DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, claim 1 recites “an industrial grinder with a set precision grinder setting of between 700 and 880 particle density”. It is noted that the specification recites that “particle density” refers to the size of the ground coffee particles. Since MPEP 2111.01.IV recites “The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess.” and because Applicant defines “particle density” in paragraph [0016] of the specification as the size of the ground coffee particles it is noted that particle density has been interpreted as referring to the particle size. Since the claims and the specification give no units of size, it is unclear what sizes are encompassed by “a set precision grinder setting of between 700 and 880 particle density”. Since the metes and bounds of the claim cannot be reasonably ascertained, in light of this 112b issue, a prior art rejection of the claim has not been made at this time, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims (MPEP 2173.06.II).
Regarding claim 1, claim 1 in line 7 recites “the cannabinoid”. It is unclear if this is referring to the cannabinoid oil or something else.
Regarding claim 1, claim 1 recites “the cannabinoid powder from step (iii)” in line 8. There is insufficient antecedent basis for this limitation in the claim. It is noted that no cannabinoid powder is recited in step (iii) and the claim does not specify that a cannabinoid powder is obtained in step (iii).
Regarding claim 1, the term “low friction” in claim 1, line 9 is a relative term which renders the claim indefinite. The term “low friction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 2, since claim 2 is the cannabinoid coffee mixture prepared by the method of claim 1 and therefore requires ground coffee which has been prepared by grinding roasted coffee beans using an industrial grinder with a set precision grinder setting of between 700 and 880 particle density, the metes and bounds of claim 2 also cannot be reasonably ascertained for the reasons given above as for claim 1 and for the same reasons given above as for claim 1, a prior art rejection has of claim 2 has not been made at this time “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.” (MPEP 2173.06.II).
Regarding claim 3, claim 3 recites “an industrial grinder with a set precision grinder setting of between 700 and 880 particle density”. It is noted that the specification recites that “particle density” refers to the size of the ground coffee particles. Since MPEP 2111.01.IV recites “The only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as their own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. To act as their own lexicographer, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess.” and because Applicant defines “particle density” in paragraph [0016] of the specification as the size of the ground coffee particles it is noted that particle density has been interpreted as referring to the particle size. Since the claims and the specification give no units of size, it is unclear what sizes are encompassed by “a set precision grinder setting of between 700 and 880 particle density”. Since the metes and bounds of the claim cannot be reasonably ascertained, in light of this 112b issue, a prior art rejection of the claim has not been made at this time, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims (MPEP 2173.06.II).
Regarding claim 3, claim 3 in line 8 recites “the cannabinoid”. It is unclear if this is referring to the cannabinoid oil or something else.
Regarding claim 3, claim 3 recites “the cannabinoid powder from step (iii)” in line 9. There is insufficient antecedent basis for this limitation in the claim. It is noted that no cannabinoid powder is recited in step (iii) and the claim does not specify that a cannabinoid powder is obtained in step (iii).
Regarding claim 3, the term “low friction” in claim 3, line 10 is a relative term which renders the claim indefinite. The term “low friction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 4, since claim 4 is a K-Cup or Nespresso capsule prepared by the method of claim 3 and therefore requires ground coffee which has been prepared by grinding roasted coffee beans using an industrial grinder with a set precision grinder setting of between 700 and 880 particle density, the metes and bounds of claim 4 also cannot be reasonably ascertained for the reasons given above as for claim 3 and for the same reasons given above as for claim 3, a prior art rejection has of claim 4 has not been made at this time “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.” (MPEP 2173.06.II).
Regarding claim 5, claim 5 recites “an industrial grinder with a set precision grinder setting of between 700 and 880 particle density”. Claim 5 is rejected under 112b for the same reasons given above as for claim 1. A prior art rejection has not been made at this time for the same reasons given above as for claim 1.
Regarding claim 5, claim 5 in line 7 recites “the cannabinoid”. It is unclear if this is referring to the cannabinoid oil or something else.
Regarding claim 5, claim 5 recites “the cannabinoid powder from step (iii)” in line 8. There is insufficient antecedent basis for this limitation in the claim. It is noted that no cannabinoid powder is recited in step (iii) and the claim does not specify that a cannabinoid powder is obtained in step (iii).
Regarding claim 5, the term “low friction” in claim 5, line 9 is a relative term which renders the claim indefinite. The term “low friction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 5, claim 5 recites “the K-Cup or Nespresso compatible capsule” in line 11. There is insufficient antecedent basis for this limitation in the claim. It is noted that line 10 recites “K-Cups or Nespresso capsules”. It is unclear if “the K-Cup or Nespresso compatible capsule” is the same as or different from “K-Cups or Nespresso capsules”.
Regarding claim 11, claim 11 recites “an industrial grinder with a set precision grinder setting of between 700 and 880 particle density”. Claim 11 is rejected under 112b for the same reasons given above as for claim 1. A prior art rejection has not been made at this time for the same reasons given above as for claim 1.
Regarding claim 11, claim 11 in line 7 recites “the CBD”. It is unclear if this is referring to the CBD oil or something else.
Regarding claim 11, the term “low friction” in claim 11, lines 9-10 is a relative term which renders the claim indefinite. The term “low friction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 6-10 and 12-17 are rejected by virtue of their dependence on a rejected base claim.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Glatzel US 2016/0324776 in view of Paredes et al. US 2021/0267907.
Regarding claim 6, it is first noted that claim 6 is a product by process claim and “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.” (MPEP 2113).
In this case the product obtained by the method of claim 6 is a brewed coffee prepared by brewing a mixture of cannabinoid oil, acacia fiber blend and ground coffee.
Regarding claim 6, Glatzel discloses a cannabinoid infused coffee obtained by brewing cannabinoid oil, acacia fiber (gum Arabic) and ground coffee ([0023],[0059]-[0062]). It is noted that Glatzel generically teaches adding cannabinoid contents to ground coffee prior to brewing for forming a brewed coffee ([0023]).
Claim 6 differs from Glaztel in the recitation that the acacia fiber is an acacia fiber blend.
Paredes discloses forming a cannabinoid powder for inclusion into food products such as beverages ([0021]) includes suspending cannabinoid oil in water allowing the cannabinoid molecules to form nanoparticles ([0017]) and adding acacia fiber blend to the cannabinoid oil in water suspension to encapsulate the cannabinoid ([0018], [0030]) and then drying to obtain the cannabinoid powder ([0019]). Paredes discloses that the obtained powder has increased bioavailability of the cannabinoid composition ([0021]). It would have been obvious to one of ordinary skill in the art to substitute the cannabinoid oil and acacia fiber of Glatzel with the cannabinoid oil and acacia fiber blend as taught by Paredes in order to provide increased bioavailability of the cannabinoid composition.
Claims 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Glatzel US 2016/0324776 in view of Open Book Extracts.
Regarding claim 12, it is first noted that claim 12 is a product by process claim and “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (MPEP 2113). “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product.” (MPEP 2113).
In this case the product claim 12 is a CBD infused brewed coffee prepared by brewing broad spectrum CBD oil, acacia fiber blend and ground coffee.
Regarding claim 12, Glatzel discloses a cannabinoid infused coffee obtained by brewing cannabinoid oil, acacia fiber (gum Arabic) and ground coffee ([0023],[0059]-[0062]). It is noted that Glatzel generically teaches adding cannabinoid contents to ground coffee prior to brewing for forming a brewed coffee ([0023]).
Claim 12 differs from Glaztel in the recitation that the cannabinoid oil is specifically broad spectrum CBD oil and that the acacia fiber is an acacia fiber blend.
Open Books Extracts discloses a CBD powder for inclusion into beverages, the powder is formed utilizing a broad spectrum CBD oil and acacia fiber blend. Open Books Extracts discloses that the composition is readily dispersible in liquid (Pg. 11).
Since Glatzel teaches that cannabinoid contents can be added to ground coffee for brewing and Open Books Extracts teaches known cannabinoid content for inclusion in beverages, it would have been obvious to one of ordinary skill in the art to substitute the cannabinoid oil and acacia fiber of Glatzel with the CBD powder taught by Open Book Extracts, it has been held that “Simple substitution of one known element for another to obtain predictable results” (MPEP 2143.I.B) supports a conclusion of obviousness and “Combining prior art elements according to known methods to yield predictable results” (MPEP 2143.I.A) supports a conclusion of obviousness. Additionally, the selection of a known material based on its suitability for its intended use supports a conclusion of obviousness (MPEP 2144.07).
Regarding claim 13, Modified Glatzel discloses that 10 mg -100 mg of cannabinoid can be provided in a drink (‘776, [0056],[0062]), therefore it would have been obvious to one of ordinary skill in art the ensure that the obtained brewed coffee contains 10 mg to 25 mg CBD.
Regarding claim 14, Modified Glatzel discloses that 10 mg -100 mg of cannabinoid can be provided in a drink (‘776, [0056], [0062]), therefore it would have been obvious to one of ordinary skill in art the ensure that the obtained brewed coffee contains 10 mg CBD.
Regarding claim 15, Modified Glatzel discloses that 10mg -100mg of cannabinoid can be provided in a drink (‘776, [0056], [0062]), therefore it would have been obvious to one of ordinary skill in art the ensure that the obtained brewed coffee contains 15 mg CBD.
Regarding claim 16, Modified Glatzel discloses that 10 mg -100 mg of cannabinoid can be provided in a drink (‘776, [0056], [0062]), therefore it would have been obvious to one of ordinary skill in art the ensure that the obtained brewed coffee contains 20 mg CBD.
Regarding claim 17, Modified Glatzel discloses that 10 mg -100 mg of cannabinoid can be provided in a drink (‘776, [0056], [0062]), therefore it would have been obvious to one of ordinary skill in art the ensure that the obtained brewed coffee contains 25 mg CBD.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Anugu US 2022/0160008 discloses that dry ingredients can be blended together by dry blending and that dry blending refers to mechanically mixing a plurality of substances to form a product that is referred to as a dry blend. Methods for creating dry blends are well-known to persons of ordinary skill in the art and include, but are not limited to, using a conventional paddle blender, a ribbon blender, or a twin-shell V blender for a sufficient amount of time to mix the components, e.g., ten minutes to two hours or fifteen minutes to one hour at e.g., 50-200 rpm or 50-100 rpm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY AXTELL whose telephone number is (571)270-0316. The examiner can normally be reached M-F 9:00- 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ERIK KASHNIKOW can be reached at 571-270-3475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.A/
Ashley AxtellExaminer, Art Unit 1792
/ERIK KASHNIKOW/Supervisory Patent Examiner, Art Unit 1792