Hashimoto, p.14, par.6], wherein the sugars include monosaccharides [Hashimoto, p.15, par.8], wherein the monosaccharides include glucose, fructose, galactose, and mannose [Hashimoto, p.15, par.9], as disclosed on paragraph [0010], pages 3-4, of the instant Specification.
Further, while Kiefl in view of Borland does not specifically teach the wt% is based on the dry weight of the coffee extract, one of ordinary skill in the art would recognize that a coffee extract composition in powder or dried form having an amount of monosaccharide in the range of 1-20 wt% would be based on the dry weight of the coffee extract since Kiefl and Borland teach during the concentrated coffee liquid extract, with Kiefl explicitly teaching drying via freeze-drying [Kiefl, 0063] as disclosed by Applicant in [0031] of the instant Specification.
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 one or more monosaccharides in an amount greater than or equal to 18 wt% based on the dry weight of the coffee extract as taught by Borland, into the invention of Kiefl, since both are directed to methods of making coffee extract concentrates, and since monosaccharides would be naturally present in a coffee extract, which would provide said coffee extract with an amount greater than or equal to 18 wt% based on the dry weight of the coffee extract of Kiefl, in view of Borland since both produce a dried soluble powder after the concentration of the extract containing said monosaccharides. Further Kiefl already teach the extract concentration process by osmosis of his invention can retain small flavor molecules including simple sugars (i.e., monosaccharides) in organic material liquid extracts such as tea extracts [Kiefl, 0075], but simply did not specifically mention monosaccharides in a coffee extract concentrate. Borland explicitly teaches a liquid coffee concentrate [Borland, 0005], comprising monosaccharides in the claimed amounts [Borland, 0013, claim 8], and Hashimoto evidence that concentrating raw material solutions via osmosis [Hashimoto, p.2, par.5; p.2, par.6], useful substances such as sugars [Hashimoto, p.14, par.6], particularly the monosaccharides [Hashimoto, p.15, par.8] glucose, fructose, galactose, and mannose may be obtained [Hashimoto, p.15, par.9]. Therefore by Kiefl also disclosing that the concentration via osmosis process of the invention would aid in the retention of valuable aroma and flavor substances (referred as useful substances by Hashimoto) in the coffee extracts [Kiefl, 0063], the claimed amount of monosaccharides would have been obvious to one having ordinary skill in the art based on normal experimentation and optimization in the method of Kiefl in view of Borland, due to factors such as the type and quantities of the various ingredients, the variety type of coffee being used (i.e., Arabica, Robusta, Liberica, etc.), coffee origin and/or location in which is grown (i.e., low altitude, high altitude), the desired final taste of the coffee product, and/or the desired degree of sweetness in the final coffee extract.
Regarding claims 2-3, Kiefl teach the forward osmosis [Kiefl, 0037, 0063] is conducted at a temperature greater than 15°C (10-40°C) [Kiefl, 0066], and further comprising drying (freeze-drying) the liquid concentrate to produce a soluble powder [Kiefl, 0063], as explained above in claim 1 rejection.
Regarding claim 5, Kiefl teach the forward osmosis is conducted using a draw solution (osmosis solution) [Kiefl, 0041, 0044] comprising at least one of magnesium chloride, sodium chloride, potassium citrate, or some combination thereof [Kiefl, 0045].
Regarding claims 16-18, Kiefl teach the liquid concentration via osmosis process discussed above in claim 1 rejection, and further teach and aqueous tea extract concentrated via the osmosis process of the invention, wherein flavor molecules such as simple sugars (i.e., monosaccharides), quinic acid and gallic acid remain in the retentate and are not lost as in adsorptive process and caffeine was completely retrieved in the concentrate with >99% (extraction yield greater than 99 wt%) [Kiefl, 0075], (as disclosed on [0008] of the instant Specification, “"extraction yield" refers to the wt.% of soluble coffee solids (or soluble tea solids in this case) extracted from the roast and ground coffee” (extracted from the tea material in this case) and “"Soluble coffee solids" (soluble tea solids) refers to all solids contained within the coffee matrix (tea matrix) that are extractable with water. This includes, but is not limited to, carbohydrates, proteins, coffee alkaloids (e.g., caffeine), trigonelline, organic acids (e.g. citric, malic, acetic, and quinic acids), chlorogenic acids and their derivatives, inorganic acids, and salts.”).
However, Kiefl does not explicitly teach a coffee extract having an extraction yield greater than 30 wt%, or an extraction yield from 30 to 45 wt%, or an extraction yield greater than 45 wt%, as required by claims 16-18.
Modified Kiefl in view of Borland teach the coffee composition concentrated via osmosis discussed above in claim 1 rejection, wherein the coffee composition is a soluble coffee extracted product [Borland, 0003, 0016, 0021-0022, 0031, 0033] having an extraction yield greater than 30 wt%, [Borland, 0005]. It is noted that paragraph 0005 of Borland is relied upon for teaching the soluble coffee solids (extraction yield) in coffee extracts comprise between 0.1-60 wt%, and because Kiefl teaches producing flavor concentrates by osmosis (reverse followed by forward osmosis) [Kiefl, Title, 0071-0072] of aqueous starting solutions including aqueous coffee extracts [Kiefl, 0031, 0063, 0124], and Borland teaches that coffee extracts (also referred to as a liquid coffee beverage by Borland [Borland, 0015], wherein said coffee extracts or liquid coffee extracts may also be liquid coffee concentrates (which are liquid coffee extracts) [Borland, 0005]) are known for having a soluble coffee solids in amounts of from 0.1-60 wt%, it would have been obvious to modify Kiefl to use known soluble coffee solids extracts or extraction yields as taught by Borland for further concentration in the method of Kiefl.
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 extraction yield greater than 30 wt% of the coffee extract into the invention of Kiefl, in view of Borland, because Borland teach that the coffee product obtained by the method would provide a coffee comprising a wide concentration range in the amount of coffee dissolved solids such as from 0.1 wt% to 60 wt%, which in turn would provide for a coffee product comprising desirable coffee aroma from volatile aroma compounds providing a perception of coffee aroma desired by consumers [Borland, 0004-0006].
Claim(s) 6-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kiefl, in view of Borland as applied to claim 1 above, and further in view of Kawasaki [JP 2006020526 A], hereinafter Kawasaki, evidenced by PubChem, ChemSpider (for compounds nomenclature), and Elsby et al. [WO 2020212145 A1], hereinafter Elsby (for the limitation of mg/kg based on the total mass of soluble coffee solids of claim 13).
Regarding claims 6, 11-12, modified Kiefl in view of Borland teach the coffee composition concentrated via osmosis discussed above in claim 1 rejection, wherein the coffee composition comprises furfuryl alcohol; pyridine [Borland, 0004, 0008-0009]; and the one or more monosaccharides, wherein a total sum of the concentrations of the one or more monosaccharides is greater than or equal to 18 wt% [Borland, 0013, claim 8].
Modified Kiefl are silent regarding the composition comprising a ratio of concentrations of the furfuryl alcohol to the pyridine greater than or equal to 30 as required by claim 6.
Kawasaki teach coffee flavor compositions and method of making thereof [Kawasaki, Title, Abstract]. The composition of Kawasaki may comprise furans (E) and nitrogen-containing compounds (J) [Kawasaki, Abstract], wherein the furans include 2-furfuryl alcohol (equivalent to furfuryl alcohol, see p.9 PubChem) [Kawasaki, 0021], and the nitrogen-containing compounds include pyridine [Kawasaki, 0026, 0028], and wherein the blending ratio of the flavor components (furfuryl alcohol and pyridine) may be 0-100wt% of furans (furfuryl alcohol) and 0-100wt% of nitrogen-containing compound (pyridine), and wherein the ratio of concentration of the furan (furfuryl alcohol):nitrogen-containing compound (pyridine) in the composition may be from 0-50wt% of furfuryl alcohol and 0-30wt% of pyridine [Kawasaki, 0016]. While Kawasaki does not explicitly recite a ratio of the furfuryl alcohol to the pyridine is greater than or equal to 30 specifically, one of ordinary skill in the art would recognize that a composition having said furfuryl alcohol to pyridine claimed ratio of ≥30 is possible (i.e., 50:1 furfuryl alcohol:pyridine) based on Kawasaki’s teachings, particularly since Kawasaki teach higher upper limit concentration for furfuryl alcohol (up to 50wt%) and lower upper limit concentration for pyridine (up to 30wt%). Particularly since modified Kiefl in view of Borland already express interest in modulation of the coffee composition by selecting a desired or predetermined ratio [Borland, 0004, 0008-0009, 0016, claim 1] of high volatile and low volatile aroma compounds, wherein the aroma compounds include furfuryl alcohol and pyridine [Borland, 0004, 0009].
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 ratio of concentrations of the furfuryl alcohol to the pyridine into the invention of modified Kiefl, in view of Kawasaki, since both are directed to methods of making coffee extract concentrates and/or coffee compositions, since modified Kiefl in view of Borland already express interest in modulation of the coffee composition by selecting a desired or predetermined ratio of high volatile and low volatile aroma compounds, wherein the aroma compounds include furfuryl alcohol and pyridine, but simply did not selected the specific compounds of furfuryl alcohol and pyridine to produce the claimed furfuryl alcohol to the pyridine ratio, and since the claimed ratio of concentrations would have been used during the course of normal experimentation and optimization in the method of modified Kiefl, in view of Kawasaki, due to factors such as the type and quantities of the various ingredients, the desired final taste of the coffee product, and/or the desired degree of sweetness, sourness, or roasted flavor. Doing so would provide coffee compositions characterized by having highly palatable aroma/flavor, such as roasted, sweet, sour taste, that are specific to coffee [Kawasaki, 0015].
Regarding differences in concentration, 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).
Regarding claims 7-10, modified Kiefl teach the method and concepts for making a coffee composition as discussed above in claim 6, and modified Kiefl in view of Borland teach the coffee composition further comprises 2-ethyl-6-methylpyrazine, 2-ethyl-5-methylpyrazine, 2,3,5-trimethylpyrazine (also known as trimethylpyrazine, see p.1 PubChem, “trimethylpyrazine”), 2-ethyl-3,6-dimethylpyrazine, 2-ethyl-3,5-dimethylpyrazine, and 2,3-diethyl-5-methylpyrazine [Borland, 0004, 0008-0009] required in claim 7, and 2,3-butanedione [Borland, Tables 2-4] required in claim 10, but is silent regarding the composition comprising 2-ethyl-3-methylpyrazine, and wherein the sum of the absolute content of 2-ethyl-6-methylpyrazine, 2-ethyl-5- methylpyrazine, 2-ethyl-3-methylpyrazine, 2,3,5-trimethylpyrazine, 2-ethyl-3,6- dimethylpyrazine, 2-ethyl-3,5-dimethylpyrazine, and 2,3-diethyl-5-methylpyrazine is greater than or equal to 50.0 mg/kg of soluble coffee solids of the coffee composition, as required by claim 7, wherein the absolute content of the furfuryl alcohol of the coffee composition is greater than or equal to 2,000 mg/kg of soluble coffee solids of the coffee composition, as required by claim 8, wherein the coffee composition further comprises one or more compounds selected from the group consisting of 2-acetylthiazole, 2-acetylpyrazine, and 2-acetylpyridine, wherein a sum of an absolute content of the one or more compounds, is greater than or equal to 2.70 mg/kg of soluble coffee solids of the coffee composition, as required by claim 9, wherein the coffee composition further comprises a ratio of concentrations of furfuryl alcohol to 2,3-butanedione greater than or equal to 30, as required by claim 10.
For claim 7, Kawasaki teach the coffee composition discussed above in claim 6, and further teach the composition may further comprise pyrazines (J-1) such as 2-ethyl-6-methylpyrazine, 2-ethyl-5-methylpyrazine, 2-ethyl-3-methylpyrazine, 2,3,5- trimethylpyrazine, 2,5-dimethyl-3-ethylpyrazine (equivalent to 2-ethyl-3,6-dimethylpyrazine, see p.2 ChemSpider), 2,6-dimethyl-3-ethylpyrazine (equivalent to 2-ethyl-3,5-dimethylpyrazine, see p.10 PubChem), and 2,3 -diethyl- 5-methylpyrazine [Kawasaki, 0027], in amounts of 0-100% (0-1000mg/g or 0-1000000mg/kg) by mass of pyrazines (equivalent to the sum of the absolute content of the claimed pyrazines is ≥50.0mg/kg) [Kawasaki, 0016].
For claim 8, Kawasaki teach the composition may further comprise an absolute content of furfuryl alcohol (furans) from 0-100% (0-1000000mg/kg) by mass of furfuryl alcohol [Kawasaki, 0016].
For claim 9, Kawasaki teach the composition may further comprise sulfur-containing compounds (K) such as thiazoles (K-2) [Kawasaki, 0031], including 2-acetylthiazole [Kawasaki, 0069], and the sum of the absolute content of 2-acetylthiazole may be from 0-100% (0-1000000mg/kg) by mass of 2-acetylthiazole [Kawasaki, 0016].
For claim 10, Kawasaki teach the composition may further comprise ketones (D) such as 2,3-butanedione [Kawasaki, 0020], and wherein the ratio of concentration of the furan (furfuryl alcohol):ketones (2,3-butanedione) in the composition may be from 0-50wt% of furfuryl alcohol and 0-50wt% of 2,3-butanedione [Kawasaki, 0016]. While Kawasaki does not explicitly recite a ratio of the furfuryl alcohol to the 2,3-butanedione is greater than or equal to 30 specifically, one of ordinary skill in the art would recognize that a composition having said furfuryl alcohol to 2,3-butanedione claimed ratio of ≥30 is possible (i.e., 50:1 furfuryl alcohol: 2,3-butanedione) based on Kawasaki’s teachings.
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 compounds, sum of absolute content of said compounds respectively, and the ratio of concentrations of the furfuryl alcohol to the 2,3-butanedione into the invention of modified Kiefl, in view of Kawasaki, since both are directed to methods of making coffee extract concentrates and/or coffee compositions, since Borland already teach most of these compounds including those being claimed are present in coffee as aroma compounds [Borland, 0008, Tables 2-4], and since the claimed compounds, sum of absolute content of compounds, and ratio of concentrations would have been used during the course of normal experimentation and optimization in the method of modified Kiefl, in view of Kawasaki, due to factors such as the type and quantities of the various ingredients, the type of coffee bean used (i.e., Robusta, Arabica), the region, country and/or altitude in which the coffee bean is grown, the desired final taste of the processed coffee product, and/or the desired degree of sweetness, sourness, or roasted flavor in the final product. Doing so would provide coffee compositions characterized by having highly palatable aroma/flavor, such as roasted, sweet, sour taste, that are specific to coffee [Kawasaki, 0015].
Regarding differences in concentration, 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).
Regarding claim 13, Kiefl in view of Borland teach the coffee composition comprising one or more monosaccharides in an amount greater than or equal to 18wt% (see claim 1 rejection above), and modified Kiefl in view of Kawasaki teach the coffee composition comprising one or more alkylpyrazines such as 2-ethyl-6-methylpyrazine (as disclosed on paragraph [0017] of the instant Specification), having an absolute content ≥50.0mg/kg (see claim 7 rejection above). Moreover, in regards to the new limitation of the alkylpyrazines such as 2-ethyl-6-methylpyrazine (volatile aroma compound in coffee) amount concentration being specifically mg/kg relative to a total mass of soluble coffee solids of the coffee composition, Kiefl in view of Borland teach the coffee composition concentrated via osmosis comprising the claimed aroma compounds, and Kiefl in view of Borland and further in view of Kawasaki teach the coffee composition comprising the volatile compounds specifically in amounts of mg/kg as discussed above, and the evidentiary reference of Elsby disclose that coffee compositions comprising these volatile aroma compounds are aroma key markers (i.e., directly correlated) where their absolute content is measured/determined as mg/kg relative to the total mass of soluble coffee solids of the coffee composition [Elsby, p.19, l.1-10, l.15-16], which reads on the claim limitation.
Regarding claim 14, see modified Kiefl in view of Borland, further in view of Kawasaki, discussion of claim 6 rejection above.
Regarding claim 15, see modified Kiefl in view of Borland, further in view of Kawasaki, discussion of claim 10 rejection above.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, and 5-15 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 rejection has been modified in accord with the amendments, particularly claim 1 which currently requires the reverse osmosis step to be immediately or being directly followed by the step of forward osmosis, compared to the reverse osmosis being required to be performed prior (at any time before) forward osmosis as presented in previous claim 4 (currently canceled claim 4).
Conclusion
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.
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/L.E.D./Examiner, Art Unit 1792
/VIREN A THAKUR/Primary Examiner, Art Unit 1792