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 Objections
Claim 21 is objected to because of the following informalities:
Claim 21 recites percentages with commas “,”. It is suggested to replace the commas “,” with periods --.--.
Claim 21 recites “remains”. It is suggested to use the term –remainder--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 depends from claim 1 and requires the “fat is between about 15% m/m and 55% m/m”. However, claim 1 was amended to require “wherein the amount of fat is between 20% m/m and 50% m/m”. Claim 7 fails to incorporate all the limitations of claim 1 because the range cited in claim 7 is broader than that cited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
The weight percentages of claims 1, 7, and 20 are understood to be wt% of the total basic preparation and weight percentages of claims 15-17, and 21 are understood to be wt% of the total final preparation.
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.
Claim(s) 1, 5, 6, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005312319 (Hisamori).
Hisamori discloses mixing 10-50wt% roasted coffee beans and 50-90wt% edible oil at a temperature of 40C or lower and pulverizing (grinding) to a particle size of 20-40 microns in a first step and a final diameter of 10 microns or less in a second step (abstract, 0012-0015). These ranges overlap with the claimed ranges and are prima facie obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) MPEP 2144.05(I).
Claim(s) 1, and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori).
Regarding claims 1, 8, and 10, Abaurre discloses roasting coffee beans, then milling the beans to a diameter of 75-110 microns, lowering the temperature to 25-45C and blending the milled beans with cocoa butter in a mixer at a temperature of 28-45C, followed by milling the beans to a diameter of 15-30 microns. Thus, Abaurre discloses providing a fat (cocoa butter) and roasted coffee grind (milled beans), mixing (blending) the fat and roasted milled beans, milling to a particle size of 15-30microns which overlaps the claimed range of 5-25microns, and the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C. Abaurre also discloses the mixture has 40-70wt% cocoa butter which overlaps the claimed range of fat between 20-50wt%. The overlapping ranges present a prima facie case of obviousness.
Abaurre does not disclose providing a fat and whole roasted coffee beans in the mixing step followed by the grinding step. However, it would have been obvious to change the order of steps with a reasonable expectation that the finally formed product would be essentially identical and useful in the same manner. See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Moreover, mixing cocoa butter and whole coffee beans followed by grinding is known in the art as demonstrated by Rector and Hisamori. Rector discloses roasting coffee beans in an edible oil or fat and explains that by grinding the coffee in an oily medium a much finer product results than when the coffee is ground alone (col. 1, lines 25-30). Hisamori discloses mixing 10-50wt% roasted coffee beans and 50-90wt% edible oil at a temperature of 40C or lower and pulverizing (grinding) to a particle size of 20-40 microns in a first step and a final diameter of 10 microns or less in a second step. These ranges overlap with the claimed ranges and the ranges disclosed by Abuerre. It would have been obvious to modify Abuerre to grind whole coffee beans with the cocoa butter as suggested by Rector and/or Hisamori to provide a finer product with fewer steps and with a reasonable expectation of successfully providing a coffee and fat product having fine particle sizes and that the finally formed product would be essentially identical and useful in the same manner. As indicated by Hisamori, it is possible to obtain very fine particle sizes and Rector indicates the benefits of obtaining fine particle sizes when combined with a fat/oil rather than when grinding alone. Milling to a fine level at the outset would remove the need for the second milling and/or decrease the time needed to mill to the desired level.
Regarding claim 4, the ground coffee and cocoa butter is expected to have a partial solid or partial liquid form in the claimed temperature ranges since Abaurre discloses finely ground coffee and cocoa butter which are the same materials recited in the claims.
Regarding claim 5, the particle range of 15-30 microns overlaps the claimed range of 10-20 microns and therefore presents a prima facie case of obviousness.
Regarding claim 6, Abuerre discloses that the mixing temperature is kept between 28-45C which overlaps the claims range of 35-70C and therefore presents a prima facie case of obviousness.
Regarding claim 7, Abuerre discloses the fat is between 40-70wt% and the coffee grind is 30-60wt% which overlap the claimed ranges of 15-55 wt% and 1-40 wt%, respectively and are therefore obvious.
Regarding claim 9, as stated above Abaurre discloses roasting the coffee beans.
Claim(s) 11, 12, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori) as applied to claim 1 above and further in view of BR 102017015717-2 (Abaurre II).
Abaurre as modified by Rector and/or Hisamoir discloses the method of forming a cocoa butter and coffee particle mixture discussed above. Abaurre states that there are many different applications for foodstuff with coffee flavor but does not give examples.
Abaurre II discloses a method for producing an encapsulated powdered coffee liquor from finely ground roasted whole coffee beans in the range of 2-20 microns, and where the encapsulated ground coffee liquor may be used to manufacture other products (abstract).
The method of Abaurre II includes roasting green coffee beans, grinding the roasted beans reaching the range of 1-10 microns, mixing the coffee powder with vegetable oil (such as palm oil, palm kernel, coconut, cotton, sunflower, corn or soy) and storing the mass in a storage tank with a hot water jacket and mechanical stirrer at preferably 30C. Abaurre II discloses that from the coffee in instant powder encapsulated agglomerated form, it is possible to prepare a vertical line of edible products and drinks, where the flavor of the fresh roasted coffee bean is maintained. Abaurre discloses mixing the encapsulated solubilized powdered coffee liquor with other materials to form drinks [0046-0048]. For example, 4-8wt% of the powdered coffee liquor may be mixed with 4-20wt% whole or skimmed milk powder (dairy) and 20-50wt% sugar (sweetener) (Examples 5 and 6). The powdered coffee liquor may also be used for espresso blend (Example 7) and for making cappuccino-type cakes and cookies where 4-14wt% of the powdered coffee liquor is combined with 4-20wt% powdered milk, 4-8wt% starch, 4-20 wt% wheat flour and 20-50wt% sugar (Example 9). Also mousse, flan, puddings and sorbets may be prepared with 4-8wt% powdered coffee liquor, 4-20wt% powdered milk, 0.5-4wt% gum (emulsifier) and 20-50wt% sugar. Thus, Abaurre II discloses adding to the encapsulated coffee other additives depending upon the desired food product. It would have been obvious to use the encapsulated coffee of Abaurre in a similar manner disclosed by Abaurre II to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre and Abaurre II are both finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre II.
Further regarding claim 11, it would have been obvious to one of ordinary skill to homogenize the mixture of the coffee powder and other ingredients to ensure dispersion of the coffee powder flavoring and other ingredients in an even distribution. Mixing of ingredients is well known to provide an even distribution of the materials and one of ordinary skill would have found it obvious to do so.
Regarding claim 12, as discussed above, Abaurre II discloses sugar, dairy and gums (emulsifiers).
Regarding claim 15, Abaurre II discloses the sugar may be added in amounts of 20-50wt% which falls within the range claimed.
Regarding claim 16, Abaurre II discloses dairy (milk powder) in amounts including 4-20wt% falling within the claimed range.
Regarding claim 17, Abaurre II discloses gums in an amount of 0.5-4wt% which falls within the claimed range.
Claim(s) 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori) as applied to claim 1 above and further in view of EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024).
Abaurre discloses the method of encapsulating coffee grind as disclosed above but does not disclose additions to the encapsulated coffee grind or use with other food ingredients.
Abaurre III discloses a similar process of forming a mixture of coffee grind and cocoa butter (claim 1 of Abaurre III) to form coffee liquor and that it is possible to obtain solid bars made of coffee liquor, capable of maintaining the R&G coffee's organoleptical properties stable for a large period of time, ensuring a shelf life of up to one year for the product. From the coffee liquor solid bars, it is then possible to prepare an interlinked family line of composite coffee-based products formulated with other ingredients, with application to various market segments such as the industrial, foodservice and domestic ones.
Abaurre III discloses that in the method of making the coffee liquor the oil/coffee is milled to a particle fineness of 50-75 microns and formed into a coffee liquor plastic filled moulds to make bars (molded). These coffee liquor bars are then used in a process where the bars are liquefied and combined with sugars, powdered milks, sweeteners, and more cocoa butter and then mixed together. This composite mass is then milled to reach a fineness of 10-50 microns (claim 2 of Abaurre). Thus, Abaurre III discloses adding ingredients (additives) to the basic preparation of the coffee/oil composite and then grinding the mixture of additives and coffee/oil to reach a fineness of 10-50 microns, thus considered homogenized.
It would have been obvious to one of ordinary skill in the art to use the coffee/oil composite of Abaurre in the method of Abaurre III to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre and Abaurre III are both finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre III.
Regarding claims 12 and 15, the examples of Abaurre III include 25-50wt% sugar.
Regarding claim 13, as noted above, Abaurre III discloses grinding the mixture of ingredients to a fineness range of 10-50 microns (claim 2 of Abaurre III) and the examples provide more narrow ranges.
Regarding claim 14, Abaurre III discloses missing the ingredients under a temperature range of 45-70C which falls within the claimed range (claim 2 of Abaurre III).
Regarding claim 16, Abaurre III discloses 6-14 wt% milk powder in Example 2.
Claim(s) 1, 4-9, and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori), and in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024).
Regarding claims 1 and 11, Abaurre III discloses a process of forming a mixture of coffee grind and cocoa butter (claim 1 of Abaurre III) to form coffee liquor and that it is possible to obtain solid bars made of coffee liquor, capable of maintaining the R&G coffee's organoleptical properties stable for a large period of time, ensuring a shelf life of up to one year for the product. From the coffee liquor solid bars, it is then possible to prepare an interlinked family line of composite coffee-based products formulated with other ingredients, with application to various market segments such as the industrial, foodservice and domestic ones.
Abaurre III discloses that in the method of making the coffee liquor the oil/coffee is milled to a particle fineness of 50-75 microns and formed into a coffee liquor plastic filled moulds to make bars (molded). These coffee liquor bars are then used in a process where the bars are liquefied and combined with sugars, powdered milks, sweeteners, and more cocoa butter and then mixed together. This composite mass is then milled to reach a fineness of 10-50 microns (claim 2 of Abaurre III). Thus, Abaurre III discloses adding ingredients (additives) to the basic preparation of the coffee/oil composite and then grinding the mixture of additives and coffee/oil to reach a fineness of 10-50 microns, thus considered homogenized.
Abaurre III does not disclose the coffee/cocoa butter formed into the coffee liquor has a particle size of 5-25microns or 10-20 microns recited in claim 5. Abaurre discloses providing a fat (cocoa butter) and roasted coffee grind (milled beans), mixing (blending) the fat and roasted milled beans, milling to a particle size of 15-30microns which overlaps with sufficient specificity the claimed range of 5-25microns, and the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C. As Abaurre discloses that a particle size range of 15-30 microns is useful for forming a coffee/cocoa butter composite for use in food products, it would have been obvious to form the composite coffee/cocoa butter of Abaurre III with a similar size, absent a showing of unexpected results. Moreover, Abaurre III discloses forming the composite product with other materials present to a fineness of 10-50 microns which indicates that the particular size of the coffee/cocoa butter could be provided in a similar size since the finally formed product may be provided at greater fineness.
Regarding the step of mixing whole coffee beans with fat followed by grinding, it would have been obvious to change the order of steps with a reasonable expectation that the finally formed product would be essentially identical and useful in the same manner. See MPEP 2144.04(IV)(C) Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Moreover, mixing cocoa butter and whole coffee beans followed by grinding is known in the art as demonstrated by Rector and Hisamori. Rector discloses roasting coffee beans in an edible oil or fat and explains that by grinding the coffee in an oily medium a much finer product results than when the coffee is ground alone (col. 1, lines 25-30). Hisamori discloses mixing 10-50wt% roasted coffee beans and 50-90wt% edible oil at a temperature of 40C or lower and pulverizing (grinding) to a particle size of 20-40 microns in a first step and a final diameter of 10 microns or less in a second step. These ranges overlap with the claimed ranges and the ranges disclosed by Abuerre. It would have been obvious to modify Abuerre to grind whole coffee beans with the cocoa butter as suggested by Rector and/or Hisamori to provide a finer product with fewer steps and with a reasonable expectation of successfully providing a coffee and fat product having fine particle sizes and that the finally formed product would be essentially identical and useful in the same manner. As indicated by Hisamori, it is possible to obtain very fine particle sizes and Rector indicates the benefits of obtaining fine particle sizes when combined with a fat/oil rather than when grinding alone. Milling to a fine level at the outset would remove the need for the second milling and/or decrease the time needed to mill to the desired level.
Regarding the mixing temperature of claim 1 and claim 6, Abaurre III does not disclose mixing at a temperature of 28-85C or 35-70C but does disclose storing at a temperature of 35-55C. Abaurre discloses the mixing temperature is kept between 28-45C which falls within the claimed range of 28-85C and overlaps the range of 35-70C. It would have been obvious to one of ordinary skill to mix the cocoa butter/coffee of Abaurre III at the temperature disclosed by Abaurre as it is demonstrated as an effective temperature for mixing the same ingredients and there is no disclosure in Abaurre III that the mixing temperature is critical and even discloses storing at a temperature of 35-55C which falls within the ranges of claims 1 and 6.
Regarding claims 4 and 8, Abaurre III discloses cocoa butter and ground coffee, thus providing the same ingredients as claimed.
Regarding claim 7, Abaurre III discloses overlapping ranges of 10-75wt% coffee and 25-90wt% cocoa butter, thus providing a prima facie case for obviousness.
Regarding claim 9, Abuerre III discloses the use of roasted coffee.
Regarding claim 10, Abaurre III discloses cryogenic grinding (abstract).
Regarding claims 12 and 15, the examples of Abaurre III include 25-50wt% sugar.
Regarding claim 13, as noted above, Abaurre III discloses grinding the mixture of ingredients to a fineness range of 10-50 microns (claim 2 of Abaurre III) and the examples provide more narrow ranges.
Regarding claim 14, Abaurre III discloses mixing the ingredients under a temperature range of 45-70C which falls within the claimed range (claim 2 of Abaurre III).
Regarding claim 16, Abaurre III discloses 6-14 wt% milk powder in Example 2.
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori), and in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) as applied to claim 11 above, and further in view of BR 102017015717-2 (Abaurre II).
Abaurre III, Rector, Hisamori, and Abaurre disclose making food products, but do not disclose using an emulsifier or in the claimed amounts. Emulsifiers are well-known in food products and are used depending upon the food product made. Hisamori does disclose emulsifiers but does not disclose the amounts.
Abaurre II discloses a method for producing an encapsulated powdered coffee liquor from finely ground roasted whole coffee beans in the range of 2-20 microns, and where the encapsulated ground coffee liquor may be used to manufacture other products (abstract).
The powdered coffee liquor may be used for espresso blend (Example 7) and for making cappuccino-type cakes and cookies where 4-14wt% of the powdered coffee liquor is combined with 4-20wt% powdered milk, 4-8wt% starch, 4-20 wt% wheat flour and 20-50wt% sugar (Example 9). Also mousse, flan, puddings and sorbets may be prepared with 4-8wt% powdered coffee liquor, 4-20wt% powdered milk, 0.5-4wt% gum (emulsifier) and 20-50wt% sugar. Thus, Abaurre II discloses adding to the encapsulated coffee other additives depending upon the desired food product. It would have been obvious to use the encapsulated coffee of Abaurre III in a similar manner disclosed by Abaurre II to form various food products with coffee flavoring with a reasonable expectation of success since the coffee products of Abaurre III and Abaurre II are finely ground coffee encapsulated in oil and one would expect a similar outcome of conferring a coffee flavor to the food product using the coffee powder of Abaurre when used in a manner disclosed by Abaurre II.
Regarding claim 17, Abaurre II discloses gums in an amount of 0.5-4wt% which falls within the claimed range and depending upon the food product in which the powdered coffee liquor is incorporated, the use of an emulsifier as exemplified by Abaurre II would have been obvious to one of ordinary skill.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori) as applied to claim 1 above, OR
EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori), and in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) as applied to claim 1 above,
and further in view of US 2007/0212453 (Niness) (cited on IDS filed 10/24/2024).
Claim 20 requires precise amounts of cocoa butter and coffee, particle size and temperature. As discussed above, Abaurre and Abaurre III as modified by Rector and/or Hisamori and/or Abaurre discloses mixing beans with cocoa butter (fat) and grinding to a particle size of 15-30 microns which obviates 17 microns as claimed. Abaurre discloses 40-70wt% cocoa butter and 30-60wt% coffee which obviates 42wt% cocoa butter and 58wt% coffee as claimed. Abaurre also discloses milling the mixture at a temperature between -10 and 65C which obviates 62C as claimed. Abaurre III discloses overlapping ranges of 10-75wt% coffee and 25-90wt% cocoa butter, and grinding the mixture of ingredients to a fineness range of 10-50 microns (claim 2 of Abaurre III) and the examples provide more narrow ranges. Abaurre and Abaurre III do not disclose the amount of time taken for milling and does not disclose ball milling. Niness discloses milling a mixture of coffee, cocoa butter and other ingredients to reach a fine particle size of approximately 20 microns using a ball mill [0050, 0052] at 125-160F (51.6-71.1C). Niness states that the paste mix is refined to produce a particle size of approximately 20 microns by any method of particle size reduction and that the milling time will depend on the mixing action used [0051]. It would have been obvious to one of ordinary skill to mill the mixture of Abaurre or Abaurre III of cocoa butter and coffee for an optimal amount of time to reach the desired particle size and homogeneity of the mixture. Absent a showing of unexpected results, the amount of time to mill the mixture of Abaurre as modified by Rector and/or Hisamori is considered within the level of ordinary skill in the art to optimize and modify as needed. Moreover, Niness discloses ball milling which is well known in the art of grinding food materials and it would have been obvious to use a ball mill to grind the coffee and cocoa butter as it is a known and effective method of grinding and Niness discloses use of a ball mill on similar materials.
Claim(s) 21 is rejected under 35 U.S.C. 103 as being unpatentable over EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori), and in view of WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) as applied to claim 11 above, OR
over WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori) and EP 2724621 (Abaurre III) (cited on IDS filed 10/24/2024) as applied to claim 11 above, OR
WO 2017/171849 (Abaurre) (cited on IDS filed 10/24/2024) in view of US 1716323 (Rector) AND/OR JP 2005312319 (Hisamori) and further in view of BR 102017015717-2 (Abaurre II) as applied to claim 11 above,
and further in view of US 2020/0154727 (Celli).
The rejections of claim 11 above do not disclose precise final compositions as claimed. Celli discloses foods comprising mixtures of coffee, cocoa butter, dairy (milk), sugar and lecithin (emulsifier) at various amounts. Celli discloses a range of about 5-15 wt% coffee, 25-40wt% cocoa butter, 8-32 wt% dairy, 25-40wt% sugar, and 0.1-2wt% lecithin. Except for coffee, these ranges overlap with the precise values of the claim and are considered to provide a prima facie case for obviousness. Regarding the coffee amount, Celli discloses that the coffee is present in amounts of up to “about 15” wt% which is seen to obviate higher amounts of coffee. Moreover, it would have been obvious to one of ordinary skill to vary the amount of coffee depending upon the desired about of coffee flavor and caffeine in the final product. Finally, attention is invited to In re Levin, 84 USPQ 232 and the cases cited therein, which are considered in point in fact situation of the instant case. At page 234, the Court stated as follows: This court has taken the position that new recipes or formulas for cooking food which involve the addition or elimination of common ingredients, or for treating them in ways which differ from the former practice, do not amount to invention, merely because it is not disclosed that, in the constantly developing art of preparing food, no one else ever did the particular thing upon which the applicant asserts his right to a patent. In all such cases, there is nothing patentable unless the applicant by a proper showing further establishes a coaction or cooperative relationship between the selected ingredients which produces a new, unexpected and useful function. In re Benjamin D. White, 17 C.C.P.A. (Patents) 956, 39 F.2d 974, 5 USPQ 267; In re Mason et al., 33 C.C.P.A. (Patents) 1144, 156 F.2d 189, 70 USPQ 221. Absent a showing of unexpected results with regard to the amounts of ingredients, it would have been obvious to one of ordinary skill to adjust the amounts to obtain the desired taste profile.
Response to Arguments
Applicant’s amendment has overcome the 112(b) rejection, however a new rejection under 112(d) and new objections were necessitated.
Applicant's arguments filed 08/06/2026 have been fully considered but they are not persuasive. The claims were amended to require whole coffee beans combined with fat and then ground to the claimed particle size, and new claims 20 and 21 were added. As explained above, Rector and Hisamori disclose grinding whole coffee beans and fat which is seen to obviate the claim limitation. Applicant argues that the prior art fails to disclose this order of steps and that the claimed method achieves an improved distribution of the materials allowing for gradual incorporation of the fat into the beans and not overheating the beans. As noted above, Rector and Hisamori each disclose the order of steps and Rector further notes the benefit of achieving a finer particle size. The gradual incorporation and avoidance of overheating is not seen to be solely due to mixing whole beans as opposed to pre-milled beans, but is also subject to various parameters such a type of milling, speed of milling, and proportions of coffee and fat. As it is known to one of ordinary skill that the beans may be successfully mixed with fat and then subject to grinding, absent a showing of something unexpected, the order of steps is seen to be obviated.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C MCNEIL whose telephone number is (571)272-1540. The examiner can normally be reached M-F 9-5.
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, Tong Guo can be reached at 5712723066. 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.
JENNIFER C. MCNEIL
Primary Examiner
Art Unit 1723
/Jennifer McNeil/Primary Examiner, Art Unit 1723
