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 .
Information Disclosure Statement
The listing of references in the specification (paragraph 47) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Ben-Nasr et al. (US 5,089,280), hereon referred to as “Ben”, in view of Klein (US 1,742,261), Hiroki (WO 2008/029578 A1), and Park (US 2016/0324179 A1). Becker et al. (US 5,019,413) is relied on as evidence. Citations to Horki are made with respect to the EPO translation provided with this Office Action.
Regarding claim 21, Ben teaches a method for treatment of green coffee beans for roasting (figure 1; abstract), necessarily post-harvest, comprising providing a predetermined volume of green coffee beans in tank 7 (column 4 lines 19-20), construed to be “germination chambers”, where the beans are immersed in tank 7 with a first liquid bath to define a first hydrated medium (column 4 lines 28-30), compressing, decompressing, and draining the first hydrated medium into tank 8 (column 4 lines 33-39), washing with water (column 4 lines 44-48), and removing the washing water (column 4 lines 58-60). The process of compressing, decompressing, and washing can be “repeated several times” (column 4 lines 64-65). Therefore, the beans would have been subjected to respective second and third liquid baths to define second and third hydrated mediums, and obtain respective second and third hydrated bean populations as claimed. The beans are then subjected to further processes such as centrifuging, drying, and roasting (column 3 lines 58-60).
Ben does not teach decanting the third hydrated bean population to a layer of substantially uniform thickness to facilitate a uniform exothermic reaction during an activation phase while maintaining specified environmental parameters, activating the decanted beans for a period of time, said period of time determined based on detection of uniform exothermic reaction, mass core temperature reaching 37oC, or a pre-determined period of time. The limitation “uniform exothermic reaction during an activation phase” is construed to be a germination process as disclosed by the specification (paragraph 9), and “maintaining specified environmental parameters” is interpreted to refer to any desired environmental parameter (e.g., temperature, humidity, pressure, etc.) The claim recites alternatives. For the sake of examination, the alternative “pre-determined period of time” is chosen.
Klein teaches a process of treating coffee comprising spreading the coffee on a suitable surface to a desired thickness and germinating (page 2 lines 89-91), construed to be synonymous with “decanting…to a layer of substantially uniform thickness”.
Hiroki teaches a method of germinating coffee beans to alter the composition thereof, resulting in a coffee that is easy to drink, has good aroma, has a desirable balance of amino acids, and is more easily absorbed by humans (paragraphs 2 and 8-9), comprising soaking green coffee beans such that the beans absorb water then draining (paragraph 17), followed by maintaining a constant temperature for 2-24 hours i.e., a “pre-determined period of time” to germinate the coffee beans (paragraph 19), and then drying (paragraph 21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to decant the third hydrated bean population into a substantially uniform thickness and “activating” for a pre-determined period of time since the prior art recognizes the process for treating green coffee beans, to ensure uniform temperature distribution during germination, thereby minimizing germination inconsistency within the batch, and to provide the same advantages taught by Hiroki.
Ben does not teach removing moisture from the decanted beans to achieve a target internal residual moisture content associated with the target species. The limitation “residual moisture content associated with the target species” is interpreted to be from about 10% to about 12% moisture by weight as disclosed by the specification (paragraph 48).
Park teaches a method for pretreating green coffee beans before roasting (abstract), comprising washing the beans with water and absorbing the water into said beans (paragraph 53), placing the beans into an aluminum tray such that they are “well spread” (paragraph 55), construed to be synonymous with “decanting…to a layer of substantially uniform thickness”, and drying to a moisture content of about 10-12 wt% (paragraph 55).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to remove moisture to about 10-12 wt% since the prior art recognizes doing so when drying green coffee beans, since one of ordinary skill would have understood that a “substantially uniform thickness” of materials to be dried obtains advantages such as increased surface area to volume ratio for drying rate and uniformity of drying throughout the entire batch, since there is no evidence of criticality or unexpected results associated with the claimed features, and since the claimed values would have been used during routine experimentation and optimization procedures due to recognized factors such as coffee type and desired roasting characteristics.
Regarding the coffee beans being “of a target species” and removing moisture to achieve “a target internal residual moisture content associated with the target species”, Ben teaches the moisture content can be increased based on caffeine content i.e., a moisture content of about 40 wt% for a caffeine content of 1.04 wt% as stated for examples I and II, and a moisture content of about 45 wt% for a caffeine content of 1.26 wt% as stated for claim III (columns 6-7). Becker et al. is relied on as evidence to show that different types of coffee are recognized to have different caffeine contents (column 1 lines 10-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to use a target species of beans and to removing moisture to achieve an internal residual moisture content associated with the target species since different species of coffee having differing properties are known in the art (e.g., arabica, robusta, liberica, etc.), and therefore to provide optimal conditions for caffeine removal as taught by Ben and quality enhancement as taught by Hiroki.
Regarding claim 22, Park teaches drying to a moisture content of about 10-12 wt% as stated for claim 21, and modification would have been obvious for the same reasons.
Regarding claim 23, Ben teaches the water (moisture) content of the green coffee beans introduced into the system is about 8-11 wt% (column 4 lines 14-15), and is increased to 35-50 wt% (column 4 line 17), at which point the beans are compressed and decompressed such that the beans absorb the working fluid as stated for claim 21. The process is isobaric and isothermal, and therefore “prevents any change in the water content of the green coffee beans…during the decaffeination process” (column 5 lines 55-59). Therefore, the process of Ben would have absorbed the first hydrated medium to the same moisture content at which they enter the system.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben such that the coffee beans absorb the first hydrated medium to the claimed range since the reference teaches an overlapping range, since there is no evidence of criticality or unexpected results associated with the claimed features, and since the claimed values would have been used during routine experimentation and optimization procedures due to factors such as the moisture content of the green coffee beans fed into the chamber, the working conditions within the chamber (e.g., pressure, temperature, and working fluid composition), and degree/rate of caffeine extraction from the beans.
Regarding claims 24-26, Ben teaches moisture content can be increased based on caffeine content i.e., a moisture content of about 40 wt% for a caffeine content of 1.04 wt% as stated for examples I and II, and a moisture content of about 45 wt% for a caffeine content of 1.26 wt% as stated for claim III (columns 6-7). Becker et al. is relied on as evidence to show that different types of coffee are recognized to have different caffeine contents (column 1 lines 10-18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben such that the beans absorb the first hydrated medium to the respective moisture contents for each coffee type since the prior art recognizes the trend of increasing moisture content based on caffeine content (and therefore caffeine to be removed), since one of ordinary skill would have reasonably expected increase extraction fluid within the bean to facilitate removal of increased amounts of caffeine, where the prior art recognizes different coffee types have different caffeine levels, since there is no evidence of criticality or unexpected results associated with the claimed features, and since the claimed values would have been used during routine experimentation and optimization procedures due to factors such as coffee type and caffeine content.
Regarding claims 27-30, Ben teaches increasing the moisture content of the green coffee beans to 35-50 wt% as stated for claim 21, and the modification applied to claims 24-26 renders obvious varying moisture content based on coffee type. It would have been obvious to absorb the claimed amounts of second hydration medium for the same reasons stated for claims 24-26.
Regarding claims 31-33, modification to absorb the claimed amounts of third hydration medium would have been obvious for the same reasons stated for claims 24-26.
Regarding claim 34, Ben teaches the operating fluid is a mixture of water and supercritical fluid (column 4 lines 28-30), which reads on “immersing said beans in a water bath”.
Regarding claims 35-36, Ben teaches washing water is filtered into decaffeination installation 19 to recover caffeine (column 4 lines 58-63), and the aqueous solutions used to remove caffeine from the beans is subjected to separate recovery of caffeine (column 5 lines 5-10). The recovery can be performed by activated carbon (charcoal) filter 63 (column5 lines 46-48).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to pass the water bath through a charcoal filter in order to similarly regenerate the working fluid such that caffeine extraction is maximized, and to facilitate separation of caffeine to be used in other processes or applications.
Regarding claim 37, Ben does not teach treating the water bath with an ultraviolet light treatment.
Park teaches treating green coffee beans can include sterilizing the beans via conventional UV treatment (paragraph 59).
Ben teaches the fluids used in the water bath are regenerated (recycled) after removing caffeine therefrom (column 2 lines 26-28; column 3 lines 3-5 and 19-20; column 5 lines 46-51).
It would have been to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to treat the water bath with ultraviolet light since the working fluid is recycled into subsequent batches of beans, where the prior art recognizes UV light sterilization can be used in processes treating green coffee beans, and therefore to similarly sterilize the caffeine containing fluid such that cross contamination between batches is reduced or eliminated.
Regarding claim 38, green coffee beans are known to be removed from cherries as taught by Park (paragraph 28), but Ben does not teach the beans having uniform density.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben such that the beans have uniform density since there is no evidence of record indicating criticality or unexpected results associated with the claimed feature, since it is known that uniformity of the beans is desirable, and in order to ensure the beans are uniformly treated for caffeine reduction.
Regarding claims 39-40, Hiroki as applied to claim 21 teaches maintaining a constant temperature for 2-24 hours to germinate the coffee beans.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the process of Ben to germinate for 10-20 hours (claim 39) and 18 hours (claim 40), for the same reasons stated for claim 21, since there is no evidence of criticality or unexpected results associated with the claimed range, and since the claimed values would have been used during routine experimentation and optimization procedures due to factors such as desired flavor, aroma, and amino acid profile as taught by Hiroki.
Response to Arguments
The objection of the title regarding “coffea” is withdrawn in view of the arguments (page 5).
The claim objections and rejection under 35 USC 112(b) are withdrawn in view of the instant amendments to the respective claims.
Applicant's arguments filed 4/1/2026 have been fully considered but they are not persuasive.
Applicant argues the present application is fundamentally different from that the of cited references since the disclosed method does not suffer from certain complications that exist within the prior art e.g., addition of unapproved adjuncts, whereas Park describes addition of certain substances to compensate for loss of flavor precursors during conventional soaking and germinating.
This is not persuasive since Park is not relied on to teach the argued features. Ben already teaches soaking green coffee beans, and does not require any of the argued substances. Park is instead relied on to show that soaked coffee beans (in general) are placed into an aluminum tray such that they are “well spread”, and dried to the moisture content disclosed by Applicant.
Applicant argues the claimed “activation” (i.e., germination) unexpectedly enhanced the nutritional value of the coffee beans by breaking down macromolecules such that they are generally more bioavailable and digestible as compared to conventional practices, and Ben teaches a fundamentally different process using carbon dioxide to extract caffeine.
The amended limitation necessitated new grounds of rejection, and the instant Office Action relies on Hiroki. The reference teaches germinating coffee beans to alter the composition thereof, resulting in a coffee that is easy to drink, has good aroma, has a desirable balance of amino acids, and is more easily absorbed by humans (paragraphs 2 and 8-9). This appears to be the same advantage of “more bioavailable and digestible” as argued by Applicant. Ben is not relied on to teach the argued feature, and is instead modified with the teachings of Hiroki to obtain decaffeinated coffee beans which are germinated to provide the same advantages.
Applicant’s argument against the dependent claims is not persuasive for the same reasons stated above.
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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/B.K/Examiner, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792
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